Appeal No. 2005-1290 5
Application No. 10/603,464
that the examiner has not identified any teaching or suggestion of desirability of tabulating
Brochner’s composition containing “10-29% of butter fat, 7-15% of milk proteins, 15-65% of
milk carbohydrates and minor amounts of inorganic milk constituents and water” in the
same manner as Enfamil premature powder.
Even if the tabulating method (the same compression weight) used for forming
Enfamil tablets were employed in tabulating the composition described in Brochner as
proposed by the examiner, we determine that the examiner has not demonstrated that the
resulting tablets would necessarily have the same characteristics as those claimed, i.e.,
tablets having a specific dissolution rate and no fat film. As properly argued by the
appellants (Brief, page 4), for example, to avoid a film of fat on the surface of the tablets,
the claims require a further selection of an appropriate pressure from the recited pressure
range. The examiner has not demonstrated that the prior art references relied upon
recognize, inter alia, a particular pressure as a solution to avoiding the problem associated
with the composition of the type described in Brochner (i.e., forming a film of fat on the
surface of the tablets). Nor has the examiner demonstrated that the employment of the
tabulating method taught in Ozalvo would necessarily result in tablets having the claimed
attributes. Thus, on this record, the examiner has not supplied sufficient facts to
demonstrate that the prior art references would have suggested the claimed tablets or that
the tablets suggested would necessarily or inherently have the claimed features. In re
Spormann, 363 F.2d 444, 447, 150 USPQ 449, 452 (CCPA 1966)(“[T]he inherency of an
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Last modified: November 3, 2007