Appeal No. 2004-1983 Page 2
Application No. 10/016,903
homogeneous clear liquid is obtained”; in a second step (step β), the liquid from step α
is added “to a water phase, wherein step (β) is carried out in the absence of high shear
or cavitation forces.”
Appellants argue that the previous decision erred in concluding that the reference
cited by the examiner teaches or suggests the limitation of a second mixing step that is
carried out in the absence of high shear or cavitation forces:
With respect to a homomixer, EP ‘150 clearly talks about “stronger
shearing force than a homomixer” (note the comparative term), which
does not imply that a homomixer does not also apply a strong shearing
force, or a high shear or cavitation force as excluded by the present
claims[’] language. On line 37 of page 4, EP ‘150 makes an effort to
define the term “strong shearing force” in relation to the force applied by a
homomixer. This only shows that the inventors of EP ‘150 have seen the
need to define a specific range of shear force as “strong”, obviously
because this range, as explained in the document, may provide even
better results. Naturally, this range, specifically defined for the needs of
the subject matter of EP ‘150, is not necessarily identical with the range of
shearing forces usually understood by one skill in the art as “strong”.
Request for Rehearing, page 2.2
We have reviewed the prior art in light of Appellants’ request. On
reconsideration, we agree that the cited reference does not disclose and would not have
suggested a process that includes a second mixing step carried out in the absence of
high shear forces. Kakoki discloses that
a novel transparent composition can be obtained in which oily components
are stably formulated with a small amount of a surfactant, to an extent
such that there is no danger of irritation, by uniformly dispersing an
amphiphilic substance such as lecithin and a small amount of a surfactant
in water, and then subjecting the dispersion to a strong shearing force by,
Rehearing. Administrative Patent Judge Grimes has replaced Administrative Patent Judge Winters on this
merits panel. See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985).
2 Appellants’ Request for Rehearing cites several pieces of evidence to support the position that a
homomixer was understood by those skilled in the art to apply strong shearing forces. We have not
considered the evidence that was newly cited or submitted in the Request for Rehearing, because
Appellants have not presented “good and sufficient reasons” to explain why the evidence was not
presented earlier. See 37 CFR § 41.33(d)(1) and (2).
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