Appeal No. 2005-1586
Application No. 10/317,530
Appellant’s argument is not persuasive. It is well known that an intended
use of an old composition does not render the composition claim patentable.
See In re Pearson, 494 F.2d 1399, 1403 [181 USPQ 641] (CCPA 1974); In re
Zierden, 411 F.2d 1325, 1328, 162 USPQ 102, 106 (CCPA 1969). As stated
above, the claimed invention is directed to a dry mix. Gagliardi is suggestive of a
dry mix comprising potato and cauliflower. The claimed subject matter is not
limited to a low carbohydrate product, i.e., the dry mix does not have to have low
carbohydrate properties. The dry mix must be capable of being mixed with other
ingredients to produce a low carbohydrate product. Appellant has not argued or
directed us to evidence that establishes the product of Gagliardi is not capable of
being mixed with components suitable for producing a low carbohydrate product.
Claims 2, 3 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gagliardi, in view of Pirrotta, Fazzolare, Hamann, Cremer or
Bosley. We select claim 2 as representative.
Appellant traversed this rejection for the reasons presented in the
discussion of the § 103 rejection over Gagliardi alone and because the secondary
references do not allegedly supply the teachings missing from the Gagliardi
reference. (Brief, p. 10). Specifically, Appellant argues that without the present
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