Appeal No. 2005-1949
Application No. 09/829,168
However, the Appellant has now explained that the previous
study was an “investigative” study of natural milk. The
resulting formulation was formulated from that data discovered by
the appellant and preferably containing certain constituents in
certain amounts and ratios (Specification, page 5, lines 10-15).
The appellant therefore urges that this information was a result
of its own investigation, not in the public domain, and its own
work should not be used against him. (Appeal Brief, page 6,
lines 1-11).
The Examiner does not address the appellant’s position that
this nonpublic work resulted in the formulation. Based upon this
explanation, we find that on balance we agree with the
appellant’s position that the appellant’s own work in
investigating the composition of beagle milk should not be used
against him in formulating an obviousness rejection. In re
Wertheim, 541 F.2d 257, 269, 191 USPQ 90, 102 (CCPA 1976); see In
re Leslie, 547 F.2d 116, 120, 192 USPQ 427, 430 (CCPA 1977).
The evidence of record in this case does not support the
proposition that the nutrient profile as set forth by the
appellant in its previous specification, was available to one of
ordinary skill in the art at the time the invention was made.
How, then, the previously unknown makeup of beagle milk could
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