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Appeal Number: 2005-2193
Application Number: 09/385,405
convincing evidence or argument showing that, indeed, the Schmidt waste would not contain the
claimed first component treated as claimed. Because the materials and processing are the same
or substantially the same, it is eminently fair and acceptable to shift the burden to Appellant and
require him to prove that the prior art process is patentability different from the claimed process.
In re Best, 562 F.2d at 1254, 195 USPQ at 433. This is particularly true, where, as here, the
reference represents work done by the same inventor. Appellant is in a better position to make
the required comparisons than is the PTO. In re Best, 562 F.2d at 1254, 195 USPQ at 433-34.
We also note that the claims are said to stand or fall together (Brief 10). We select claim
71 to represent the issues on appeal and this claim does not include the language “having an
affinity for the solvent”, that language is contained in claim 72. Claim 71 merely requires that
the waste material contain “at least one first component which can not effectively be separated
from the first liquid into a non-solvent based layer.” Any component that remains in the lower
aqueous layer (solvent layer) after separation facilitated by sight glass is a “first component” as
claimed. Schmidt and the specification both describe using a sight glass to determine where to
separate the phases (compare specification, p. 10, ll. 2-5 with Schmidt, col. 4, ll. 1-5). Schmidt
and the specification both describe treating gelatin waste from encapsulation processes. It
follows that both processes result in a waste material containing at least one first component
“which can not effectively be separated from the first liquid into a non-solvent layer” as claimed.
The Examiner has established anticipation and such has not been sufficiently rebutted by
Appellant.
We also agree with the Examiner’s analysis under 35 U.S.C. § 103(a). Schmidt further
describes hot filtering to remove any remaining traces of oil or other contaminants and also
indicates that further residue may be recaptured for further separation and purification if desired.
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