Page 7
Appeal Number: 2005-2193
Application Number: 09/385,405
unexpected results. When such evidence is presented we must determine whether the totality of
the evidence supports obviousness.4
Appellant argues that the Schmidt Declaration provides evidence of surprising and
unobvious results (Brief 21-25). However, the tests discussed in the Schmidt Declaration
compare processes in which the solvent based layer is subjected to treatment by a cartridge filter
alone with processes in which a tangential flow filter is added. The two-step filtration process
including the tangential flow filter is not commensurate in scope with the subject matter sought
to be patented by claim 71. This problem applies to claim 74 as well. While claim 74 requires a
tangential flow filter, that claim does not require cartridge filtration. The processes of the
Schmidt Declaration require the presence of both filters.
Turning to the rejections under 35 U.S.C. § 112, ¶ 1, based on the similarities between
the specification and the disclosure of Schmidt, we like the Examiner find no material difference
between the processes. That being the case, it appears from all the evidence before us that
Appellant was in possession of the claimed process and has enabled those of ordinary skill in the
art to make and use the same. Given the discussion of the starting material of gelatin waste, such
would appear to inherently contained the claimed “first component” and impurities having
affinity of the solvent. It would appear that these materials would be removed using the
processes described in the specification without the need for undue experimentation. We
emphasize that this determination is based on the record before us. If, in the future, Appellant
succeeds in showing that the claimed first component and materials having affinity for the
4 Evidence of secondary indicia such as unexpected results cannot be used to overcome a rejection based on
anticipation. In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007