Appeal No. 2006-1389 Page 4
Application No. 09/912,471
The examiner argues that Simell describes “each of the steps employed by
Appellants’ claimed process[ ]” (Examiner’s Answer, page 4). That is, Simell describes
“providing or forming an aqueous slurry of a soy protein material” (id.), “treating the
slurry with [FinaseŽ,] an enzyme preparation containing acid phosphatase enzyme at a
temperature, a pH and for a time period effective for said enzyme preparation to provide
for degradation of the soy protein material” (id.), and “washing the soy protein degraded
material” (id.). According to the examiner, “degradation of RNA in [Simell’s method] . . .
is not [merely] a probability or possibility[,] but an inherent function and property” (id.,
page 5) and “a necessary consequence of the intended degradation of the soy protein
material disclosed by the cited patent” when FinaseŽ is used (id.).
Appellants do not dispute the examiner’s assertion that Simell describes treating
a soy protein slurry with acid phosphatase in a manner effective to degrade ribonucleic
acids in the protein slurry. Rather, appellants argue that “[t]he process of the cited
reference must always contain an acid phosphatase in order to establish inherent
anticipation” (Appeal Brief, page 12), thus Simell’s method does not inherently
anticipate the claimed invention because it “is not limited to use of FINASEŽ enzymes
and can utilize [other] phytate-degrading enzyme preparation[s]” (id., page 11), some of
which “do not necessarily contain an acid phosphatase enzyme [ ] effective to degrade
ribonucleic acids in a vegetable protein material” (id.).
In this regard, appellants rely on the declaration of Dr. Theodore M. Wong (dated
July 1, 2003), wherein Dr. Wong describes the results of “an experiment [ ] conducted to
determine the extent of degradation of phospho- and diphospho-ester nucleoside
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