Appeal 2006-1584
Application 10/139,118
clamed range. Wander discloses including 0.3-4 wt%, preferably 0.5-2 wt%
milk protein on page 1, lines 24-25 and then defines “milk protein” as
preferably a casein salt, i.e., sodium or potassium caseinate at page 1, lines
51-54. Therefore, Wander suggests using amounts of casein salt (0.3-4 wt%,
0.5-2 wt%) overlapping the claimed amount of about 0.01 to about 1 wt%.
Appellants further argue that Wander does not disclose the addition of
acid after homogenization (Br. 9). The process is somewhat different.
Wander discloses fully emulsifying the oil within a water, milk protein,
emulsifier, carbohydrate mixture, and then adding the acid. The mixture is
then completely emulsified in a colloid mill or high pressure homogenizer
(Wander p. 1, l. 92 to p. 2, l. 11). We agree that in Wander homogenization
does not occur before the addition of acid, however, the ingredients and
concentrations are the same or substantially the same. This is enough to
establish a prima facie case of obviousness with respect to the emulsion
product such that the burden is shifted to Appellants to show that, in fact, the
difference in processing results in a patentable difference in the product. See
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)
(A[D]etermination of patentability is based on the product itself.@); and In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) (AIn order to
be patentable, a product must be novel, useful and unobvious. In our law,
this is true whether the product is claimed by describing it, or by listing the
process steps used to obtain it.@).
We conclude that the Examiner has established a prima facie case of
obviousness with respect to the subject matter of claims 1-9 and 15, and that
Appellants have not sufficiently rebutted this prima facie case of
obviousness.
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007