Appeal No. 2006-1878 Page 17
Application No. 10/435,367
used for the same specific purpose, or indeed, for any single purpose, and none of the
references serve the same purpose as the purpose of the present invention.” Reply
brief, page 5. McKeown, Appellants argued, is to treat ketosis, and “has nothing to
whatsoever to do with treating or preventing ulcers.” Id., page 6. The same statement
was made with respect to Howes and Kanter.
The flaw in this argument is that the claimed subject matter is not restricted to
ulcer prevention or treatment. While Appellants may have discovered that the claimed
components in the appropriate quantities treat or prevent ulcers, this concept is not
reflected in the claims, which are the object of this appeal. As we have already pointed
out, the claims contain no limitation, express or inherent, that would limit them to a
purpose relating to ulcer therapy. None of the appealed claims are directed to methods
for treating digestive tract ulcers. Answer, page 7, lines 15-18. Any reason to have
combined the elements identified in the prior art would therefore be adequate
motivation. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in
banc).
In affirming these rejections, we do not find ourselves prey to “the insidious effect
of hindsight.” See In re Kotzab, 217 F.3d 1365, 1369, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000). Appellants argued that the rejection was “nothing more than the use of
Appellants’ claims as a blueprint to go and search for the elements of the claims.” Brief,
page 24. This argument overlooks the fact that McKeown describes a composition
which contains all three components required by claim 1 and other independent claims.
For the addition of a nutricine that absorbs mycotoxins and/or a pH balancer, adequate
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