Appeal No. 2006-2609 Page 6
Application No. 10/359,165
present claims.” Appeal Brief, page 13 (emphasis in original). “[I]t is only with
[improper] hindsight reconstruction . . . that the Patent Office is able to even attempt to
piece together a rejection of the claims.” Id.
Appellant’s argument regarding replacing the whey protein isolate of Liebrecht
with milk base solids misses the point. The examiner’s rejection is based on
substituting the whey protein isolate for the protein in Weber. See the Examiner’s
Answer, page 3 (“it would have been obvious to substitute the WPI . . . for the protein in
Weber.”)
We agree with the examiner that the benefits of whey protein isolate described in
Liebrecht provide sufficient motivation to replace the milk base solids of Weber, which
are described as optional, with the whey protein isolate of Liebrecht. Appellant has not
set forth any persuasive reason that one of ordinary skill in the art would not have been
motivated to include whey protein isolate in a composition of Weber that does not
otherwise include milk base solids.
Appellant also argues that the Declaration of Kyle D. Kent under 37 C.F.R.
§ 1.132 “demonstrate[s] the surprising and unexpected advantages of an energy
beverage including whey protein isolate at a pH of about 2 to about 5 . . . over the
inclusion of either milk base solids or whey protein concentrates.” Appeal Brief,
page 13.
The conclusions in the Kent declaration, however, are not based on all of the
evidence currently in the record. Notably, Dr. Kent did not consider Liebrecht in
reaching his conclusions. When viewed in light of the evidence of record, Appellant’s
evidence does not show that many of the allegedly “surprising and unexpected benefits”
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