Appeal No. 2006-2609 Page 9
Application No. 10/359,165
base solids.” ¶ 7. Again, however, Dr. Kent provides no evidence or reasoning to
suggest that these properties of whey protein isolate were unexpected. In view of
Liebrecht’s teaching that “[w]hey protein isolate is greater than 90% protein by weight”
(col. 2, lines 64-65) and that “[w]hey protein isolates . . . are the preferred source of
protein” (col. 1, lines 53-54), those skilled in the art would have been well aware of the
beneficial properties of whey protein isolate.
To summarize, the Kent declaration does not provide adequate evidence or
reasoning to show that the properties of the claimed energy drink would have been
unexpected. In the absence of such evidence or reasoning, we do not find the
declaration’s unsupported conclusion to be credible. See Perreira v. Secretary of the
Dept. of HHS, 33 F.3d 1375, 1377 (Fed. Cir. 1994) (“An expert opinion is no better than
the soundness of the reasons supporting it.”).
In addition to the Kent declaration, Appellant argues that “testing was conducted
showing the surprising and unexpected benefits of the claimed whey protein isolate in
Examples 1-4 of the present application.” Appeal Brief, page 14.
We conclude that the specification’s examples do not provide evidence of
unexpectedly superior results to overcome the prima facie case of obviousness. As
noted by the examiner, the testing provided in Examples 1-4 of the application does not
present a comparison between a composition containing whey protein isolate and a
composition containing another milk protein source, specifically milk base solids as
described in Weber. Examiner’s Answer, page 8. Instead, each of the compositions
described in these examples contains whey protein isolate as the protein source. Thus,
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