Appeal 2006-2350
Application 10/444,104
Appellants are arguing that Uchino is inoperable or nonenabled for the
use of sodium alginate without a calcium-containing compound.
First, we are not persuaded that the Example 4 data is contrary to the
teachings of Uchino 978. At best Appellants have merely shown that it is
possible to follow the process in one instance without success, it does not
establish that one of ordinary skill in the art, making routine adaptations
within the skill of the art such as concentration optimization, could not have
successfully employed the disclosed anti-solidification agents. See, e.g., In
re Lamberti, 545 F.2d 747, 751, 751 n.2, 192 USPQ 278, 281, 281 n.2
(CCPA 1976). There is a strong presumption that the teachings of a patent,
such as Uchino 978, if used by one skilled in the art will produce the results
alleged by the patentee. See In re Weber, 405 F.2d 1403, 1406-07, 160
USPQ 549, 552-53 (CCPA 1969). Appellants have not overcome that
presumption. Once one of ordinary skill in the art is taught that the
compounds are useful for the purpose of anti-solidification, it is a routine
matter to determine optimal or workable ranges of concentration for the
compounds that will work for that purpose.
The Examiner has established a prima facie case of obviousness and,
that being the case, the burden has shifted to show, through secondary
considerations such as a showing of unexpected results, that what Appellants
are claiming would not have been obvious to one of ordinary skill in the art.
We note that Appellants have not argued, much less shown, that the data
evinces a result unexpected to one of ordinary skill in the art.
Group B, Claims 24, 27, 28, and 30-34
Appellants group claims 24, 27, 28, and 30-34 separately. We select
claim 24 to represent the issues on appeal with respect to this group of
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