Appeal 2006-2858
Application 10/169,910
one protein, at least one carbohydrate and at least one salt within the
meaning of 35 U.S.C. § 103. On this record, we answer this question in the
affirmative.
As recognized by the Examiner at page 3 of the Answer, Staples’
disclosure is not limited to its Example 1. In re Mills, 470 F.2d 649, 651,
176 USPQ 196, 198 (CCPA 1972) (The fact that a specific embodiment is
exemplified is not controlling since all disclosures of the prior art, including
non-exemplified embodiments, must be considered.) Staples broadly
describes beverages having an osmolarity ranging from 140 to 375
mOsmol/kg (not limited to an osmolarity of 276 mOsmol/kg). These
osmolarity values overlap with the claimed and preferred osmolarity values
discussed supra. The claimed energy values, according to page 3 of the
Specification, are linked to or related to the osmolarity. Thus, Staples, by
teaching beverages having an osmolarity ranging from 140 to 375
mOsmol/kg, necessarily teaches beverages having corresponding energy
values, including those claimed. Accordingly, we determine that the
selection of beverages having the claimed energy values from those taught in
Staples would have been well within the ambit of one of ordinary skill in the
art. As stated in In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379,
1382 (Fed. Cir. 2003), “[i]n cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.”
In any event, we observe that the Appellants have not disputed the
Examiner’s finding at page 3 of the Answer that:
[I]t would have been within the skill of the ordinary worker to
add more ingredients to increase the caloric value of the drink.
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