Appeal No. 2007-0055 Page 7
Application No. 10/053,299
Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997) (quoting from
In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). See also In re
Thrift, 298 F.3d 1357, 1365, 63 USPQ2d 2002, 2007 (Fed. Cir. 2002). Once the
Examiner has satisfied this duty, the burden shifts to Appellant to provide evidence to
the contrary. In this case, the question boils down to whether the Examiner provided
sufficient reason to believe that Pederson’s metal amino acid chelate solution
necessarily would block microbial adherence when in contact with the mouth oral cavity.
To reach this question, we must first determine whether Pederson’s metal amino
acid chelate meets the limitation in claim 1 of a composition “consisting essentially of an
amino acid component” which is an isoleucine stereoisomer or an active analog of it.
The Examiner asserts that Pederson’s metal amino acid chelate meets the amino
acid component requirement of the claim because “the amino acids are present in the
metal chelates.” Answer 7: 13-14. We do not concur with this conclusion because the
isoleucine provided by Pederson is in the form of a chelate in which the amino acid is
joined to the metal ion by “coordinate covalent bonds.” Pederson, column 3, lines 65-
67. It is not isoleucine, but isoleucine attached to a metal ion. “Special processing must
be performed to create a stable (covalent) bond” of the type found in its chelate. Id.,
column 4, lines 24-25. Thus, we do not consider it to satisfy the claim limitation that the
component be an isoleucine or a stereoisomer of it.
However, claim 1 permits the amino acid component to be an active analog of
isoleucine. The specification does not provide a definition of isoleucine analogs, or give
guidance on what is encompassed by the term. In examining the claims of an
application, the PTO is permitted to adopt “the broadest reasonable meaning of the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013