Appeal No. 2007-0055 Page 12
Application No. 10/053,299
amounts disclosed by Zeng do not overlap with the claimed amounts because
“[w]hether or not any isolueicine [sic] remains in the vagina . . . is unknown and amounts
to unfounded speculation.” Id., 27. Finally, they state that “[t]he discovery of optimum
or workable ranges by routine experimentation for blocking cell surfaces using only
isoleucine presupposes that Zeng knew about such a concept, which clearly he did not.”
Id., 28.
As was the case for the rejection over the Pederson patent, it is apparent that the
Examiner’s basis for the rejection of claim 1 over Zeng is also grounded in inherency,
i.e., that the amino acid composition disclosed in Zeng would inherently block microbial
adherence as required by claim 1. To determine the propriety of this rejection, we must
determine whether there is reasonable basis to presume that Zeng’s composition
achieves the goal stated in claim 1 of blocking microbial adherence. Schreiber,
128 F.3d at 1478, 44 USPQ2d at 1432.
As we have construed claim 1, the phrase that the amino acid component is
“selected from a group consisting of” isoleucine stereoisomers or active analogs of it
limits the amino acid component to these compounds, excluding other amino acids.
This claim construction differs from the construction given to the claims by the Examiner
(Answer 20: § 2) which we find to be improper. For this reason, we designate our
rejection, which is described in more detail below, as a new ground of rejection. See
37 CFR § 47.50 (b).
At column 4, lines 47-49, of Zeng, it is stated that “[t]he composition containing
only one or two sodium salts of amino acids can also part[l]y realize the object of the
invention.” We find that this statement constitutes a description of a composition of
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