Appeal No. 2007-0055 Page 14
Application No. 10/053,299
Examiner. Answer 21. Appellants have not provided persuasive arguments to the
contrary.
The rejection of claim 1 under § 103(a) is affirmed, but subject to a new ground
of rejection under 37 CFR § 41.50(b) based on a claim interpretation that is different
from the Examiner’s.
Claims 5-10, 41, 42, and 43 fall with claim 1 since they were not separately
argued.
Claims 2, 3, and 4
Claims 2-4 recite ranges of isoleucine per cm2 of eukaryotic cell surface. The
Examiner states that the claim ranges overlap with the ranges described by Zeng.
However, the Examiner argues that “it would have been deemed obvious to one of
ordinary skill in the art at the time the invention was made to determine suitable ranges
or amounts . . . through the use of routine or manipulative experimentation to obtain the
best possible results, as these are variable parameters within the art.” Answer, pages
15-16.
We agree with Appellants that the Examiner has not established a prima facie
case of unpatentability for these claims. Although an overlap in ranges establishes
prima facie obviousness, an exception has been recognized where a parameter had not
been recognized as being a “result-effective variable.” In re Antonie, 559 F.2d 618, 620,
195 USPQ 6, 8-9 (CCPA 1977). Concentration is identified by Zeng as a results-
effective variable for reducing vaginal acidity, but the Examiner has not provided
sufficient evidence that, in optimizing the ranges for this activity, the microbial blocking
activity would also be realized. This problem is further compounded because we can
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013