Appeal No. 2007-0294 Page 5
Application No. 11/050,224
With respect to the limitation in claim 1 that the “polydimethylsiloxane is in
a pre-emulsified form”, the Examiner asserts that the requirement in claim 1 that
the PDMS is “pre-emulsified” is a product-by-process limitation and that there is
no pre-emulsified silicone present in the final claimed product. Answer 5.
Appellants assert that Brockett “fail[s] to teach, suggest or recognize a solid
particulate laundry detergent composition wherein the polydimethylsiloxane is in a
pre-emulsified form, as required by the claims of the present invention.” Br. 6.
They argue that the skilled worker would recognize that pre-emulsified PDMS is
“distinguishable from a nonemulsified form and further, the specification discloses
that the pre-emulsified form of polydimethylsiloxane improves the processability
of the particulate admixture of polydimethylsiloxane and clay.” Id. at 7. For this
reason, Appellants contend that “pre-emulsified form” is not a product-by-process
limitation. Id.
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990). In our view, it was reasonable for the
Examiner to presume that the claimed “solid particulate laundry detergent”
would not contain the PDMS in a “pre-emulsified form.” Answer 5.
According to the specification, “pre-emulsified” means “that the
silicone is in the form of an emulsion when it is admixed to the clay during
the process of preparing the particulate admixture.” Specification 6: 23-25.
An “emulsion” is a liquid.2 The Examiner states that “[t]he product is a
granular solid; in the absence of a liquid phase, no emulsification is possible,
2 “[A] liquid preparation . . .” Random House Dictionary 434 (1975).
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