Appeal No. 2007-0360 Page 6
Application No. 11/050,001
Br. 7-8. For this reason, Appellants contend that “pre-emulsified form” is not a
product-by-process limitation. Id. at 8.
“[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 infer 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: 27-29. 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 emulsion is
possible, and the final product appears to be no different from the products of the
prior art.” Answer 5. Appellants did not offer any explanation as to how an
emulsion would be possible in the claimed “solid particulate” composition.
Moreover, we can find no statement in the specification that the emulsion would,
in fact, still exist when the PDMS is processed into its final solid particulate form.
Appellants argue:
The inventors have surprisingly found that both polydimethylsiloxane
and clay can be admixed together and incorporated into a solid
particulate laundry detergent composition to provide a good fabric-
softening performance by using a pre-emulsified form of
polydimethylsiloxane and by selectively modifying the amounts of the
specific components in the detergent composition (page 3, lines 5-20
and page 6, lines 25-27). Accordingly, the use of pre-emulsified form
of polydimethylsiloxane in the detergent composition is not [a]
product-by-process claim limitation because it is essential for not only
admixing the polydimethylsiloxane and clay but also provides the
2 “[A] liquid preparation . . .” Random House Dictionary 434 (1975).
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