Appeal 2007-1610
Application 10/955,833
identify this additional material. This additional material could just as
readily be one or more toxic (non-food) substances. Lazier et al. was not
seeking to make flavoring agents for use in ingestible vehicles but rather was
seeking to make starting materials for use in polymers (Lazier et al. at col. 1,
lines 4-9). Hence, Lazier et al. was not concerned whether this additional
material (13%) was an ingestible material” (Br. 10).
“A patent is invalid for anticipation if a single prior art reference
discloses each and every limitation of the claimed invention. Moreover, a
prior art reference may anticipate without disclosing a feature of the claimed
invention if that missing characteristic is necessarily present, or inherent, in
the single anticipating reference.” Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1377, 67 USPQ2d 1664, 1667 (Fed. Cir. 2003) (internal
citations omitted). See also SmithKline Beecham Corp. v. Apotex Corp., 403
F3d 1331, 1343 74 USPQ2d 1398, 1406 (Fed. Cir. 2005). “[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, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990).
The issue raised by this rejection is whether the Examiner has
provided a reasonable basis for shifting the burden to Appellants to establish
that the claimed composition is distinguishable from Lazier’s composition;
and if so, whether Appellants’ burden has been met. In our opinion, the
Examiner met his burden, but Appellants did not.
Lazier’s Example II, relied upon by the Examiner for its disclosure of
a fraction that “analyzes for 87% purity as ethyl 3-mercaptobutyrate”
(Lazier, at col. 3, ll. 36-38), also comprises “[w]ater . . . formed in the course
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013