Appeal 2007-2375
Application 10/319,843
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellants also argue that Beirne’s “product has oil homogeneously
distributed in the composition rather than as a coating on its surface” (Br. 7-
8). Specifically, in Beirne, “fine particles are wetted with a mineral oil and
then caked together to form larger particles” (Reply Br. 2). In addition,
Appellants argue that, although Beirne discloses an amount of mineral oil
“within a range of 0.25% to 2.0% by weight[,] . . . which overlaps the range
specified in Appellants’ claims[], the amount of fat and oil present is not
indicated” (Br. 8).
We are not persuaded by these arguments. We agree with Appellants
that Beirne describes wetting particles with a mineral oil and caking them
together to form larger particles (Beirne 5) but, as the Examiner pointed out,
this would result in mineral oil on the surface of the particles. Claim 34
does not exclude the presence of mineral oil within the particles. More
importantly, we agree with the Examiner that injecting a mineral oil aerosol
into a mixer containing Mori’s granular feed additive would result in mineral
oil on the surface of the additive.
Furthermore, the Examiner is not relying on Beirne for describing the
amount of fat and oil present in the granules. There is no requirement that a
single reference describe both the amount of fat and oil present in the
granules and the amount of oil on their surface. “In determining whether
obviousness is established by combining the teachings of the prior art, the
test is what the combined teachings of the references would have suggested
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