Ex Parte Johansson et al - Page 5

                   Appeal 2007- 2552                                                                                                
                   Application 10/276,428                                                                                           
                               8. The alkyl glycosides of Amalric are derived from alcohols                                         
                                  (Amalric, col. 3, ll. 7-17).                                                                      
                               9. Amalric describes using the emulsion to formulate syndets or                                      
                                  dermatological cleansing bars (col. 5, ll. 13-15) and other                                       
                                  personal care products such as shampoo, make-up removing                                          
                                  milk, and body milk (Examples 8-10).                                                              
                           C.  Principles of Law                                                                                    
                           When a claimed product appears to be identical or substantially                                          
                   identical to a product disclosed by the prior art, the burden is on the                                          
                   Applicants to prove that the product of the prior art does not necessarily or                                    
                   inherently possess characteristics or properties attributed to the claimed                                       
                   product.  In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.                                        
                   1990); In re Best,   562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).                                         
                           D.  Analysis                                                                                             
                           As an initial matter, we agree with Appellants that “one-phase                                           
                   microemulsion” as recited in the preamble of the claims limits the structural                                    
                   arrangement of composition claimed.  Because it further limits the structure                                     
                   of what is claimed, this limitation is essential to point out the invention                                      
                   defined by the claims:  In other words, it breathes life and meaning into the                                    
                   claim in a way that further limits it.  See Kropa v. Robie, 187 F.2d 150, 152,                                   
                   88 USPQ 478, 480-81 (CCPA 1951) (A preamble reciting "An abrasive                                                
                   article" was deemed essential to point out the invention defined by claims to                                    
                   an article comprising abrasive grains because “abrasive” further limited the                                     
                   structure of the article).                                                                                       
                           Even so, we determine that the Examiner’s rejection of the claims as                                     
                   either anticipated or obvious is supported by a preponderance of the                                             

                                                                 5                                                                  

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next

Last modified: September 9, 2013