Appeal 2007- 2552
Application 10/276,428
evidence. This is because it is reasonable to conclude that Amalric’s so
called emulsions are inherently microemulsions as that term is used in
Appellants’ claims. Appellants’ claimed composition and the compositions
disclosed in the Specification include the same, or substantially the same,
ingredients as Amalric (FF 4-7). In such a situation, it is reasonable to shift
the burden to Appellants to prove that the characteristic relied upon by
Appellants for patentability, i.e., the microemulsion characteristic, in fact, is
a patentably distinguishing difference between the composition that is
claimed and the composition of the reference. Spada, 911 F.2d at 708, 15
USPQ2d at 1658; Best, 562 F.2d at 1255, 195 USPQ at 433.
Appellants argue that microemulsions are different from
macroemulsions (Br. 7). But given the substantial identity of the
composition of Amalric to that claimed, it appears that Amalric’s emulsion
is a microemulsion, not a macroemulsion.
Appellants argue a difference based on the length of time Amalric’s
emulsion remains stable (Br. 7). But Appellants’ provide no evidence of the
length of time their own emulsions remain stable. Therefore, there is no
actual proof of a patentable difference that meets Appellants’ burden.
Spada, 911 F.2d at 708, 15 USPQ2d at 1658; Best, 562 F.2d at 1255, 195
USPQ at 433. We note that Amalric’s emulsions are described as stable for
at least three months (FF 2) and that level of stability seems to be
encompassed by Appellants’ definition of microemulsion (FF 1-2).
With regard to claims 2 and 3, Appellants contend that Amalric does
not disclose or suggest the claimed proportions of linear to branched alkyl
glycosides (Br. 8 and 10). Amalric describes a genus of mixtures
overlapping the genus of mixtures of claims 2 and 3 (FF 5). Selection of
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