By Mark Chael --
On November 24, 2006, the Board of Patent Appeals and
Interferences (BPAI) at the U.S. Patent and Trademark Office affirmed
the examiner's rejection of the pending claims in U.S. Patent App. No.
10/305,577 (U.S. Patent App. Publication No. 2004/0101613) based on
obviousness. The invention disclosed in
the application relates to water-oil-water (w/o/w) emulsions "that are
microbiologically stable and free of a distinct sour taste" (see Abstract). The application is assigned on its face to
Unilever Bestfoods North America.
The examiner had rejected the pending claims in view of U.S. Patent No. 4,447,464 to Schwartz & Cornwell, U.S. Patent No. 4,882,187 to Izzo et al., and Schwartzberg, H.G. (1992) Physical Chemistry of Foods, Inst. of Food Technologists, ed., pp. 264-65.
In affirming the examiner's rejection, the Board cited In re Woodruff,
919 F.2d 1575 (Fed. Cir. 1990), and In re Aller, 220
F.2d 454 (C.C.P.A. 1955), for the proposition that "it
is well settled that where patentability is predicated upon a change in a
condition of a prior art composition, such as a change in concentration or the
like, the burden is on the applicant to establish with objective evidence that the
change is critical, i.e., it leads to a new, unexpected result," which the Board contended the appellant had
not done in this case.
Furthermore, the Board relied on In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986), in finding that the appellant had not established on the available record that the data in the specification relating to a claimed unexpected result or benefit "would be considered truly unexpected by one of ordinary skill in the art, especially in light of [the prior art] disclosure." The Board contended that the appellant had offered no analysis of the available data; apparently leaving it to the Board to analyze the data in the specification and interpret that data in the appellant's favor. The Board reminded the appellant "that the burden of showing unexpected results rests on the party asserting them" (see In re Klosak, 455 F.2d 1077 (C.C.P.A. 1972)).
Ex parte Levi (B.P.A.I. 2006)
Panel: Administrative Patent Judges Kimlin, Timm, and Gaudette
Opinion by Administrative Patent Judge Kimlin
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