Ex parte Beutler et al.

Board of Patent Appeals and Interferences

May 27, 1998

07965202 (B.P.A.I. May. 27, 1998)

Application for patent filed October 23, 1992.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ERNST BEUTLER, LEUKA FAVRE-GALLIAND,
JOHANN ILLI and ANDREAS SUTTER
________________
Appeal No. 95-1151
Application No. 07/965,2021
________________
HEARD: May 8, 1998
________________
Before WINTERS, HANLON and WEIMAR, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
This appeal is from a decision of the primary examiner
rejecting claims 11 through 31 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Donikian (French
Patent Application No. 2,073,279), Broome et al. (The
Appeal No. 95-1151
Application No. 07/965,202
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Australian Journal of Dairy Technology, Dec. 1982, pages 139-
42), Bosworth (U.S. Patent No. 1,450,836), and Klupsch (U.S.
Patent No. 4,435,432). Claims 32 through 34, which are the
only other claims remaining in the application, stand
withdrawn from further consideration by the examiner as
directed to a non-elected invention.
On consideration of the record, including applicants'
Appeal Brief (Paper No. 12), the Examiner's Answer (Paper No.
13), the Reply Brief (Paper No. 16), and the Supplemental
Reply Brief (Paper No. 19), it is
ORDERED that the examiner's decision rejecting claims 11
through 31 is reversed.
Independent claim 11 requires the use of "a strain of L.
helveticus which exclusively forms lactic acid L(+)." Mani-
festly, the prior art relied on by the examiner is
insufficient to support a conclusion of obviousness of claims
containing that limitation. The cited prior art does not
disclose or suggest a strain of L. helveticus which
exclusively forms lactic acid L(+). Accordingly, the cited
prior art does not reach applicants' claimed process requiring
Appeal No. 95-1151
Application No. 07/965,202
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the use of that strain or the claimed product containing that strain.
One further point warrants attention. On return of this
application to the Examining Corps, we recommend that both
applicants and the examiner consider the following passage in
the specification, page 5, lines 13 through 20:
In each embodiment of the process according to
the invention, the S. thermophilus strain(s) may be
selected, for example, from the strains marketed for
the production of yogurts or isolated from yogurts.
The L. helveticus strain may be selected for its
ability to exclusively form lactic acid L(+), for
example from the strains marketed for the production
of cheese or acidifed [sic] milk or isolated from
cheeses or acidified milks. [Emphasis added.]
Does this mean to say that a strain of L. helveticus which
exclusively forms lactic acid L(+) was known in the art at the
time applicants' invention was made? Do applicants
acknowledge that the recited strain of L. helveticus which
exclusively forms lactic acid L(+) was a known strain,
marketed for the production of cheese or acidified milk at the
time their invention was made? In our judgment, these
questions are relevant to the patent-ability of applicants'
claimed subject matter and should be explored, in the first
instance, by the examiner.
REVERSED
Appeal No. 95-1151
Application No. 07/965,202
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SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
ADRIENE LEPIANE HANLON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
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