Similarities in manufacturing processes alone cannot negate an explicit difference between a product in the prior art and that of the claimed invention. Here, for example, the desugared sugar beet molasses of the claimed invention was found to sufficiently distinguish over a molasses product in the prior art that was explicitly stated to contain a high amount of sugar even though the prior art described a similar centrifuging method of manufacturing. “Against this express teaching of the prior art, it was improper for the Board to assume, without citing evidence, that there is no material difference.” This would be a good case to consult and cite in response to a prior art rejection predicated on similarities between manufacturing methods alone.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO is directed to deicing road surfaces using a natural product, desugared sugar beet molasses (“DSBM”). Although the prior art discloses a molasses that contains a much higher amount of sugar than DSBM, it teaches obtaining the molasses through a centrifuging method similar to that described in the patent.
Issue(s): Whether, because the patent teaches that a centrifuging method may be used for manufacturing its DSBM, the centrifuging method taught in the prior art must have produced DSBM.
Holding(s): No. “The Board’s reasoning rests on the premise that [the prior art] discloses a process for making DSBM that is equivalent to a process taught in the [] patent. This reasoning, however, ignores the express teaching in [the prior art] that the beet molasses product ‘contains approximately 50% of sugar.’ [] [The prior art] teaches making molasses in the traditional sugared form. Against this express teaching of the prior art, it was improper for the Board to assume, without citing evidence, that there is no material difference between the beet molasses taught in [the prior art], and the DSBM taught in the [] patent or that the centrifuging process in the former must be the same as in the latter.”