Appeal No. 1996-0876
Application 08/123,144
basis there may be for his conclusion of obviousness. Since the appellant has not been
properly advised of, and therefore, has not had a fair opportunity to respond to, the
examiner’s rejection, the application is remanded to the examiner for correction and
clarification.
Second, it is not clear from the examiner’s statement of the rejection that he has
properly considered the breadth of claim 17. Upon return of this application, the examiner
should review the claim and consider whether it would have been obvious to one of
ordinary skill in the art to apply an antioxidant and oil solution to nuts, such as pecans, in
view of the teachings of Hoover with respect to the coating of nuts with an antioxidant and
oil (col. 3, lines 12-18 and lines 53-63) and the teachings of Zook that additives can be
infused into nuts by any conventional means such as differential pressure; i.e., using a
vacuum. Zook, col. 15, line 47- col. 16, line 3. The examiner is reminded that a conclusion
of obviousness must be based on facts, and not on unsupported generalities. In re Freed,
425 F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970); In re Warner 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Thus, the
examiner should clearly set forth, on the record, his findings of fact and his reasons for
concluding that the claimed invention would have been obvious to one of ordinary skill in
the art.
It should be noted here that the Resnick patent is not cited in this Official
Action, but was cited against the aforesaid claim in the first Official Action,
namely, Paper No. 6, a ground of rejection which was not continued to the
second Official Action [Brief, p. 9].
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