Appeal No. 1996-4109
Application No. 08/123,557
change the percentage of grain product in the snack bar. To emphasize this point,
appellant notes (Brief, page 7) that Pflaumer, “suggests lowering this value
[regarding grain content], rather than increasing it by 50%.” In addition, appellant
distinguishes Colliopoulos (Brief, bridging paragraph, pages 7-8) from the claimed
invention, pointing out that “column 4 [of Colliopoulos], show, very low amounts of
grain products and, more to the point, show absolutely no shortening.”
Initially we remind the examiner that, a conclusion of prima facie
obviousness, of course, does not end a patentability determination under
35 U.S.C. § 103. As stated in In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685,
686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the
matter are to be reweighed. In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
In this case, appellant raised several arguments rebutting the examiner’s
prima facie case of obviousness. In response, the examiner maintains (Answer,
page 5) that only minor modifications of the prior art references are required to
obtain the claimed snack bar. However, it is well-established that before a
conclusion of obviousness may be made based on a combination of references,
there must have been a reason, suggestion or motivation to lead an inventor to
combine those references. Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). On these facts, we find
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