Appeal No. 93-2111
Application 07/630,452
prior art reference "would likely discourage the art worker from
attempting the substitution suggested");
To the extent that Mattson teaches "that as the number of
ester groups increase there was a decrease in absorbability"
(col. 6, lines 20-21), this teaching fails to render the claimed
invention obvious. Rather, this teaching is consistent with the
less absorbed sucrose octa esters chosen by Mattson as the
"highly" preferred embodiment of the invention.
Without the benefit of appellants' disclosure, one of
ordinary skill in the art would not have been motivated to lower
the number of fatty acids esterified onto the sucrose molecule,
thereby increasing the absorbability and caloric content of the
fat substitute. Rather, one of ordinary skill in the art
presented with the combined teachings of EPA '856 and Mattson
would have been motivated to do the direct opposite, i.e.,
increase the number of fatty acids esterified onto the sucrose
molecule to produce a less absorbable, lower calorie fat
substitute. Therefore, the examiner has failed to establish a
prima facie case of obviousness under 35 U.S.C. § 103. See also
In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA
1971) (a proper judgment of obviousness "takes into account only
knowledge which was within the level of ordinary skill at the
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