Ex parte YIGAL PELEG et al. - Page 6

                Appeal No. 95-1168                                                                                                             
                Application 07/951,992                                                                                                         

                claims on appeal, the claims on appeal also require the composition to contain between about 55-65%                            
                by weight flour and 1-8% by weight starch.  The flour content of Petrizzelli’s composition, 30-40%,                            
                is lower than that recited in appellants’ claims while the starch content 13-20%, is higher than that                          
                recited in the claims on appeal.  Other than stating that the starch component “lowers the water                               
                activity of the product” (Petrizzelli, col. 3, lines 10-12), Petrizzelli provides no information regarding                     
                the relationship of flour and/or starch to the fat content of the dough composition such that the flour                        
                and starch ranges set forth in the claims would have been obvious to one having ordinary skill in the                          
                art.  Furthermore, the examiner has not provided any analysis of Petrizzelli as to why the higher                              
                amount of starch in the Petrizzelli dough composition would inherently perform the same function                               
                as the amount of starch claimed herein.  In relying upon the theory of inherency, the examiner must                            
                provide a basis in fact and/or technical reasoning to reasonably support the determination that the                            
                allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.  Ex parte                     
                Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Intf. 1990).  From the teachings of the reference, we                              
                find no motivation which would have led one skilled in the art to the ranges for flour and starch set                          
                forth in the claims on appeal.  Accordingly, the rejection of claim 11 as being obvious over Petrizzelli                       
                is reversed.  Since the Kriz reference does not cure the deficiencies of Petrizzelli, we also reverse the                      
                rejection of claims 11-17 for obviousness over Petrizzelli and Kriz.                                                           

                         For the foregoing reasons, we conclude that the examiner has not made out a prima facie case                          

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