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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