Appeal No. 94-2895
Application 07/908,728
examiner has supplied no reasoning much less evidence in support of the proposition that
an artisan with ordinary skill would have been motivated to subject starch hydrolysates
intended for use as fat/oil replacers to a disintegration or fragmentation step.
On the record before us, it is only the appellants’ own specification which discloses
a reason for fragmenting starch hydrolysate, fat/oil replacers. As a result, we are
convinced that the examiner’s rejection is based upon impermissible hindsight derived
from the appellants’ disclosure rather than some reason, suggestion, or incentive derived
from the applied prior art. See Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135,
140, 231 USPQ 644, 647 (Fed. Cir. 1986) and Ex parte Chicago Rawhide Mfg. Co., 223
USPQ 351, 353 (Bd. App. 1984).
In light of the foregoing, we cannot sustain the examiner’s § 103 rejection of claims
1, 2, 31 through 61, and 66 through 104 since each of these claims recites features
obtainable only by combining Battista with the other applied references and since the
examiner has proffered no acceptable reasoning or evidence in support of such a
combination.
The decision of the examiner is affirmed-in-part.
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