Appeal No. 96-0885
Application 08/108,932
process is carried out is not a sufficient basis for a prima
facie case of obviousness. See In re Brouwer, 77 F.3d 422,
425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71
F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995). The
motivation relied upon by the examiner comes solely from
appellant’s specification. Thus, the examiner used
impermissible hindsight when rejecting the claims. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d
393, 396, 125 USPQ 328, 331 (CCPA 1960). We therefore do not
sustain the rejection under 35 U.S.C. § 103 over Robinson in
view of Humphrey.
Rejection of claims 15 and 16 under 35 U.S.C. § 103
over Robinson in view of Humphrey and JP ‘146
JP ‘146 discloses a method for making a dish-shaped rice
cracker by making streaky cuts into the edges of a flat rice
cake so that when the rice cake is baked, it curls into the
shape of a dish (pages 4-6).
The examiner argues that it would have been obvious to
one of ordinary skill in the art to make the JP ‘146 streaky
cuts into Robinson’s apple slices to aid in the production of
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