Appeal No. 97-2502
Application 08/358,353
Turning first to method claim 14, we find that it is
directed to a method of preparing a sterile milk pap which
requires the performance of a specific sequence of steps.
Although it appears that each of the claimed steps was known in
the art, the examiner has not provided any reasons, based on
factual evidence, as to why the specific sequence of events
described in representative claim 14 would have been obvious to
one of ordinary skill in the art at the time the application was
filed. Rather, the examiner’s overall position is that because
those of ordinary skill in the art routinely perform various
combinations of the claimed steps in the preparation of different
food products, the claimed sequence would have been prima facie
obvious. However, from a fair review of the applied prior art,
it is difficult to discern on which basis the examiner reached
this conclusion. We caution the examiner that a conclusion of
obviousness must be based on facts and not unsupported
generalities. In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 572
(CCPA 1970); In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Accordingly, we
reverse the rejection of claims 14 and 17 through 28.
Since dependent claims 15 and 16 manifestly require the same
specific sequence of preparatory steps as base claim 14, it
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