Ex parte DONOVAN - Page 5




          Appeal No. 1997-2014                                                        
          Application No. 07/959,995                                                  


          reference disclosure concerning “oat bran muffins”, which the               
          examiner relies upon as support for her obviousness                         
          conclusion, quite plainly would not have suggested the here                 
          claimed invention.                                                          
               More specifically, the aforementioned disclosure relates               
          to a muffin product having a fat content many times higher                  
          than the maximum allowed by independent claims 1 and 8.                     
          Moreover, the examiner’s position that it would have been                   
          obvious to lower the fat content of this product so as to be                
          within the here claimed range simply is not supported by the                
          requisite teaching/ suggestion and reasonable expectation of                
          success.  In re O’Farrell, 853 F.2d 894, 903-904, 7 USPQ2d                  
          1673, 1680-1681 (Fed. Cir. 1988).  Similarly, the California                
          Prune Board reference contains no teaching or suggestion of a               
          dry premix having the ingredients and proportions defined by                
          appealed independent                                                        
          claim 6.                                                                    
               In light of these evidentiary deficiencies, we cannot                  
          sustain the examiner’s § 103 rejection of claims 1 through 20               
          as being unpatentable over the California Prune Board                       
          reference.                                                                  
                                          5                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007