Appeal No. 1996-3802
Application 08/296,790
claimed “white food casing” encompassed by the appealed claims. In the absence of such scientific
explanation or evidence, Balser, at best, would have suggested to one of ordinary skill in this art “to try”
any pigment imparting a “dark shade” that is suitable for any casing in amounts that would increase the
contrast with the titanium dioxide pigment to provide the desired “pearlescence” which is “not the
standard under § 103.” In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988) (“In [other cases], what was ‘obvious to try’ was to explore a . . . general approach that seemed
to be a promising field of experimentation where the prior art gave only general guidance as to the
particular form of the claimed invention or how to achieve it. [Citations omitted.]”).
Accordingly, on this record, it is manifest that the only direction to appellants’ claimed invention
as a whole is supplied by appellants’ own specification. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531(Fed. Cir. 1988)(“Both the suggestion and the reasonable expectation of success must be founded
in the prior art, not in the applicant’s disclosure.”).
Having reached the conclusion that, on this record, the examiner has not established a prima
facie case of obviousness, we need not consider the evidence in appellants’ specification.
The examiner’s decision is reversed.
Reversed
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