Appeal No. 1996-4109
Application No. 08/123,557
Obviousness is a legal conclusion based on the underlying facts. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (CCPA 1966);
Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1270,
20 USPQ2d 1746, 1750 (Fed. Cir. 1991); Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed. Cir. 1987), cert. denied, 481
U.S. 1052 (1987). In creating his prima facie case of obviousness the examiner
recognizes the differences between the claimed invention and Wullschleger1.
Specifically, the examiner states (Answer, page 4)
Although there is a difference in the amount of grain product in the
Wullschleger et al. example as compared to the appellants’ snack
bar, the claimed food products of Wullschleger et al. in ‘248 are
readable on having about 25-90% of one or more cereal brans and
about 6-19% psyllium.
The examiner maintains his position “because, in the absence of any unexpected
benefits of the appellant’s snack bar, the appellant’s snack bars require only minor
modifications in amounts of ingredients routinely used in the art and which have
been suggested for modification by Wullschleger et al.” See (Answer, page 5).
Appellant presents four groupings of claims. The claims within each group
stand or fall together. The following discussion addresses appellant’s four groups in
order.
1 The examiner states (Answer, page 4) “[t]he examiner’s primary references
against claims … are the patents of Wullschleger et al. (#5,227,248 and
#5,223,298) which have almost identical specifications.” Thereafter the examiner
discusses Wullschleger in reference to both patents. Appellant states (Brief, page
5) “the two Wullschleger patents will be treated as one, because their specifications
are identical.”
4
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