Appeal No. 1996-4109
Application No. 08/123,557
In this case, appellant raised several arguments rebutting the examiner’s
prima facie case of obviousness. In response, the examiner states (Answer, page
6) “[o]ne of ordinary skill in the art would be able to determine the appropriate
method of handling the ingredients involved to make the desired final form of the
product.” This is exactly what appellant argues will not happen. Unlike appellant’s
argument, the examiner fails to support his opinion with a reference to the prior art.
We are left to weigh the examiner’s unsupported conjecture against appellant’s fact
based conclusions drawn from a reasoned analysis of the prior art. What is missing
in the examiner’s prima facie case is a reason, suggestion or motivation to lead an
inventor to combine those references. Pro-Mold and Tool Co. v. Great Lakes
Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). On
these facts, we find that the only reason or suggestion to modify the references to
arrive at the present invention comes from appellant’s specification.
Accordingly, we reverse the examiner’s rejection of claim 15 under 35
U.S.C. § 103.
Claim 18:
Claim 18 is drawn to a dry mix comprising specified weight percentages of
psyllium, sweetener and grain product. Appellant argues (Brief, page 11) that
“Wullschleger only teaches a recipe where water is included ... [and] the amount of
grain product present is well below what is claimed.” Appellant further states (Brief,
page 11) that “[m]odification of Wullschleger is certainly not suggested because …
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