Ex parte JOHNSON - Page 8

              Appeal No. 1997-2565                                                                                           
              Application 08/382,588                                                                                         

              would have been obvious, an examiner’s office action must explicitly address the Graham                        
              v. John Deere Co., supra, criteria for prima facie obviousness in the office action.   Those                   
              criteria cannot be circumvented by resort to a per se rule.  In addition, care must be                         
              exercised in citing caselaw predating Graham v. John Deere Co., supra, on the issue of                         
              obviousness.  While In re Levin, supra contains language about recipes, there also was                         
              evidence in that case “that the cited patents showed it was old in the making of butter                        
              substitute compositions to use edible acids, gums, starch, and egg yolk, and to use them                       
              together in the customary way and for the same purpose as they were used by appellant.”                        
              See In re Levin, supra.  The point remains that Graham v. John Deere Co., supra, and its                       

              progeny are controlling on the requirements for establishing a prima facie case of                             

              obviousness.  As set forth in In re Cofer, 354 F.2d 664, 667, 148 USPQ 268, 271                                
              (C.C.P.A. 1966):                                                                                               
                      Necessarily, it is facts appearing in the record, rather than prior decisions in and of                
                      themselves, which must support the legal conclusion of obviousness under 35                            
                      U.S.C. 103.  Merely stating that a compound or composition is obvious, without                         
                      adequate factual support, is not sufficient.                                                           
                      With respect to the prior art rejection, this appeal raises a question as to the scope                 
              of a claim in regard to the expression “consisting essentially of”.  The transitional phrase                   
              “consisting essentially of” in a composition claim leaves the scope of the claim open to the                   
              inclusion of unspecified ingredients which do not materially affect the basic and novel                        

                      See MPEP, 7  ed. (July 1998), ' 706.02(j).4                                                                                                     

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