Appeal No. 1997-2565
Application 08/382,588
would have been obvious, an examiner’s office action must explicitly address the Graham
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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
th
See MPEP, 7 ed. (July 1998), ' 706.02(j).4
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