Appeal No. 1997-2960
Application 08/368,897
explained why Bliley’s teaching of separately freezing starchy
food and condiment or sauce portions would have fairly
suggested, to one of ordinary skill in the art, eliminating
the prior art pouches discussed by Mattson and removing part
of the food from the container prior to the completion of the
heating of the other portion. The motivation relied upon by
the examiner for modifying the teachings of the prior art to
arrive at the claimed invention comes only from appellant’s
disclosure of his invention in his specification. Thus, the
examiner used impermissible hindsight when rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960). Consequently, the
examiner’s rejection is reversed.
DECISION
The rejection of claims 1-4 under 35 U.S.C. § 103 over
Bliley in view of Mattson is reversed.
REVERSED
6
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007