Appeal No. 2001-1725
Application 09/009,536
On this basis we cannot sustain the rejection. A conclusion of obviousness must
be based on evidence, not on assertions made without any apparent evidentiary
support. See In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769,775 (Fed. Cir. 1983)
(“it is fundamental that rejections under 35 U.S.C. §103 must be based on evidence
comprehended by the language of that section.”); In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967) (“The Patent Office has the initial duty of supplying
the factual basis for its rejection. It may not …resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies” in the cited references.).
At the barest minimum, our findings must be supported by substantial evidence. In re
Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000).
As noted above, the presence of the hypocotyl and its rupture byproducts in the
soy precursor may have a profound impact upon the flavor. Numerous attempts have
been made to neutralize this flavor, by heating (US Patent 4,748,038; 4,409,256)
blanching (US Patent 3,901,978) boiling unsteeped soybeans in an alkaline aqueous
medium to inactivate enzyme before grinding (U.S. Patent 4,241,100), and grinding
unsteeped soybeans in deoxygenated hot water from 70°C to boiling under anaerobic
conditions (U.S. Patent 4,369,198). However, these references fail to suggest the
removal of the cotyledon.
The Examiner states conclusorily that “[t]he recited use of “dehypocotyl”
soybeans has no patentable bearing on the claimed invention, as it was a known
common step in the production of soybean milk in the art, whether specifically recited or
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