Appeal No. 2001-2492
Application 08/817,277
the lemon essence/water ratio in the lemonade composition in
table 6.16 (page 179).
The examiner relies upon Elements of Food Technology
(pages 667-68) and Secondini (pages 17-20 and 74-76) for
descriptions of essences (answer, page 4).
The examiner argues that oil and water are known to separate
(answer, page 3). The examiner, however, has not established
that the 0.8 wt% of lemon oil emulsion in Davis’ control
composition would separate from the 93.4 wt% water at all, let
alone within 2 hours at 20ºC when exposed only to gravitational
forces as required by the appellant’s claim 11.
The examiner argues that “[n]othing new or unobvious is seen
in making a flavoring composition that is extremely concentrated
so that it must be diluted with 200 parts of water” (answer,
page 3). For a prima facie case of obviousness to be
established, however, the teachings from the prior art itself
must appear to have suggested the claimed subject matter to one
of ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness. See
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007