Appeal No. 1999-2509
Application 08/752,917
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.
Cir. 1988) (brief, pages 16-19).
We must agree with appellant since as shown in Pelletier, the “club design” is a unitary
design in final form whether prepared by a composite mold or a single piece mold, and thus there
is no other candy between the “body portion” and the “tail portion” of the composite mold. In
view of the teachings of Cloud of coating toffee cores by immersion in chocolate, The combined
teachings of these references would have resulted in the coating of the unitary “club design” with
chocolate, which product would not fall within appealed claim 14. Uniroyal, supra. Thus,
contrary to the examiner’s position, the combined teachings of Pelletier and Cloud would not
have reasonably suggested to one of ordinary skill in this art that chocolate should coat the
separate parts of the composite molded “club design.” See In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary reference; nor is
it that the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.”).
Accordingly, we reverse this ground of rejection.
Turning now to the combined teachings of Mackey, Kehoe, Wedin and Butcher, the
issues in this ground of rejection involve the interpretation that one of ordinary skill would have
made of certain disclosure of Mackey.7 Mackey corresponds to European Patent Application 0
603 467 discussed at length in the specification (brief, page 6), from which disclosure it is
apparent that the reference does in fact disclose the process set forth in the limitations in
appealed claim 14. In this respect, Mackey discloses that “a non-pourable fat-containing
confectionery material, and in particular, a set chocolate, can be plasticized and extruded to
produce a non-pourable product” (col. 2, lines 57-62). Indeed, Mackey teaches (col. 2, line 63,
7 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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