Appeal No. 1999-2509
Application 08/752,917
it is also reasonable to conclude that obtaining a product having a single vein, as
asserted by the Examiner, from a mixture would be quite a feat. That is, how a
“mixture’ is processed in an extruder can provide in the extruder, and/or after
extrusion through a die, a “single vein” is simply beyond the comprehension of
undersigned counsel and is, it is submitted, quite at odds with what , based upon basic
extrusion art, the person of ordinary skill would expect or predict.
Appellant then requests “that the Examiner provide a Supplemental Answer which explains why
the newly advanced rationale finds basis in fact from the Mackey disclosure” (Id.).
We find it implicit in appellant’s statements in the reply brief that one of ordinary skill in
the extrusion arts would have reasonably expected that the coextrusion of two or more fat-based
particulate materials as clearly taught by Mackey (col. 5, lines 36-37; see also col. 2, lines
57-65), which would include chocolate, caramel and toffee (col. 3, lines 19-24), would inherently
result in more than one vein of one of the fat-based materials interspersed in another fat based
material. We agree with appellant’s position and thus apply Mackey alone to the appealed
claims. Because our application of Mackey is materially different from the examiner’s “one
vein” theory and it is apparent from appellant’s statements in the brief and reply brief that our
position has not been directly addressed by any of appellant’s arguments, we denominate our
affirmance of the examiner’s rejection of appealed claims 14 through 25, 38, 39, 41 and 42 based
on Mackey as a new ground of rejection based on our authority under 37 CFR § 1.192(b) (1997).
Accordingly, we find that based on the teachings of Mackey alone, one of ordinary skill
in this art would have reasonably selected a combination of chocolate, the preferred fat-based
material, and at least one other disclosed fat-based material, such as toffee or caramel, and would
have coextruded the combination of fat-based materials by forming a mixture in the extruder and
extruding the mixture through the single die thereof (see above note 3) in order to form a non-
pourable, chocolate candy product as taught by the reference, and thus would have arrived at the
claimed non-pourable chocolate candy product as encompassed by appealed claim 14, rendering
the same prima facie obvious under § 103(a). Therefore, the burden falls upon appellant to
establish by effective argument or objective evidence that the claimed invention patentably
distinguishes over Mackey, even though the rejection is based on § 103(a). See, e.g., In re Best,
562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977)( “Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced by identical or
- 10 -
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007