Appeal No. 1999-2509
Application 08/752,917
substantially identical processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his claimed product. See
In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection is based on
“inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability
to manufacture products or to obtain and compare prior art products. [Footnote and citation
omitted.]”).
With respect to appealed claim 41, which requires a particulate chocolate substitute
comprising a cocoa butter replacement or a particulate chocolate analogue comprising a cocoa
butter replacement, we agree with the examiner’s finding that such “cocoa butter substituents
. . . [are] conventionally known . . . [as] admitted by appellant . . . on page 4 of the specification”
(answer, page 6), which finding was not challenged by appellant (see brief, pages 19 and 23;
reply brief in its entirety). See generally, In re Ahlert, 424 F.2d 1088, 1091-92, 165 USPQ 418,
420-21 (CCPA 1970). With respect to claim 23, Mackey discloses that “the fat-containing
confectionary material may be co-extruded with other food materials” and does not require that
“the fat-containing confectionery material [is] extruded in a hollow or tubular form” when such
materials are included, only that it is “advantageous” to do so (col. 5, lines 37-42). See In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“The fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’”).
Accordingly, in view of the prima facie case of obviousness thus made out with respect to
appealed claims 1 through 4 and 9 through 12, the burden of going forward has shifted to
appellant to submit argument and/or evidence in rebuttal. See generally, In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have again carefully evaluated all of the evidence of obviousness and nonobviousness
based on the record as a whole, giving due consideration to the weight of appellant’s arguments
of record, including the submission of samples based on the Hershey Symphony® chocolate
candy product,11 as they pertain to the new ground of rejection which we have entered above.
11 Letter filed July 23, 1998 (Paper No. 14).
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