Ex Parte Villagran et al - Page 2


               Appeal No. 2004-2164                                                                                                  
               Application 09/553,894                                                                                                

               as misdescriptive and not further limiting appealed claim 2 on which it depends.1,2                                   
                       It is well settled that in order to establish a prima facie case of obviousness under                         
               § 103(a), the examiner must show that some objective teaching, suggestion or motivation in the                        
               applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill                      
               in this art would have led that person to the claimed invention as a whole, including each and                        
               every limitation of the claims arranged as required by the claims, without recourse to the                            
               teachings in appellant’s disclosure.  See generally, In re Rouffet, 149 F.3d 1350, 1358, 47                           
               USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75                           
               F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); B.F. Goodrich Co. v. Aircraft                              
               Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When                                  
               obviousness is based on a particular prior art reference, there must be a showing of a suggestion                     
               or motivation to modify the teachings of that reference. [Citation omitted.] This suggestion or                       
               motivation need not be expressly stated. [Citation omitted.]”); In re Fine, 837 F.2d 1071, 1074-                      
               76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).                                                                        
                       The claimed method for preparing a dehydrated product in appealed claim 1, on which                           
               the rest of the appealed claims depend, requires “forming a homogeneous wet mash,” adding a                           
               material thereto, which can be a starch, that alters the content of free amylose or free                              
               amylopectin, and drying the “wet mash.”  The examiner submits that                                                    
                    [i]t would have been obvious that the dough, used to make the fabricated chips in                                
                    [Villagran], is substantially equivalent to appellant’s [sic] wet mash since the dough is                        
                    composed of potato flakes and 46.5% added water, which is sufficient to prepare a wet                            
                    potato mash in situ, and instant mashed potatoes are prepared by adding water to                                 
                    potato flakes. [Answer, page 3; see also page 4.]                                                                
                       Appellants submit that the “dough” on which the examiner relies is not disclosed by                           
               Villagran to be a “wet mash,” contending that the only disclosure of a “wet mash” in the                              
               reference is prepared from cooked potatoes to which no starch has been added (brief, page 3).                         
                       We agree with appellants.  We find that the dough disclosed by Villagran comprises a                          


                                                                                                                                    
               1  Appealed claims 1 through 15 are all of the claims in the application. See the appendix to the                     
               brief.                                                                                                                
               2  Answer, pages 3-4.                                                                                                 

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