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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