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. - 2 -Page: Previous 1 2 3 4 5 6 NextLast modified: November 3, 2007