Appeal No. 2004-2164
Application 09/553,894
number of “dry dough ingredients,” including added starch, which contain water and/or absorb
water, and comprises up to about 46.5 wt.% of “added water” which is combined with the “dry
dough ingredients” (e.g., col. 4, ll. 3-8, and cols. 10-11). Villagran teaches that “a loose, dry
dough” is prepared by adding a “water pre-blend” of various materials to the dry “starch-based
material mixture and emulsifier blend” in a mixer, and illustrates the preparation of “loose, dry
dough” (e.g., (col. 13, l. 58, to col.. 14, l. 6, and col. 21, ll. 36-67).
We determine that the term “mash” in appealed claim 1 has the customary, dictionary
definition of a mixture of starches or grains.3 However, the “mash” in claim 1 must be “wet,”
which latter term has the customary, dictionary definition of “[c]overed or saturated with a
liquid, esp. water; moistened[,] . . . [n]ot yet dry or firm; wet paint.”4
In comparing the claim term “wet mash” in appealed claim 1 with the “loose, dry dough”
of Villagran, we find that the “dough” does not fall within the claim term. Indeed, the examiner
has not established that one of ordinary skill in this art working within the disclosure of
Villagran would have added the water pre-blend to the dry dough ingredients or mash in the
mixer in such manner to as to result in forming a “wet mash.”
Accordingly, on this record, we determine that the examiner has not established a prima
facie case of obviousness of the claimed invention encompassed by appealed claims 1 through 5
and 7 through 11 over Villagran alone within the meaning of § 103(a), and thus reverse this
ground of rejection. We further reverse the ground of rejection of appealed claim 6 under
§ 103(a) on the same basis because Gisaw does not cure the deficiency that we find in Villagran
with respect to the claimed method encompassed by this claim.
Considering now the ground of rejection of appealed claim 3 under § 112, second
paragraph, the initial burden of establishing a prima facie case on any ground under the second
paragraph of § 112 rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984) (“As discussed in In re Piasecki, the examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie case of
3 See, e.g., The American Heritage Dictionary, Second College Edition 769 (Boston, Houghton
Mifflin Company, 1982).
4 Id., 1374.
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