Appeal No. 2006-0276
Application 10/144,463
invention.”); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988)
(“The consistent criterion for determination of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that [the claimed process] should be carried out and
would have a reasonable likelihood of success viewed in light of the prior art. [Citations omitted]
Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.”); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill in the
art.”); see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988)
(“Obviousness does not require absolute predictability of success. . . . There is always at least a
possibility of unexpected results, that would then provide an objective basis for showing the
invention, although apparently obvious, was in law nonobvious. [Citations omitted.] For
obviousness under § 103, all that is required is a reasonable expectation of success. [Citations
omitted.]”).
We are not convinced otherwise by appellant’s arguments. We cannot agree that one of
ordinary skill in the culinary arts would have ignored the disclosure of the pasta-wound
breadstick in the Hays and Wellman references because the references principally feature
“pushup pasta.” Cf. In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)
(“[T]he 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.”).
On this record, we also cannot agree that Vecchiola and Magee are non-analogous prior
art. This is because each reference “is reasonably pertinent to the particular problem with which
the inventor is involved” since each reference is involved with the problem of winding as well as
retaining elongated strands of windable material, elongated strands of hair, on a rod-shaped
utensil or tool, which problem is addressed by appellant with respect to the modification of a
rod-shaped breadstick in order to wind and retain elongated strands of pasta thereon. Thus, each
reference “is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem,” and particularly since
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