Appeal No. 2006-0295
Application 10/053,926
721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983); Skoner, 517 F.2d at 950, 186 USPQ
at 83 (CCPA 1975).
Furthermore, with respect to claims 9, 16, 19 and 26, we determine in similar manner to
the examiner (Office action, pages 2-3) that, prima facie, one of ordinary skill in this art would
have found in the combined teachings of Eden, Jeffcoat, Park and Yuan the suggestion to use the
converted sago starch containing compositions taught by Eden, as we found above, as the starch
ingredient in the yogurt compositions of Jeffcoat (e.g., col. 1, ll. 20-26, col. 4, ll. 23 34, and
Examples 1 and 5), Park (e.g., col. 2, ll. 16-22, and Example 1) and Yuan (e.g., col. 2, ll. 35-42,
col. 3, ll. 35-55), in the reasonable expectation of obtaining yogurt compositions having the
properties taught by the references, and particularly in view of the teaching in Yuan that sago
starch can be used for this purpose. See generally, In re Corkill, 771 F.2d 1496, 1497-1500,
226 USPQ 1005, 1006-08 (Fed. Cir. 1985); In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ
1069, 1072 (CCPA 1980); In re Skoll, 523 F.2d 1392, 1397-98, 187 USPQ 481, 484-85 (CCPA
1975); In re Castner, 518 F.2d 1234, 1238-39, 186 USPQ 213, 217 (CCPA 1975); In re Lintner,
458 F.2d 1013, 1015-16, 173 USPQ 560, 562-63 (CCPA 1972); 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.]”); 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.”).
Accordingly, since we have established a prima facie case of obviousness under § 103(a)
over the teachings of Eden alone and as combined with Jeffcoat, Park and Yuan, the burden of
going forward has shifted to appellants to submit argument and/or evidence in rebuttal.
See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992);
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
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