Appeal No. 2006-0449
Application 10/232,644
brine between –37 and –42°F (e.g., col. 1, l. 27, to col. 2, l. 38). We find that Liberman ‘0344
would have taught one of ordinary skill in the culinary arts that it is optimal to freeze vital body
fluids in plastic bags in cruciferous oil containing brines at –22 and –43.6°F.
We find in the combined teachings of these references substantial evidence in support of
the examiner’s conclusion that it would have been obvious to one of ordinary skill in the culinary
arts to use the known brine cooling methods for freezing fish sealed in a bag taught by Liberman
‘352, which cooling method is also described in Liberman ‘034, to freeze the marinated fish in
the vacuum sealed bag disclosed by Katayama in the reasonable expectation of obtaining the
same or similar advantages taught by the Liberman references (answer, e.g., pages 5 and 8). See
In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (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, 881-82 (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.”); In re Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA 1967) (express
suggestion to interchange methods which achieve the same or similar results is not necessary to
establish obviousness); 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 that 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.]”).
4 The examiner and appellant consider Liberman ‘352 to refer to Liberman ‘034 (e.g., answer,
pages 4-5). The reference referred to is in fact to United States Patent 4,840,035 to Liberman,
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