Appeal 2006-0891
Application 10/224,886
Appellant’s arguments do not convince us that the Examiner made a
reversible error with respect to the rejection of claim 1.
Appellant argues that Kuechle does not recognize that reducing the
shear experienced by the encapsulated chemical leavening agent during
dough preparation can limit the damage to the agent and, thereby, improve
the stability of the dough product (Br. 14). This argument is not persuasive
because the prior art need not recognize the problem solved by the appellant
as long as there is some motivation for doing what is claimed. Here there is
motivation to perform the process within the mixing and time ranges
exemplified by Kuechle, including the lower values in the low shear steps, to
obtain what Kuechle desired to obtain, i.e., an uniformly mixed but
underdeveloped dough. See In re Dillon, 919 F.2d 688, 693, 16 USPQ2d
1897, 1901-1902 (Fed. Cir. 1990)(en banc) (“[T]he discovery that a claimed
composition possesses a property not disclosed for the prior art subject
matter, does not by itself defeat a prima facie case.”); see also In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
(AIt is a general rule that merely discovering and claiming a new benefit of
an old process cannot render the process again patentable. While the
processes encompassed by the claims are not entirely old, the rule is
applicable here to the extent that the claims and the prior art overlap.@
(citations omitted)).
Appellant also argues that his Example 1 shows unexpected results for
the process of claim 1. However, the burden is on Appellant to show
unexpected results commensurate-in-scope with the claims. In re
Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978).
Example 1 describes a process in which the addition of encapsulated
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