Appeal No. 1006-1198
Application No. 10/639,936
At the bottom of page 4 of the answer, the examiner recognizes that Haynes-Jacobson
does not specifically disclose the step of depositing a second portion of uncooked batter over the
filled material where the water activity of the outer batter being more than the filling material.
Hence, it is not disputed that Haynes-Jacobson does not specifically disclose an outer casing
material having a first water activity level and a fill material having a second water activity level
wherein the second water activity level is less than the first water activity level and depositing a
second portion of uncooked batter material over the fill material enclosing the waffle iron.
However, hence the rejection is not an anticipation rejection. This rejection is an obviousness
rejection. We refer to the examiner’s statement made on pages 5 through 6 of the answer.
Therein, the examiner correctly states that Haynes-Jacobson does disclose that the food product
can be waffles. See, for example, Paragraph 0037 of Haynes-Jacobson. The examiner points out
that the one of ordinary skill in the art would recognize that a waffle is made in a close iron.
Hence, the aspect of the appellants claimed invention is set forth in step e involving the closing
of a waffle iron is self evidently suggested by Haynes-Jacobson.
The examiner also concludes that it is obvious to deposit a second layer of uncooked
batter over the first layer to enclose the filling. The examiner also concludes that is would have
been apparent to one of ordinary skill in the art that the second does not need to be precooked in
making a waffle because a waffle is made in a closed iron and not on an open grill to a pancake.
See B.F. Goodrich Co. v. Aircraft Braking Sys, Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1966)(“When obviousness is based on a particular prior art reference, there must
be a showing of a suggestion or motivation to modify the teachings of that reference. [Citation
omitted.] This suggestion or motivation need not be expressly stated. {Citation omitted.]”). See,
e.g., Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ 1626,
1629-30 (Fed. Cir. 1996)(“In this case, the reason to combine [the references] arose from the
very nature of the subject matter involved, the size of the card intended to be enclose.”); In re
Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991)(“The extent to
which such suggestion [to select elements of various teachings in order to form the claimed
invention] must be explicit in, or may be fairly inferred from, the references, is decided on the
facts of each case, in light of the prior art and its relationship to the applicant’s invention.”);
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007