Appeal No. 1006-1198
Application No. 10/639,936
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 maybe
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 reference 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 non obvious. [Citations omitted.] For
obviousness under § 103, all that is required is a reasonable expectation of success. [Citations
omitted.]”).
As made evident above, the reason provided by the examiner in the rejection need not be
literally expressed in the applied references. The examiner concludes that it would be obvious to
make the filling to have a water activity less than the outer batter to prevent water migration.
The examiner states that Haynes-Jacobson recognizes the problem moisture migration and
discloses that the filling with high water content results in soggy food product. The examiner
states it would have been within the skill of one of ordinary skill in the art depending on taste,
flavor, and texture desired regarding various compositions chosen for the waffle batter and
filling. Answer, page 5.
It is true that Haynes-Jacobson teaches in paragraph 0037 that the moisture content of the
batter dried portion of the food product is generally at least about 20% by weight preferably
between about 25% by weight and 65% by weight. In paragraph 0077, Haynes-Jacobson states
that a lower water activity filling can also have high bake stability and thus a longer shelf life.
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