Appeal 2006-2115
Application 09/862,077
food products and methods of making the same disclosed by Franzen is the
absence of CLA in the dog food product. The Examiner addressed only the
difference involving the teachings of Lowe, the primary reference.
We find that one of ordinary skill in the dog food art would have been
interested in manufacturing nutritional dog food that is palatable to a range
of dogs. This is evinced by the teachings with respect to palatability in
Lowe and Franzen, and indeed, Franzen is directed to preparing palatable
nutritional dog foods with specific palatability ingredients.
On this record, we find that one of ordinary skill in this art would
have been motivated by the desire to provide palatable dog food to combine
Lowe and Franzen. We determine that the combined teachings of these
references prima facie would have led this person to use the tallow
containing coating of Franzen Example I in place of the duck-based digest
coating used by Lowe in the reasonable expectation of obtaining a palatable
dog food with a different palatability. We do so without recourse to the
teachings of Appellants’ specification. Indeed, an express suggestion to
substitute Franzen’s palatable coating for that of Lowe for the same purpose
is not necessary. Cf. In re Fout, 675 F.2d 297, 299-301, 213 USPQ 532, 536
(CCPA 1982) (“Express suggestion to substitute one equivalent for another
need not be present to render such substitution obvious,” citing In re
Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA 1967));
Ex parte Novak, 16 USPQ2d 2041 (Bd. Pat. App. & Int. 1989), aff’d. mem.,
16 USPQ2d 2043 (Fed. Cir. 1990).
We are not persuaded by Appellants’ argument that the canine dietary
objectives of Lowe and Franzen are so diverse that one of ordinary skill in
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