Appeal 2006-2115
Application 09/862,077
the art would have been led away from combining these references without
the benefit of hindsight provided by Appellants’ specification. Indeed,
Lowe discloses that the nutritional maintenance of a dog is important even
though caloric intake reduction is an objective of the dog food, and that the
palatability of the dog food is important to attract the dog. Franzen is also
interested in making nutritional dog food palatable for the same purpose.
We do not find in Appellants’ arguments any explanation or evidence
establishing that these disclosures of the references teach away from the
claimed methods and products encompassed by claims 1, 8, 14 and 19. See,
e.g., In re Kahn, 441 F.3d 977, 985-89, 78 USPQ2d 1329, 1334-38 (Fed.
Cir. 2006) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” (quoting In re
Gurley, 27 F.3d 551, 553 [31 USPQ2d 1130, 1131], (Fed. Cir. 1994))); In re
Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed. Cir. 2004)
(prior art “disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”). Indeed, Appellants have not established that one of
ordinary skill in this art would have expected the presence of CLA in
Lowe’s dog food product to interfere with the palatability properties
imparted by Franzen’s coating.
We also cannot agree with Appellants that the mere difference in
purpose for adding CLA to dog food is sufficient to patentably distinguish
the claimed inventions over the combination of Lowe and Franzen. Indeed,
as the Examiner points out, it is well settled that the mere discovery of a new
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