Appeal No. 2006-2809 Page 7
Application No. 10/867,713
specification that discloses that incorporation of the gas-generating ingredient would
negate the need to whip the topping with a mechanical whipper. As noted by
Appellants, it is impermissible to rely on the specification to provide the motivation to
combine the references. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888
(Fed. Cir. 1991).
We therefore conclude that the examiner has not set forth a prima facie case that
one of ordinary skill in the art would have been motivated to include the gas-generating
ingredient of Bisperink in the powdered compositions of Cameron. Thus, we reverse
the rejection of claims 1-11, 19, 21, 22, 24, and 25 under 35 U.S.C. § 103.
The examiner has also rejected claims 12-15 under 35 U.S.C. § 103 as obvious
over Cameron in view of Bisperink and Menzi, and has rejected claims 16-18, 20, and
23 under 35 U.S.C. § 103 as obvious over Cameron in view of Bisperink and De Brou.4
Claims 12-18, 20, and 23 depend from claim 1. We have already concluded that the
examiner has not set forth a prima facie case that claim 1 would have been obvious
over Cameron and Bisperink. The examiner relies on Menzi and De Brou for limitations
recited in dependent claims, and has not pointed to any disclosure in these references
that would make up for the deficiencies discussed above. Thus, we conclude that the
examiner has not set forth a prima facie case that claims 12-18, 20, and 23 would have
been obvious. We therefore reverse the rejections of these claims under 35 U.S.C.
§ 103.
4 De Brou et al., U.S. Patent No. 3,930,052, issued December 30, 1975.
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