Appeal No. 2006-3110 Page 3
Application No. 10/185,846
to the Examiner, Feeney’s dough meets the starch and water limitations of claim 1, but
does not contain “added potato fiber.” Answer, pages 3-4. The Examiner urged,
however, that it would have been obvious to have replaced Feeney’s cellulosic material
with potato fiber since it meets Feeney’s fiber requirement and would be “compatible”
with the potato-based dough. Id., page 3, paragraph 3. The Examiner cited Roney for
its teaching of potato fiber. Roney, column 1, Table 1. Roney characterizes it as a
“typical fiber” used in formulating “healthy” food products. Id., column 1, lines 40-43.
Appellants challenged the rejection, arguing that neither reference suggests the
use of potato fiber in dough. Brief, page 3, paragraph 6. Furthermore, Appellants
contended, the cited references do not teach or suggest “that potato fiber is cellulosic,
and as such, potato fiber further would not be acceptable in Feeney.” Id., page 4.
Finally, it was argued that the prior art teaches away from the choice of potato fiber
because it does not meet the “organoleptic” properties “desired” by Roney. Id.
“When patentability turns on the question of obviousness, the search for and
analysis of the prior art includes evidence relevant to the finding of whether there is a
teaching, motivation, or suggestion to select and combine the references relied on as
evidence of obviousness.” In re Sang Su Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002). A suggestion, teaching, or motivation to combine the relevant
prior art teachings does not have to be found explicitly in the prior art.
“[T]he teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an implicit
showing is what the combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art.”
In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
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