Appeal 2006-2858
Application 10/169,910
III. REJECTION
The Examiner has rejected the claims on appeal as follows:
1) Claims 1, 2 and 4 through 22 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Staples; and
2) Claim 12 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Staples and Millman.
IV. ISSUES
The dispositive question is whether Staples would have led one of
ordinary skill in the art to provide the claimed energy value (defined in terms
of kcal/100 ml of drink) to its nutritional drink comprising at least one
protein, at least one carbohydrate and at least one salt within the meaning of
35 U.S.C. § 103.
V. PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the obviousness of an invention cannot be
established by combining the teachings of the prior art references absent
some teaching, suggestion or incentive supporting the combination.
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984). This does not mean that the cited
prior art references must specifically suggest making the combination.
B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582,
37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401,
1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather, the test for
obviousness is what the combined teachings of the prior art references would
3
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013