Appeal No. 2007-0172
Application No. 10/461,361
Me and Ultimate Cake of combining various flavors, we conclude that it
would have been obvious to include a layer soaked in caramel syrup in the
lemon grass and coconut cake. In addition, based on the teaching in
Ultimate Cake of incorporating strawberries and raspberries in the filling, we
conclude that it would have been obvious to incorporate different fruit, such
as mango, into the cake filling. Thus, we conclude that a multi-flavored
cake according to claim 1, which contains lemongrass, mango, and caramel,
would have been obvious.
Appellant argues that “the Examiner is plainly ignoring the specific
limitations set out in claim 1 and instead is simply taking the position that
any recipe for a known class of food product (in this case, a cake) is per se
obvious and unpatentable.” (Br. 5.) Appellant also argues that “the same
rules must be uniformly applied across all fields of patentable subject matter
insofar as the establishment of a prima facie case of obviousness is
concerned.” (Id.)
We agree with Appellant that the Examiner appears to have relied on
a per se rule. In particular, the Examiner appears to have taken the position
that it would have been obvious to add any ingredient to cake and has not
considered the particular ingredients being claimed. “[R]eliance on per se
rules of obviousness is legally incorrect.” In re Ochiai, 71 F.3d 1565, 1572,
37 USPQ2d 1127, 1133 (Fed. Cir. 1995). We agree with Appellant that the
same obviousness standards apply to food products as to other products.
See, e.g., In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Nevertheless, for the reasons discussed above, we conclude that
claim 1 would have been prima facie obvious over the combination of
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