Appeal 2007-0726
Application 10/264,561
type of optimization that “flows from ‘the normal desire of scientists or
artisans to improve upon what is already generally known.’” Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1368, 82 USPQ2d 1321, 1335-36 (Fed. Cir.
2007) (quoting In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379,
1382-83 (Fed. Cir. 2003). That the artisans in the food coating art sought to
optimize the properties of the dry mixture and were able to do so is evident
from the various discussions of starch and flour ingredients, their properties,
and their effects within the references (FF 3, 5, 7-10). Therefore, we
determine that the experimentation involved comes within the teachings of
the art. See Pfizer v. Apotex, 480 F.3d at 1367, 82 USPQ2d at 1335 (quoting
In re Fay, 347 F.2d 597, 602, 146 USPQ 47, (CCPA 1965) (“To support the
board's decision that ‘routine experimentation within the teachings of the art’
will defeat patentability requires a primary determination of whether or not
appellants’ experimentation comes within the teachings of the art.”).
We acknowledge that the applied prior art references do not expressly
state the reasons for combining raw potato starch with the other dry flour
and starch ingredients of Lanner, but in this case such reasons are not
necessary to support a conclusion of apparent obviousness. Such reasons are
only required when the combination “is more than a simple substitution of
one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement,” see KSR, 127 S.
Ct. at 1740, 82 USPQ2d at 1396. The present case involves merely the
simple selection of known starches for use in a starch-containing flour
mixture. This combination of familiar (i.e., known) flour and starch
ingredients would have been obvious since it would have been expected to
yield predictable results in accordance with the established functions of
13
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: September 9, 2013