Appeal 2007-0726
Application 10/264,561
using the claimed ingredients in the dry starchy flour mixture of Lanner in
the context of the facts of this case. See In re Fulton, 391 F.3d 1195, 1201,
73 USPQ2d 1141, 1146 (Fed. Cir. 2004) (mere disclosure of alternatives is
not a teaching away). While the “teach away” test is a useful general rule,
care must be taken not to adopt it in the abstract. Gurley, 27 F.3d at 553,
31 USPQ2d at 1132. “Although a reference that teaches away is a
significant factor to be considered in determining unobviousness, the nature
of the teaching is highly relevant, and must be weighed in substance.” Id.
Appellants have not shown that the use of the raw potato starch and
pregelatinized waxy starch in the claimed preblend coating mixture is more
than a predictable use of known ingredients. Moreover, Appellants have not
shown that the prior art teaches away from using these ingredients in the
preblend coating mixture of Lanner.
We note that another way to overcome the rejection would be through
a showing that the combination was beyond the skill of one in the snack
food coating art. KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396 (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”); see also Leapfrog, 485 F.3d at 1161, 82 USPQ2d
at 1692. No such convincing evidence of the skill level, much less what was
beyond the skill level, of the food coating artisan is advanced by Appellants.
Based on the totality of record, including due consideration of the
Appellants’ arguments, we determine that the preponderance of evidence
weighs most heavily in favor of the obviousness of claim 1 within the
meaning of 35 U.S.C. § 103, claims 2, 4, 5, 7, 9-14, 17-22, and 25-27 falling
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