Appeal 2007-1528
Application 10/360,991
maintains the filling inside the dough product. However, the Examiner
properly states that it is not necessary for a finding of obviousness that the
prior art recognizes all the inherent properties of a known component or
ingredient in a composition. It is well settled that the motivation of the
skilled artisan need not be the same as an applicant’s motivation for a
finding of obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996). Also, it is not necessary for a conclusion of
obviousness that the prior art recognizes all the advantages of a composition
that is within the prior art. The mere discovery and claiming of a new
benefit of an old or obvious composition cannot impart patentability to the
claimed composition under § 103. See In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Accordingly, in the present case, the fact that Appellants may have
discovered a new advantage for adding bread crumbs to the filling of a
dough product does not result in the metamorphosis of an obvious food
composition comprising bread crumbs into a different, nonobvious
composition. Significantly, Appellants have not proffered any objective
evidence which establishes unexpected results attributed to the addition of
bread crumbs into the filling of the dough product of Hayes-Jacobson, let
alone evidence of sufficient probative value to outweigh the obviousness of
doing so. See In re May, 574 F.2d 1082, 1092, 197 USPQ 601, 609 (CCPA
1978); In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA
1977).
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