Appeal No. 2002-0433 Page 4
Application No. 09/575,258
paragraph). As pointed out by applicants, and not disputed by the examiner, the
claimed water-in-oil microemulsion contains 0.1 to 9% by weight of water compared
with 20 to 60% by weight of water in the microemulsion disclosed by Hill. See the
Appeal Brief, page 3, last paragraph. That is, applicants' upper limit on the amount of
water (9% by weight) is well below Hill's lower limit (20% by weight) and that fact is not
disputed on the record. By the same token, the claimed water-in-oil microemulsion
contains greater than 80% by weight of siloxane oil compared with 40 to 80% by weight
of oil in the microemulsion disclosed by Hill.
We have no doubt that Hill's microemulsion could be modified in such manner to
arrive at the claimed water-in-oil microemulsion, including the percentages of
components recited in claim 1. This is clear from a review of applicants' specification.
However, the mere fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). That is not
the case here.
We disagree that there is adequate reason, suggestion, or motivation stemming
from Glover or Lin which would have led a person having ordinary skill to modify the
relative percentages of components in Hill's microemulsion in the manner proposed by
the examiner (Paper No. 11, page 4, second complete paragraph). Simply stated, the
examiner has not established an adequate nexus between the disclosures of the
"primary" reference (Hill) and the "secondary" references (Glover or Lin); and has not
set forth an adequate line of reasoning which would support this rejection.
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