Appeal No. 2002-0523
Application No. 09/117,918
See claims 25 and 26. In our view, the examiner has pointed to no evidence in the
prior art to support the position that the molar ratio of vegetable oil to transesterifying
component of 1:(2.5 to 3.5) and the di-/triglyceride mixture of a ratio of diglycerides to
triglycerides of from 1:3 to 1:6 are result effective variables. While we acknowledge
that Menz, column 3, lines 1-8 does describe a range of amounts of diglyceride to
triglyceride, we do not find that the examiner's analysis and evidence fully comes to
grips with establishing either the molar ratio of vegetable oil to transesterifying
component of 1:(2.5 to 3.5) and the di-/triglyceride mixture of a ratio of diglycerides to
triglycerides of from 1:3 to 1:6, or identifying why one of ordinary skill in the art would
find it obvious to manipulate the ranges of components described in Menz (relating to a
food composition) to obtain desired cosmetic or pharmaceutical properties. Therefore,
the examiner's conclusory statement that it is within the skill of the art to select optimal
parameters, such as amounts of ingredients, improperly shifts the burden to appellants
to show the amounts of components in the claimed process and ultimate product such
as the molar ratio of reactants are unexpected and considered critical to the invention.
In addition, patent examiners, in relying on what they assert to be general
knowledge in the art to negate patentability on the ground of obviousness, must
articulate that knowledge and place it of record, since examiners are presumed to act
from the viewpoint of a person of ordinary skill in the art in finding relevant facts,
assessing the significance of prior art, and making the ultimate determination of the
obviousness issue. Failure to do so is not consistent with either effective administrative
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007