Appeal 2006-2854
Application 10/348,165
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Kumar, 418 F.3d 1361, 1366, 76 USPQ2d 1048,
1050 (Fed. Cir. 2005). To support a rejection on obviousness grounds, the
Examiner must provide a detailed analysis of the prior art and reasons why
one of ordinary skill in the art would have possessed the knowledge and
motivation to make the claimed invention. See In re Kahn, 441 F.3d 977,
987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
The Examiner correctly recognizes that the amount of loading of the
dye will determine the intensity of the color of the dye particles (Answer 4).
However, the effectiveness and completion of the loading a dye into
microparticles is dependent upon several factors including the concentration
of the dye, solvent, and microparticles, the type of dye used, and the
temperature at which the process is performed. (See Hair, col. 8, ll. 11 to
26). For each of the stated grounds of rejection, the Examiner has failed to
identify the portions of the references that teach or suggest the process of the
presently claimed invention. More specifically, the Examiner has not
identified the portions of the references that teach controlling the amount of
dye incorporated into the microparticles is achieved by controlling a tuning
solvent.
Since we reverse for the lack of the presentation of a prima facie case
of obviousness by the Examiner, we need not reach the issue of the
sufficiency of the evidence as allegedly demonstrating unexpected results.
See In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987).
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