Appeal No. 95-0969
Application 07/945,586
provided no factual support for his argument that use of
polyglycerol fatty acid esters as emulsifiers is conventional in
the art and that it therefore would have been obvious to one of
ordinary skill in the art to use Yokobori’s polyglycerol fatty
acid ester as Terada’s polyhydric alcohol fatty acid ester
emulsifier (answer, page 4).
The examiner has not explained, and it is not apparent, why
one of ordinary skill in the art would have been motivated by the
teachings of Terada and Yokobori to use as Terada’s polyhydric
alcohol fatty acid ester the polyglycerol fatty acid ester
recited in appellants’ claim 1, and would have had a reasonable
expectation of success in doing so. See In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re O’Farrell,
853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988); In re
Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir. 1985).
Consequently, we conclude that the examiner has not carried his
burden of establishing a prima facie case of obviousness. Since
no prima facie case of obviousness has been set forth, we need
not address the experimental results. See In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
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