Ex parte JOHN M. BEHAN et al. - Page 4

          Appeal No. 95-2136                                                          
          Application 07/980,156                                                      

          flavors, such as coffee, tea and vanilla, are enabled by                    
          appellants’ specification.  However, the examiner does not                  
          satisfy his burden by simply noting that there are no examples in           
          the specification which use coffee, tea and vanilla flavors.  It            
          is incumbent upon the examiner to establish with scientific                 
          evidence and/or persuasive reasoning that specific perfumes and             
          flavors would be inoperable with the claimed aldehyde/amine                 
          reaction product, e.g., they would be incompatible therewith.               
          This the examiner has not done.  For instance, the examiner has             
          not explained why one of ordinary skill in the art would be                 
          unable to use coffee or tea flavors in the soap bars of                     
          appellants’ Example 1.  Appellants contend that “the composition            
          of the present invention is applicable to all perfumes and                  
          flavors for addition to triglycerides or triglyceride                       
          derivatives” (page 9 of Brief), and the examiner must have a                
          reasonable basis for doubting the truth of appellants’                      
          assertions.  In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,              
          369 (CCPA 1971).  However, the examiner has provided no                     
          reasonable basis for concluding that the claimed aldehyde/amine             


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