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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