Appeal No. 96-3906
Application No. 08/038,588
would not have made the modification obvious unless the prior
art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). Here, the examiner does not point to any portion or
portions of the cited references establishing how or why the
prior art "suggested the desirability of the [proposed]
modification." In re Gordon, 733 F.2d at 902, 221 USPQ at
1127.
We also invite attention to King's disclosure suggesting
that the HLB number of the surfactant, or at least one of the
combination of surfactants disclosed by King, is preferably
controlled within at least about 12 up to about 15, and
especially from about 13 to about 15 (King, column 4, line 62
through column 5, line 41). This being the case, it would
appear that King tends to teach away from, not toward, the
claimed
invention which requires a nonionic surfactant "having an HLB
of about 3 to about 8."3
3On return of this application to the Examining Corps,
the examiner should ensure that dependent claim 6 is canceled.
Claim 6 reiterates the limitation appearing in claim 1 that
the nonionic surfactant has an HLB from about 3 to about 8.
-9-
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