Appeal No. 1996-0906
Application No. 08/110,341
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration
to the appellants’ specification and claims, and to the respective positions
articulated by the appellants and the examiner. We make reference to the
Examiner’s Answer (Paper No. 32, mailed October 2, 1995), and the Supplemental
Examiner’s Answer (Paper No. 35, mailed August 9, 1996) for the examiner’s
reasoning in support of the rejection. We further reference appellants’ Brief (Paper
No. 30, received July 13, 1995), and appellants’ Reply Brief (Paper No. 34,
received December 4, 1995) for the appellants’ arguments in favor of patentability.
The Clark in view of Thom and Matsuo series:
The examiner maintains (Answer, page 5) that:
It would have been obvious to include lipase from Pseudomonas as
an enzyme in the pre-spot composition of Clark for removing oil stain
from fabric or other surfaces to obtain the known function of the lipase
when used in a detergent composition or soaking liquid as disclosed
by Thom et al., i. e. [sic] the known function of lipase to hydrolyze oil
and aid in removing it from fabric. Hydrolyzing oil with lipase would
obviously produce glycerol and fatty acids that are more soluble than
the oil and be easier to remove from fabric. When lipase is added to
the pre-spot composition of Clark and the composition is applied to
fabric or other surface, the lipase would have obviously become
adsorbed to the fabric or surface since Matsuo et al disclose
adsorbing lipase to a cellulose carrier or other carriers (col 5, lines
46-50) that may be in the form of fibers (col 5, line 61).
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In satisfying this initial burden, “it is impermissible within the framework
of section 103 to pick and choose from any one reference only so much of it as will
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