Appeal No. 1996-1040
Application 08/069,434
whole (35 U.S.C. § 103). The claimed subject matter is "not broadly stated" as urged by
the examiner, but is directed to a method of making an insect repellant by combining a
water soluble substrate made of a substantially dry, rigid, open-celled foam consisting
essentially of vegetable starch with cedar oil. In failing to take into consideration these
claim limitations in rejecting the claims under 35 U.S.C. § 103, the examiner committed
reversible error. Therefore, this rejection under 35 U.S.C. § 103 is reversed.
Claims 1-14:
In rejecting claims 1-14 under 35 U.S.C. § 103, the examiner cites Eden as
disclosing (Answer, page 4):
the encapsulation of insect repellants in a starch matrix, see the Abstract and
col. 2, lines 1-19. In col. 3, lines 1-40 [or] this reference discloses that the
starch product can be subjected to drying prior to use. Moreover, though the
reference starch is described as a matrix, the product is capable of
releasing is (sic, its) encapsulated material, also see claim 2.
However, the examiner acknowledges that while Eden (Answer, page 4):
does not explicitly disclose the present claims, the disclosure would suggest
the present invention of utilizing a dry starch to absorb an insect repellant for
release of same in a desired locus.
It is the initial burden of the patent examiner to establish that claims presented in an
application for patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). We have carefully considered the evidence and discussion
in support of the rejection presented by the examiner. However, a fair evaluation of the
reference and consideration of the claimed subject matter as a whole, dictates a
conclusion that the examiner has failed to provide the factual basis which would reasonably
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