Appeal No. 1996-1040
Application 08/069,434
support a prima facie case of unpatentability of the subject matter of claims 1-14.
All of the claims require the presence or use of cedar oil which is indicated to be the
insect repelling component. The examiner has offered no evidence which would
reasonably establish that cedar oil was known to be an insect repellant at the time of the
invention. Additionally, the examiner has failed to demonstrate that the vegetable starch
matrix described for use in encapsulation by Eden, reasonably corresponds to the
"substantially dry, rigid, open-celled foam consisting essentially of vegetable starch" as
required by the claims on appeal. Appellant specifically argued that the claimed invention
(Brief, page 12):
does not entail the formation of a starch matrix which is intended to serve as
an encapsulation agent. Further, Applicant's invention employs a foamed
vegetable starch.
The examiner does not respond to this argument (Answer, page 5). That the matrix
material of Eden may be capable of absorbing oil and releasing it, is insufficient, standing
alone, to establish that it reasonably corresponds to the foamed vegetable starch of the
claims.
Where, as here, the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir.1988). Therefore, the rejection of claims 1-14 under 35 U.S.C. § 103 is
reversed.
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