Appeal No. 1996-1960
Application No. 07/975,167
soluble in 1 liter of water” (answer, page 12, first full para.). Ordinarily, when a reference is relied on
to support a rejection even in a "minor capacity," that reference should be positively included in the
statement of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA
1970). The examiner has not cited Morrison as part of the rejection. However, even if he had,
Morrison is even less persuasive than McCroskey, Farnham, Rauscher or Blair because Morrison only
discloses p-nitrophenol devoid of any saccharide component.
For the above reasons, we find the examiner has not carried his burden of establishing a prima
facie case of obviousness. Having concluded that the examiner has not established a prima facie case
of obviousness, we do not reach the rebuttal references and declaratory evidence discussed in
appellants’ brief (page 9, fn 1) and reply brief (pages iii-iv).
The rejection of claims 13-20 under 35 U.S.C. § 103 as being unpatentable over Kasahara,
McCroskey, Farnham and either Rauscher or Blair is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 13-20 under 35 U.S.C. § 103 as
being unpatentable over Kasahara, McCroskey, Farnham and either Rauscher or Blair is reversed.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
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