Appeal No. 1996-2571
Application 08/119,058
relative amounts of mono-, di-, and triglycerides in their
respective oil vehicles. The examiner’s argument that
appellant has not established “criticality” or “unexpectedly
superior results” attributable to the recited proportions of
mono-, di-, and triglycerides puts the cart before the horse.
The examiner provides no reason, suggestion, or motivation
stemming from the prior art which would have led a person
having ordinary skill in the art to vary the
proportions of the various glycerides or to arrive at the
proportions of mono-, di-, and triglycerides recited in the
claims.
7. The initial burden of establishing reasons for
unpatentability rests on the examiner. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Obviousness can only be established by combining or modifying
the teachings of the prior art to produce the claimed
invention where
there is some teaching, suggestion, or motivation to do so
found either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art. See
8
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