Appeal No. 1996-2731
Application No. 08/240,862
ether formulation over a commercially available 7:3 pantenol:pantenyl ethyl ether
formulation.
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).
Here, the examiner has failed to state how a person having ordinary skill in the art would
have found appellant’s claimed invention obvious. The mere fact that the prior art could be
so modified would not have made the modification obvious unless the prior art suggested
the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). The examiner has not explained how a person having ordinary skill
in the art would have arrived at the composition recited in the claims on appeal in view of
the primary reference teaching away from the claimed invention. “[W]hile it may ordinarily
be the case that the determination of optimum values for the parameters of a prior art
process would be at least prima facie obvious, that conclusion depends upon what the
prior art discloses with respect to those parameters.” In re Sebek, 465 F.2d 904, 907, 175
USPQ 93, 95 (CCPA 1972). Accordingly, the examiner has failed to establish a prima
facie case of obviousness.
Having determined that the examiner has not established a prima facie case of
obviousness, we find it unnecessary to discuss appellant’s unexpected results relied upon
to rebut any such prima facie case.
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