Appeal No. 1996-2732
Application 08/241,524
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). While we agree with the examiner that (i) Su
discloses that aspect of the Jepson claim which is admittedly prior art; i.e., Su discloses a
self foaming gel comprising water, soap and a volatile self-foaming agent, and
(ii) Falk would have suggested to one of ordinary skill in the art the addition of a
fluorosurfactant to a shaving gel in order to improve or impart one or more of the desirable
properties listed in col. 4, lines 2-7, of the patent, we find the examiner’s rejection with
respect to the Aronson patent to be problematic.
Aronson is directed to high-internal-phase emulsions (HIPE’s) which are said to be
useful in a variety of applications such as rocket and jet fuels, cosmetics and drugs, and in
foods. Id., col. 3, lines 19-33. It is not clear, and the examiner has not explained, the
relevancy of HIPEs to the shaving cream art. For example, it is not clear whether the
examiner is applying Aronson because he believes that (i) the claimed shaving gel is an
HIPE, or (ii) the patent teaches or suggests that hydrogenated polyisobutene is a lubricant
which is commonly used in emulsions. On this record, the examiner has made no mention
of the former point and, with respect to the latter point, we do not find that Aronson teaches
that hydrogenated polyisobutene compound is a lubricant, as stated in the Answer.
Answer, p. 3. Rather, in the example relied upon by the examiner; i.e, Example 12, we find
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