Appeal No. 1996-3982
Application No. 08/315,005
or adjuvant and a charge director would result in the extraction of only the
hydrocarbon vehicle. Indeed, the entire thrust of the Zosel reference is that
“transferability into the supercritical gas depends upon the specific constitution of
the compound.” See column 1, lines 63-65. Accordingly, the person having ordinary
skill in the art must independently determine in each system of compounds and
polymers, such as those present in a liquid developer, which component(s) may be
extracted with a supercritical gas. Therefore, Zosel fails to suggest the proposed
supercritical extraction required by the claimed subject matter.
Based upon the above analysis, the examiner's stated rejection falls short of
establishing a prima facie case of obviousness. The mere fact that the prior art
could be modified as proposed by the examiner is not sufficient to establish a prima
facie case. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). The suggestion for the proposed modification must be in the prior art,
and not in the applicant's disclosure. In re Dow Chemical Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
In the case before us, the examiner has simply failed to provide acceptable
reasons, based on the applied prior art or on the basis of knowledge generally
available to one of ordinary skill in the art, for the proposed modification. This is so
since the examiner has not convincingly explained why the combined references would
have fairly suggested the claimed subject matter to one of ordinary skill in the art.
Consequently, we will not sustain the rejections under 35 U.S.C. § 103 over these
references.
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