Appeal No. 1996-4133
Application 08/264,073
In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). In order to
meet the burden of establishing a prima facie case of unpatentability of the claimed
subject matter the examiner must establish that there is a reason, based on the prior art, or
knowledge generally available in the art as to why it would have been obvious to one of
ordinary skill in the art to arrive at the claimed invention. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 297, n.24, 227 USPQ 657, 667, n.24 (Fed. Cir. 1985).
On the record before us, the examiner has failed to provide any evidence which would
have reasonably led one of ordinary skill in this art to modify the composition of Geria by
substituting a soap gel-forming agent an alkali metal salt of a fatty acid "wherein at least
65% by weight, of the total weight of the soap gelling agent, are alkali metal salts of fatty
acids having carbon chain length in a range of C -C " for the sodium fatty acid salts20 22
disclosed therein. Where, as here, the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir.1988). Therefore, the rejection of claims 1-8 under 35 U.S.C. § 103
is reversed.
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