Appeal No. 1997-1556
Application 08/340,247
1531 (Fed. Cir. 1988). In proceedings before the PTO the examiner has the burden of establishing the
prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rhinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). To meet this burden, the examiner must present a factual basis supporting
the conclusion that a prima facie case exists. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967); In re Lunsford, 357 F.2d 385, 392, 148 USPQ 721, 726 (CCPA 1966); In re Freed, 425
F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970).
First, the examiner has not explained why the person having ordinary skill in the art would be
motivated to select a tributoxyethyl phosphate from the numerous phosphates disclosed by Moreton.
Second, and we think more importantly in this case, the record does not establish that there would be a
reasonable expectation of success in substituting tributoxyethyl phosphate for tributyl phosphate or tricresyl
phosphate. To the extent Moreton teaches interchangeability of the various phosphates, it is with respect
to compositions including substantial amounts of an aliphatic halogen. Moreton provides no guidance with
respect to the compatibility of any of the phosphates with natural triglycerides. The examiner has not
asserted and not provided any basis to hold that one having ordinary skill in the art would have recognized
that tributoxyethyl phosphate is so structurally similar to tributyl phosphate or tricresyl phosphate that the
properties of the former would be expected to be similar to the latter two phosphates. Based on the
teachings of the references, we can not conclude that a person having ordinary skill in the art would have
a reasonable expectation of success in substituting tributoxyethyl phosphate for the tributyl phosphate or
tricresyl phosphate in the Kulazhanov and Thornley hydraulic fluids. In failing to demonstrate that the
person of ordinary skill in the art would have been motivated to substitute tributoxyethyl phosphate and
a reasonable expectation of success in making the substitution, the examiner has not met her burden of
establishing the prima facie obviousness of the claimed subject matter.
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