Appeal No. 1997-1793
Application No. 08/528,044
Hattori. Also, while the examiner surmises that “flame
hydrolysis apparatus may be more readily available or produce
the mixed oxide more economically” (answer, page 3), the
examiner has not pointed to, and we do not find, any factual
basis in the record to support such an allegation.
As to Ishihara, the examiner has taken the position that
Ishihara suggests using the mixed oxides of Hattori, as
modified by Kleinschmit, for cosmetics (answer, pages 3-4).
Further, the examiner has alleged that one of ordinary skill
in the art would have been motivated to use Kleinschmit’s
flame hydrolytic method to make Ishihara’s mixed oxides and
would have had a reasonable expectation of success in doing so
as an obvious design choice (answer, pages 7-8). However, the
examiner has not properly established whether the Ishihara
abstract is in fact prior art against the subject matter of
the appealed claims, especially in view of the uncertainty of
the publication date of this reference. In any event, we find
that the examiner’s position is not well founded because: (1)
there is no teaching or suggestion in the prior art to use
Kleinschmit’s method to make Ishihara’s
product; and (2) there is no reasonable expectation of success
from the prior art for doing so. Vaeck, 947 F.2d at 493, 20
USPQ2d at 1442.
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