Ex parte OKAZAKI et al. - Page 3




              Appeal No. 1997-3037                                                                                           
              Application 08/390,412                                                                                         
                      Claim 22 stands rejected under 35 U.S.C.  102 (b) as anticipated by Yomogida,                         
              and claims 9, 12, 16 and 24 through 27 stand rejected under 35 U.S.C.  103 as                                 
              unpatentable over Yomogida and Machida.  We reverse both rejections.                                           
                                                      DISCUSSION                                                             
              Anticipation                                                                                                   
                      We begin with the premise that “[a]nalysis begins with a key legal question -- what                    
              is the invention claimed?” since “[c]laim interpretation . . . will normally control the                       
              remainder of the decisional process."   Panduit Corp. v. Dennison Mfg. Co., 810 F.2d                           
              1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir., cert. denied, 481 U.S. 1052 (1987).                             
                      In rejecting claim 22 under 35 U.S.C.  102 (b), the examiner notes that Yomogida                      
              discloses “modern rose aromatic compositions comprising 0.2-50% by weight 1,3-                                 
              dimethoxy-5-methylbenzene and one substances [sic] selected from the group consisting                          
              of phenyl ethyl alcohol, citronellol, geraniol, nerol, citronellyl acetate and geranyl acetate.”               
              According to page 10 of the present specification, these latter compounds are                                  
              components of floral formulations, thus the examiner concludes that “‘sedative’ properties                     
              would be inherent in [Yomogida’s] composition.”  Examiner’s Answer, page 3.                                    
                      In response, appellants point to evidence of record that demonstrates that     1,3-                    
              dimethoxy-5-methylbenzene (DMB) “does not always have a sedative effect,” and “submit                          
              that it is improper to assert . . . that DMB inherently possesses a sedative effect.”  Brief,                  
              page 4.                                                                                                        


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