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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