Ex parte OKAZAKI et al. - Page 6

                  Appeal No. 1997-3037                                                                                                                    
                  Application 08/390,412                                                                                                                  
                  would have been obvious to one having ordinary skill in the art to substitute jasmine oil for                                           
                  the phenyl ethyl alcohol in the compositions of [Yomogida] to produce a jasmine fragrance                                               
                  having a hypnotic effect since [Machida teaches] that both materials provide a hypnotic                                                 
                  activity.”  Examiner’s Answer, page 4.                                                                                                  
                           We disagree with the examiner’s reasoning and conclusion.  The examiner                                                        
                  proposes adding jasmine oil to Yomogida’s composition “to produce a jasmine fragrance                                                   
                  having a hypnotic effect.”  However, Machida teaches that jasmine oil, on its own, has a                                                
                  hypnotic effect.  Therefore, it is unclear why one skilled in the art would combine it with                                             
                  anything to impart a property it already exhibits.                                                                                      
                           Moreover, Yomogida is directed to developing a synthetic, idealized “modern rose”                                              
                  aroma.  The examiner has not explained why one skilled in the art would compromise the                                                  
                  “modern rose” aroma of Yomogida’s compositions by combining them with a distinctly                                                      
                  different scent like jasmine.                                                                                                           
                           We hold that the examiner has not established a prima facie case of obviousness.                                               
                  Accordingly, the rejection of claims 9, 12, 16 and 24 through 27 under 35 U.S.C.  103 is                                               

                                                      William F. Smith                             )                                                      
                                                      Administrative Patent Judge                  )                                                      


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