Appeal No. 1997-3900
Application 08/258,024
Step 3: add from 0.5 to 5% by weight of a
coemulsifying agent.
Step 4: replace the specific polyacrylamide synthetic
gelling agent (SEPIGEL 305) of Brancq et al. with a natural
gelling agent specified by the presently claimed invention.
We do not question that one or ordinary skill in this art could select and combine the
various components required by the claims on appeal in a manner to arrive at a
composition which would fall within the scope of the present claims. However, the fact that
the prior art could be so modified would not have made the modification obvious unless
the prior art suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no reason
stemming from the prior art which would have led a person having ordinary skill to the
modify the composition of Brancq by substituting the various components described by
Ziegler and Orr. Thus, in our opinion, the examiner has failed to establish a prima facie
case of obviousness within the meaning of 35 U.S.C. § 103 of the subject matter of the
claims on appeal.
Where, as here, the examiner fails to establish a prima facie case of obviousness,
the rejection is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988). Therefore the rejection of claims 1-8
and 10-11 under 35 U.S.C. § 103 is reversed.
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