Appeal No. 2000-1568
Application 08/695,249
absorbing over 100 times their weight in water. Id., col. 7, lines 30-35. The
compositions are said to be useful for controlling insect populations in an aquatic
environment. Id., col. 1, lines 17-27.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). It is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available [in the art] would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Here, the examiner’s rejection is not a model of clarity. Rather, we find that the
examiner points, in an unfocused manner, to numerous teachings in the
various references which disclose assorted limitations present in different claims, and
concludes that
Insofar as both Shasha et al. references and the Quimby et al. reference
disclosed using starch as an encapsulant, it would have been obvious to
one of ordinary skill in the art to have used other starch compositions to
effect encapsulation such as starch copolymers which contain acrylamide
or acrylonitriles as disclosed in the Levy patent. In view of the combined
references, the claimed invention was within the skill in the art to make and
use at the time it was made and was as a whole, prima facie obvious
[Answer, p. 6].
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