Appeal No. 2001-0980
Application 08/953,146
perpetuated when appellants amended claim 1 in response to the first Office action by
adding the molecular weight requirement of claim 5. Neither the Final Rejection nor the
Examiner’s Answer come to grip with this aspect of the claimed invention. This is
important since the composition of Singleton contains a polyethylene glycol having a
number average molecular weight of 200 to 300. As explained at column 3 lines 13-21
of Singleton, polyethylene glycol 400 and polyethylene glycol 600 do not provide a
stable mouth rinse at temperatures approaching 0o C. The examiner has not explained
why one of ordinary skill in the art would have found it obvious to use polyethylene
glycol having a molecular weight of about 400 to 600 in the composition of Singleton as
required by the claims on appeal. Obviousness under 35 U.S.C. § 103(a) must be
based upon the subject matter of a claim as a whole. Where as here the examiner’s
consideration of obviousness under this section of the statute is not based upon the
subject matter as a whole, that determination is legally flawed and must be reversed.
There is a second substantive reason why the examiner’s rejection must be
reversed. At page 2 of the first Office action the examiner states that Sumitomo
teaches utilization of both methylparaben and phenylcarbinol (benzyl alcohol) in
pharmaceutical compositions. As we understand the examiner’s position it is the
Sumitomo reference which is relied upon to establish the obviousness of using
methylparaben and phenylcarbinol together as a preservative agent in a pharmaceutical
composition. Again, we are hampered in our analysis of the examiner’s position due to
the manner in which it is presented. If this is the examiner’s position it is without factual
support on this record.
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