Appeal No. 1997-2828
Application No. 08/087,548
present only in claims 6 and 11. However, the polybutene ingredient is specifically
listed as an element of all claims, including claim 1. Brief, page 9.
Recognizing this, the examiner entered a new grounds of rejection in the
examiner’s Answer (page 8), adding the Abber reference to address the polybutene
ingredient in the claims. The examiner, however, did not withdraw the pending rejection
over O’Sullivan, Asato and Maienfisch in view of Kieran.
In view of the above, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal, as the examiner has provided no argument or evidence of a
non-aqueous, pour-on, water-fast composition including a polybutene ingredient, as
claimed. Accordingly, we will not sustain the examiner's rejection of Claims 1, 4-6, 9-11
and 13-18 under 35 U.S.C. § 103 over O’Sullivan, Asato and Maienfisch in view of
Kieran.
35 U.S.C. § 103
Claims 1, 4-6, 9-11 and 13-18 stand rejected under 35 U.S.C. § 103 as
unpatentable over O’Sullivan, Asato and Maienfisch and Kieran in view of Abber.
It is well-established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason, suggestion, or
motivation to lead an inventor to combine those references. Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629, (Fed. Cir.
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