Appeal No. 1999-1321
Application No. 08/625,495
examiner has not shown, for example, that those skilled in the art would have
thought it a good idea to combine an insecticide with either a salad dressing or a
cosmetic. Nor has the examiner established any other basis for the skilled
artisan to combine the teachings of the cited references (except, of course, to
meet the limitations of the instant claims).
Where the prior art does not provide motivation to combine the teachings
of the cited references, rejection for obviousness is improper. We reverse the
rejection under 35 U.S.C. § 103.
Other Issues
Independent claim 14 is directed to a composition comprising, among
other things, “at least one volatile oil selected from the group consisting of anise
oil, calendula oil, quassia oil and sassafras oil.” Claim 2 depends on claim 14
and states that the “volatile oil is selected from the group consisting of anise oil,
calendula oil, quassia oil, rosemary oil and sassafras oil” (emphasis added).
Claim 2 does not seem to comply with 35 U.S.C. § 112, fourth paragraph, which
states that “a claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed” (emphasis added). After return of this case, the examiner should
ensure that all the dependent claims comply with 35 U.S.C. § 112, fourth
paragraph.
discrepancy.
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