Appeal No. 2001-0933 Page 6
Application No. 09/205,530
rests with the examiner to establish a prima facie case of obviousness of the
claimed invention over Hazen. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Accordingly, it is
incumbent on the examiner to address all the limitations in the claims and determine
if differences exist between any claimed limitation and what is disclosed in Hazen.
Since no indication is given as to examiner’s position on the claimed surfactants,
not all the differences between the claimed invention and Hazen have been
ascertained and, therefore, as a result, the prima facie case of obviousness
presented to us for our review is incomplete.
We also question examiner’s position with regard to the percentage of lower
alkanol ester of a fatty acid in the claimed composition. There is no dispute that
Hazen teaches this component but examiner’s position with respect to whether
Hazen renders obvious the claimed percentage of this alkanol ester of a fatty acid is
unclear.
The claimed invention calls for “from about 50 to about 95% by weight of a
lower alkanol ester of a fatty acid”. Examiner (Examiner’s Answer, p. 4) indicates
that Hazen states that “the lower alkanol ester should preferably comprise about 10
weight percent or more, greater than about than about 100 g/L of the total ready-to-
dilute system.” See Hazen, col. 5, lines 7-15. On its face, it would appear that
Hazen discloses a much broader range than what is claimed (10% or more v. 50-
95%). Accordingly, examiner would have the burden of establishing that a
composition having an amount of lower alkanol ester within the claimed more
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