Appeal No. 2001-0933 Page 7
Application No. 09/205,530
narrow range would have been obvious over Hazen, notwithstanding its broader
disclosure. However, that issue is not addressed.
Instead, examiner (examiner’s answer, pp. 4-5) argues that
10% is set as a lower limit for the ester component only if additional paraffinic or
aromatic solvents are also used, as in [Hazen]. In the examples, this is not the
case; thus the concentration of the ester component – being the only solvent
used herein – is necessarily higher and not explicitly stated.
Then, using the information given in the Hazen examples, examiner makes a
calculation the result of which leads the examiner (Examiner’s Answer, p. 5) to
conclude that “the volume of methyl ester mixture used in the Hazen et al examples
to reach a final volume of 1000 ml is well within appellant’s range.” Accordingly,
rather than establishing that a composition having an amount of lower alkanol ester
within the claimed more narrow range would have been obvious over Hazen,
examiner appears to be making the case that Hazen anticipates the claimed
composition. In fact, we have carefully reviewed the discussion accompanying the
rejection set forth in the Examiner’s Answer and cannot find a determination of
obviousness. There is no explanation of how one of ordinary skill would have been
led to employ an amount of lower alkanol ester of a fatty acid that would fall within
the claimed range in order to establish a prima facie case of obviousness. Given
that the rejection has been made under 35 USC § 103, and not under § 102, a
determination of obviousness must be made and, since that has not been done,
examiner’s position remains unclear.
Furthermore, examiner’s analysis of Hazen is confusing. As best as we can
understand, examiner has taken the concentrations for each component for the
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