Appeal No. 2001-0933 Page 10
Application No. 09/205,530
Upon return of the application, the examiner should step back and reassess
the patentability of the pending claims in view of the comments made supra.
Examiner should reformulate the rejection and provide a clear and consistent
analysis that explains how the prior art disclosure either anticipates the claimed
invention or would lead one of ordinary skill to modify the mixture of Hazen in such
that it would suggest the claimed composition. To summarize, examiner should 1)
address every limitation in the claims and establish differences between the
claimed composition and Hazen and, if differences exist, explain why Hazen
provides substantial evidence supporting a prima facie case of obviousness of the
claimed composition; or 2) determine if Hazen identically teaches all the claimed
components and weight percentages, including that of the ester component and, if
so, consider a rejection over Hazen under 35 U.S.C
§ 102 on the grounds that Hazen anticipates the claimed invention.
For the foregoing reasons, we vacate the rejection under § 103 and remand
to give the examiner an opportunity to consider the issues discussed herein and
take appropriate action not inconsistent with the views expressed herein. We
emphasize that we vacate examiner’s rejections. This means that the instant
rejection no longer exists and the issues set forth herein cannot be satisfied by a
Supplemental Examiner’s Answer. See Ex parte Zambrano,
58 USPQ2d 1312, 1313 (Bd. Pat. App. & Int. 2000).
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