Appeal No. 2001-1241 Page 8
Application No. 09/101,234
rheology. The examiner has not explained why those skilled in the art would
have read the reference to “stabilizers” to imply “modifying the viscosity or
rheology of the composition.”
More important, the examiner does not address the difference between
the compositions disclosed by the references: Schade’s cross-linked polymer is
disclosed to be useful in oil-in-water emulsions while Shukla’s non-crosslinked
polymers are used to make wax granules free-flowing. Thus, even if both Shukla
and Schade would be understood to teach modifying viscosity using similar
polymers, the polymers are used to modify different types of compositions. The
examiner has not adequately explained why those skilled in the art would have
been motivated to combine a polymer disclosed to be useful in oil-in-water
emulsions with a wax granule composition.
“Obviousness cannot be established by combining the teachings of the
prior art to produce the claimed invention, absent some teaching or suggestion
supporting the combination.” ACS Hosp. Systems, Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). Since the examiner has
not shown that those skilled in the art would have been motivated to combine the
cited references, the rejection under § 103 must be reversed.
Other Issues
In the future, the examiner would be well-advised not to rely on foreign-
language documents. An English-language equivalent, if available, or a
translation of the foreign document would be a much more reliable basis for a
prior art rejection. See, e.g., Ex parte Jones, 62 USPQ2d 1206, 1208 (Bd. Pat.
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