Appeal No. 1998-2523
Application No. 08/778,644
Based upon the above, we conclude that neither Ishikawa or Okauchi describe a
bleaching solution that anticipates or renders obvious the subject matter of claim 18.
The Rejection of the claims over combination of Ishikawa and Okauchi
The Examiner has rejected the subject matter of claims 18 to 22 and 27 to 31
under 35 U.S.C. § 103(a) as obvious over the combination of Ishikawa and Okauchi.
However, the Examiner has not stated any reasons why one of ordinary skill in the art
would have been motivated to combine the teachings of Ishikawa and Okauchi to
render the claimed subject matter unpatentable under 35 U.S.C. § 103 (a). It must be
remembered that the burden of establishing a prima facie case of unpatentability
rests upon the Examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). It is therefore incumbent on the Examiner to provide a factual basis
for providing the motivation to combine the teachings of the prior art. In the present
case, the Examiner has not discharged that burden.
CONCLUSION
The rejection of claims 18 to 22 and 27 to 31 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Ishikawa
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