Appeal No. 2002-0448 Page 5
Application No. 09/194,824
a reaction product of a hydroxycarboxylic acid such as citric acid
with fatty alcohols having [the] same limitation as the instant fatty
alcohol polyglycol ether.
Examiner further takes the position that since the precursor
compositions of Turchini is the same as the instantly claimed
process, their reaction product, such as those disclosed by Turchini
which consisting of esters of citric acid with aliphatic poly-
oxyalkylated alcohols, meet the limitation of the instant reaction
products.
This finding, however, is factually incorrect. With underlining to emphasize the
differences, we note that the formula for the ethoxylated alcohols,
R3(OCH2CH2)nOH, set forth in Turchini is not the same as formula forth for the
fatty alcohol polyglycol ether, R1O(CH2CH2O) nH, set in appellants’ claimed
invention.
Since the underlying premise of the examiner’s rejection is factually
incorrect we reverse the rejection of claims 11-14 under 35 U.S.C. § 102(b), as
being anticipated by Turchini.
THE REJECTION UNDER 35 U.S.C. § 103:
Obviousness is a legal conclusion based on the underlying facts. Graham
v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); Continental
Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1270, 20 USPQ2d 1746,
1750 (Fed. Cir. 1991); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1566-68, 1 USPQ2d 1593, 1595-97 (Fed. Cir. 1987), cert. denied, 481 U.S. 1052
(1987). To establish a prima facie case of obviousness, there must be more
than the demonstrated existence of all of the components of the claimed subject
matter. There must be some reason, suggestion, or motivation found in the prior
art whereby a person of ordinary skill in the field of the invention would make the
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