Appeal No. 2002-0519 Page 6
Application No. 09/668,959
transform Lin's method into a method of making an O/W emulsion using the specific
series of steps recited in claim 19.
According to the examiner, Lin fails to teach adding silicone polyether to the
aqueous phase (Paper No. 7, page 3, second paragraph). This is an apparent
reference to the "water phase (W)" identified as Part B of Example 2 of Lin (column 5,
lines 32-39). The examiner concludes that it would have been obvious to a person
having ordinary skill in the art at the time the invention was made to modify Lin's
method by adding the silicone polyether surfactant to the aqueous phase, per the
teachings of Gregoire at column 3, lines 12 through 15. On this record, however, there
is no apparent reason for doing so. The examiner has not adequately explained why it
would have been obvious to add silicone polyether specifically to water phase (W)
identified as Part B of Example 2 of Lin. Furthermore, even if that proposed
modification of Lin's method were made, per the teachings of Gregoire, the examiner
has not explained how the modification would result in the invention defined in any
individual claim on appeal.
For these reasons, the examiner's rejection of claims 1 through 23 under
35 U.S.C. § 103(a) as unpatentable "over Lin et al. (6,080,394) in view of Gregoire et al.
(5,449,510) and Fecht et al. (5,969,038)" is reversed.
Other Issue
In view of the "shotgun" nature of the examiner's rejection under 35 U.S.C.
§ 103(a), we express concern that the examiner may have overlooked the breadth of
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