Appeal No. 2003-1010
Application 09/357,393
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a prima
facie case of obviousness. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
The examiner argues that in view of Doublier’s disclosure,
“one of skill in the art would recognize that neutralization of a
polysaccharide with an organic base for the formation of an
organic salt would be desired to increase solubility” (answer,
page 5). The examiner, however, has not pointed out where Haug
teaches that increased solubility of his neutralized alginic acid
is desirable. The teaching of that desirability relied upon by
the examiner appears to come from the appellant’s specification.
Also, the examiner has not pointed out where Doublier discloses a
step of rendering a polysaccharide less hydrophillic, much less
doing so by reacting a polysaccharide with an organic base. The
examiner appears to rely upon the appellant’s specification for a
disclosure of such a step and for a disclosure of using an
organic base in that step.
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