Appeal No. 2003-1850
Application 09/783,510
the composition is to be sold as a liquid . . . ” (specification, page 31, lines 7-8). The Trinh
Examples include an amount of water or moisture consistent with the form in which the product
will be sold, with several requiring an amount of water or moisture greater than 20%. Thus, we
agree with the examiner that, prima facie, one of ordinary skill in this art would have selected the
amount of water to be used in the compositions of Trinh based on the form of the composition
desired, and thus would have arrived at a workable or optimum range for such amounts that fit
the desired form of the composition. Aller, supra.
Accordingly, based on the substantial evidence in Trinh, we determine that, prima facie,
one of ordinary skill in this art routinely working within the teachings of the reference would
have reasonably arrived at compositions falling within the appealed claims without recourse to
appellants’ specification.
Therefore, since a prima facie case of obviousness has been established over Trinh, we
have again evaluated all of the evidence of obviousness and nonobviousness based on the record
as a whole, giving due consideration to the weight of appellants’ arguments in the brief and reply
brief. See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir.
1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have considered appellants’ arguments in the brief (pages 12-17) and reply brief with
respect to the ground of rejection under 35 U.S.C. § 103. With respect to appealed claim 1,
appellants contend that there is insufficient guidance or incentive to select any of the non-
blooming perfume ingredients from Trinh Table 3 in amounts required by the appealed claims
and that the reference “does not enable one skilled in the art to make and use the presently
claimed compositions or methods of washing tableware using such compositions” (brief, pages
12-14; reply brief, pages 4-6). In view of the teachings of Trinh that we pointed to above, we
simply cannot agree with appellants’ arguments, for indeed, one of ordinary skill in this art
would have reasonably selected one of the base masking perfume ingredients from Trinh Table 3
because such ingredients are the majority of the non-blooming perfume ingredients listed there
and Trinh specifically points to the inclusion of such ingredients at least to a “minimized”
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