Appeal No. 2003-1721 Page 3
Application No. 09/226,143
Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kitaoka in
view of the Statements in the Specification. Claims 9-17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Takagaki in view of the Statements in the Specification.
We reverse with respect to both rejections for the reasons that follow.
OPINION
The Examiner bears the initial burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In meeting that
burden, care must be taken to formulate a basis for the rejection which is consistent with the law
and supported by the evidence relied upon. In the present case, there are errors both in the
application of the law and in the interpretation of what the prior art references would have taught
to one of ordinary skill in the art.
Kitaoka is directed to a process for extracting carotenoids from bacterial cells. Takagaki
is directed to the stabilization of a carotenoid pigment composition with licorice organic solvent.
The Examiner acknowledges that neither Kitaoka nor Takagaki disclose that the carotenoids they
describe are in aggregated form. However, the Examiner concludes that, due to the similarities
in production methods and ingredients between the processes of the references and the process
described in the Statements in the Specification, “[i]t would have been obvious to one having
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007