Appeal No. 2004-0273
Application No. 09/958,702
invention to be established, the prior art as applied must be
such that it would have provided one of ordinary skill in the art
with both a suggestion to carry out appellants’ claimed invention
and a reasonable expectation of success in so doing. See In re
Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). “Both the suggestion and the expectation of success must
be founded in the prior art, not in the applicant’s disclosure.”
Id. Also, “[o]bviousness cannot be established by combining the
teachings of the prior art to produce the claimed invention,
absent some teaching, suggestion or incentive supporting the
combination.” In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276,
1278 (Fed. Cir. 1987).
Here, the examiner has not established that the skilled
artisan would have found it obvious to combine Garlisi’s
particularly disclosed esters in the composition of Ansmann when
Ansmann’s composition includes fatty alcohols, while Garlisi’s
composition does not include fatty alcohols. That is, Garlisi’s
use of the particularly disclosed esters is not used in the
context of a fatty alcohol containing composition. Adding
Garlisi’s particularly disclosed esters to the composition of
Ansmann may have been obvious to try, but this does not
constitute the standard for combining references under §103. In
re Geiger, 815 F.2d at 687, 2 USPQ2d at 1278; cf. In re Wesslau,
353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965).
Garlisi does teach use of hydroxycarboxylic acid alkyl
and/or alkenyl oligoglycoside esters as surfactants. The esters
are very efficient surfactants, having excellent detergent
properties. See the paragraph bridging pages 5-6 of Garlisi. On
page 6, at lines 13-14, Garlisi teaches that the esters prove to
be compatible with most of known surfactants and therefore they
may be formularized with them. Yet, Garlisi does not teach that
in fact the disclosed esters would function as such when combined
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