Appeal No. 2004-0600 Paper 16
Application No. 10/024,983 Page 12
Here, the examiner has not explained why one of ordinary skill in the art would
have been motivated to replace the elastomeric silicone polymer in Lin's W/O emulsion
containing oil soluble vitamins with an elastomeric silicone polymer which does not
contain any oxyalkylene units. Lin expressly states that effective vitamin delivery can
only be accomplished by using an elastomeric silicone polymer containing 4-30
oxyalkylene (i.e., ethylene oxide) units in its structure (c. 1, ll. 54-58). Even assuming
arguendo that Schulz's silicone elastomer having no oxyalkylene units in its structure
would provide improved lubrication of a W/O emulsion containing oil soluble vitamins
(see Answer, p. 4, ¶ 2), the examiner has failed to explain why the skilled artisan would
have reasonably believed that Lin's W/O emulsion would have been able to deliver its
oil soluble vitamins effectively with an elastomeric silicone polymer which does not
contain any oxyalkylene units in its structure. These reasons alone are a sufficient
basis on which to reverse the decision of the examiner to reject claims 7-12.5
In addition, as noted by appellants (Brief, p. 6, ¶ 2), Remington discusses the
usefulness of nonionic organic surfactants in O/W emulsions, whereas the emulsion of
Lin is a W/O emulsion. There is no apparent reason, on this record, to use a nonionic
organic surfactant in Lin's emulsion. The examiner's argument that either type of
emulsion consists of water, oil and a surfactant and that optimizing the amount of oil
5 The claim language "the W/O emulsion being free of silicone elastomers prepared using
unsaturated compounds containing silicon atoms" does not appear to preclude the presence of Lin's
elastomers. (The record is not clear on this point.) Assuming arguendo that the examiner's rejection was,
in relevant part, that it would have been obvious to add (rather than substitute) the silicone of elastomer of
Schulz to the emulsion of Lin, the examiner would still have to explain why one of ordinary skill in the art
would have been motivated to add a second elastomer to Lin's emulsion, especially one that did not
provide effective vitamin delivery. The examiner would also have to explain why one of ordinary skill in the
art would have used a nonionic surfactant in Lin's emulsion.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007