Appeal No. 2004-0600 Paper 16
Application No. 10/024,983 Page 13
versus the amount of water "would be considered obvious as being within the purview
of skilled artisan" (Answer, p. 4, ¶ 3) neither answers appellants' argument nor
acknowledges that a specific type of surfactant, i.e., a nonionic organic surfactant, is
being claimed. The examiner has not satisfied his initial burden of setting forth a prima
facie case of obviousness. The examiner has failed to direct our attention to any
convincing evidence that one of ordinary skill in the art would have reasonably expected
a nonionic organic surfactant known to work in an oil-in-water emulsion to work in a
water-in-oil emulsion, as well. Here, at best, a skilled artisan might find it obvious to try
a nonionic organic surfactant in a W/O based on the disclosure of Remington, but that
is not the standard of 35 U.S.C. § 103. In re Goodwin, 576 F.2d 375, 377, 198 USPQ
1, 3 (CCPA 1978).
For these reasons, the examiner's rejection of claims 7-12 is reversed.
D. Conclusion
To summarize, the decision of the examiner to reject claims 7-12 under 35
U.S.C. § 103(a) as being obvious over Lin in view of Schilling, Schulz, Remington and
Zhang is reversed.
REVERSED
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CAROL A. SPIEGEL )
Administrative Patent Judge )
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