Appeal No. 2004-2205 Page 7
Application No. 09/766,403
In response to this argument, the examiner “note[d] that both compositions have
[a] continuous water phase. An oil-in-water nanoemulsion is an aqueous dispersion of
the nanoparticles of oil [globules]. See [Cervantes], col. 1, lines 52-62.” Examiner’s
Answer, page 6. The examiner argues that “[t]here is nothing nonobvious about using a
thickener for a water solution such as the hair dye of [Casperson] to modify the viscosity
of the water phase or the [Cervantes] oil-in-water nanoemulsion.” Id.
We agree with the examiner that the references support a prima facie case of
obviousness. Cervantes suggests that any of a variety of known thickeners could be
used to thicken the disclosed oil-in-water nanoemulsion, and the examiner has provided
a reasonable explanation for why those skilled in the art would expect that a thickener
used in aqueous compositions would also be useful for an oil-in-water nanoemulsion.
Based on Cervantes’ disclosure, and given the examiner’s explanation of how the cited
references would have been viewed by those skilled in the art, we agree with the
examiner that the skilled artisan would have found it obvious to use Casperson’s
thickener in Cervantes’ composition, with a reasonable expectation of success. See In
re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)
(“Obviousness does not require absolute predictability of success. . . . For obviousness
under § 103, all that is required is a reasonable expectation of success.”).
It is true that the specification provides evidence that one thickener (Carbopol)
works worse than would have been expected based on the prior art disclosures.
However, Appellants have provided no evidence that Carbopol is representative of the
other thickeners suggested by Cervantes or is representative of thickeners used in
aqueous compositions. Nor have Appellants provided evidence to show that those
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