Appeal No. 2004-2339 Page 4
Application No. 09/900,596
By way of example only, the need for the examiner to be more specific in
explaining how the reference describes a composition within the metes and bounds of
claim 1 on appeal concerns the requirement of claim 1 that the second component
comprise a non-toxic nutrient in a water phase. At best, the examiner explains that the
nitrogen containing emulsifiers described in Freiesleben “will be located at the oil/water
interface as is well-known for the behavior of such compounds.” Examiner’s Answer,
page 5. It is not apparent why the examiner considers a component that is located at
oil/water interface would be considered to be “in a water phase” as required by claim 1
on appeal.
Furthermore, where the nitrogen containing emulsifiers of the reference are
located in the composition is a core factual finding that underpins the examiner’s
conclusion of anticipation. Here, the examiner has only asserted that it is “well known”
that the emulsifiers will be located at the oil/water interface. As stated in In re Zurko,
258 F.3d 1379, 1385-86, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001), “the Board must
point to some concrete evidence in the record” to support such a finding, rather than
relying upon our assessment of what is “well recognized” or what a skilled artisan would
be “well aware.” Nor can facts relied upon in reaching a conclusion of unpatentability be
based upon “subjective belief and unknown authority.” See In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir 2002).
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007