Appeal No. 2005-0222 Page 3
Application No. 09/923,629
esters in the presence of a lower alcohol and basic catalyst; removal of the
excess alcohol, basic catalyst, fatty acid alkyl ester and glycerol; and conversion
of the sterol esters in the product obtained by transesterification would be
obvious to the skilled artisan in the art at the time of the invention.” Examiner’s
Answer, page 4.
The rejection concludes:
The instant claims differ by reciting the transesterification of
the sterol esters is at a temperature of from 115°C to 145°C and a
pressure of from 2 to 10 bar for a period of from 3 to 10 hours.
However (a) [Hunt ’252] teach[es] said transesterification can be
done at temperatures between about 150°C and about 240°C and
in reaction times of 10 minutes or more, such as 1 to about 3 hours
under pressure and (b) optimization of the reaction by variation in
reaction conditions such as, temperature, pressure and/or reaction
time is with[in] [sic] the level of skill of the ordinary artisan. The
motivation to make changes to the reaction conditions would be
based on the desire to obtain optimum conditions resulting in
increase[d] [sic] yield of the desired product. Thus, the claimed
process would have been obvious based on prior art teachings and
the level of skill of ordinary artisan in the art at the time of the
invention.
Id. at 4-5 (emphasis in original).
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99
(Fed. Cir. 1988). “A rejection based on section 103 clearly must rest on a factual
basis, and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art. In making this evaluation, all facts must be
considered. The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
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