Appeal No. 2005-0222 Page 4
Application No. 09/923,629
supply deficiencies in its factual basis. To the extent the Patent Office rulings are
so supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968)
(emphasis in original).
Appellants primarily argue that the transesterification conditions taught by
either of the Hunt references does not meet the mild transesterification conditions
required by step (c) of claim 1. The rejection as set forth above, however,
focuses on the transesterification of the sterol esters of step (e). We find that the
rejection fails to set forth a prima facie case obviousness with respect to that
step, and thus rest our decision on those grounds.
Step (e) of claim 1 requires that the sterol esters be transesterified “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.” The rejection asserts “optimization of the reaction
by variation in reaction conditions such as, temperature, pressure and/or reaction
time is with 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 yield of the desired product.”
Examiner’s Answer, pages 4-5.
We acknowledge that it is generally considered to be obvious to the
ordinary artisan to develop workable or even optimum ranges for parameters or
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