Appeal No. 2005-0836 Page 7
Application No. 09/880,292
surfactant (Brief, p. 8). Appellants also argue that the terms “emulsifier” and “surfactant” are
not equivalent and that the use of the two terms can indicate different functions in a composition
(Reply Brief, pp. 1-2). But, as evidenced by the definition of “surfactant” advanced by
Appellants (Reply Brief, pp. 1-2), an emulsifier is a type of surfactant. Appellants’ definition, in
fact, supports the Examiner’s finding that the broader term “surfactant” used in the claim
encompasses the chemical entities described in Torri. Nor do we think the Examiner erred in
concluding that it would have been obvious to use both clay and nonionic surfactants in the
composition of Torri as emulsifiers. When the prior art teaches several compositions useful for
the same purpose, it is prima facie obvious to combine two or more of those compositions for
use for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072
(CCPA 1980). That Appellants have articulated a different purpose for the nonionic surfactant
does not somehow negate the suggestion or motivation shown to be present in the prior art. In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
We also agree with the Examiner that Melvold and Woodruff suggest the use of nonionic
surfactants in concentrations overlapping those claimed (Answer, p. 5). The optimal amount
would have been obtained by one of ordinary skill in the art through routine experimentation.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claim 1 which has not been rebutted by Appellants.
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