Appeal No. 2005-0930 Page 6
Application No. 09/965,792
composition comprising at least one plasticizer (see claim 18).” Examiner’s Answer,
page 6. By that statement, we take it that the examiner views the claim language “at
least one plasticizer” as specifically teaching the use of two or more plasticizers in the
Mondet composition. Second, the examiner relies upon In re Kerkhoven, 626 F.2d 846,
850, 205 USPQ 1069, 1072 (CCPA 1980) for the proposition that “[i]t is prima facie
obvious to combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to be used for
the very same purpose.”
After considering the respective positions of appellants and the examiner, we find
that we are in agreement with appellants.
First, we do not find in the Examiner’s Answer or elsewhere in the record any fact
finding by the examiner as to how many of the exemplified plasticizers in Mondet meet
the requirements set forth in claims 1 and 9 for either the first organic solvent or the
second organic solvent. While some of the compounds listed in Mondet are stated in
this specification to be useful as either the first or second organic solvent, the examiner
has not set forth how many of the listed compounds in Mondet actually meet the claim
requirements. Thus, even if we were to agree with the examiner that it would have
been obvious to use more than one plasticizer from those listed in Mondet, we do not
know how many of the myriad combinations of two plasticizers derivable from the list
would actually meet the requirements of claims 1 and 9. It may be many or it may be
few. We simply do not know since the examiner has not favored the record with fact
finding in this regard.
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