Appeal No. 2005-1742 Page 4
Application No. 09/436,171
“[T]he Examiner bears the burden of establishing a prima facie case of
obviousness based upon the prior art. ‘[The Examiner] can satisfy this burden
only by showing some objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.’” In re Fritch, 972 F.2d 1260,
1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citation omitted). An adequate
showing of motivation to combine requires “evidence that ‘a skilled artisan,
confronted with the same problems as the inventor and with no knowledge of the
claimed invention, would select the elements from the cited prior art references
for combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif.
Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed. Cir. 2000).
Appellants argue “the difference of having an aqueous phase greater than
85% by weight . . . is not addressed by the combination of references and on this
basis alone, there is no prima facie [case] of obviousness.” Appeal Brief, page 8.
Specifically, according to appellants, “Schreiber caps the amount of aqueous
phase at an amount less than that claimed by appellants and Dupuis discloses
nothing that would suggest increasing the amount of aqueous phase beyond
85% by weight even if it could be shown that Dupuis suggested the inclusion of
cationic polymers to Schreiber.” Id. We agree, and the rejection is reversed.
Claim 1 requires a water-in-oil emulsion, “with a content of water and
optionally water-soluble substances totaling greater than 85% by weight.” The
examiner relies on Schreiber to meet that limitation, stating that “Schreiber [ ]
teach[es] water-in-oil emulsions comprising 30-85% of an aqueous phase.”
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