Appeal No. 2005-1742 Page 5
Application No. 09/436,171
Examiner’s Answer, page 3. The examiner asserts further that “the claim
limitation merely requires the amount of the aqueous phase comprising water
and water-soluble substance be greater than 85%. Schreiber teaches that its
solid composition may comprise up to 85% of water, and applicants’ limitation
‘greater than 85%’ can be, for example, 85.001%. The claimed weight limitation
of the aqueous phase is thus rendered obvious by the teachings of Schreiber.”
Id. at 6.
The examiner misstates the issue. Admittedly, “greater than 85%” reads
on an amount of 85.001% by weight. Schreiber I, however, teaches that “[t]he
amount of water can be up to about 85% by weight, based on the total weight of
the preparations, optimum water contents usually being chosen in the range
between 50 and 75% by weight.” Id. Col. 10, lines 1-4. Thus, Schreiber I does
not teach or suggest amounts greater than 85%. Thus, the issue becomes does
Schreiber I provide motivation to prepare water-in-oil emulsion, “with a content of
water and optionally water-soluble substances totaling greater than 85% by
weight?”
The examples in Schreiber I, however, do not even approach a content of
water and optionally water-soluble substances totaling greater than 85% by
weight.2 Moreover, the examiner has not pointed to any teachings in either
Schreiber I or Dupuis that would motivate the ordinary artisan increase the
aqueous phase to greater than 85%. Thus, one of ordinary skill in the art, when
2 We also note that the claims in Schreiber are limited to “an aqueous phase which comprises . .
. from 50 to 75% by weight of water . . . .”
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