Appeal No. 2006-0391
Application No. 10/366,371
examiner acknowledges that “Nojima does not explicitly teach the claimed
combination of at least one silicone oil, at least one pigment and at least one
oxyalkylenated silicone substituted at the α and ω positions”; however, he
concludes that because Nojima teaches each of the elements of the claimed
invention,
[i]t is within the skill of an ordinary practitioner to select silicone oils among
other oils disclosed by Nojima and the organopolysiloxanes substituted at
the α and ω positions among four other organopolysiloxanes disclosed by
Nojima by routine experimentation. One having ordinary skill in the art
would have been motivated to do this to obtain the desired cosmetic
properties of the compositions [Answer, p. 4].
The appellants disagree, arguing that there is no suggestion to pick a
oxyalkylenated silicone substituted at the α and ω positions from the four (4)
types of oxyalkylenated silicones disclosed in the patent (Brief, pp. 14-16) and to
combine said oxyalkylenated silicone (substituted at the α and ω positions) with
at least one silicone oil (pp. 16-18) when the patent discloses twenty (20)
examples of solid oils, semisolid oils and liquid oils. According to the appellants,
Nojima discloses eighty (80) different oil “options from which to choose, only two
of which may read on the presently claimed invention,” without providing any
reasons for choosing the silicone oil required by the present invention. Brief,
p. 18.
It is well established that the examiner has the initial burden under § 103
to establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). To that end, it is the
examiner’s responsibility to show that some objective teaching or suggestion in
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