Appeal No. 2006-0869
Application No. 09/847,883
The examiner finds that Morin discloses a method of manufacturing low
contaminant wipes useful as clean room wipes where a polyester fiber substrate is
presaturated with a desired solvent, in particular solutions of alcohols and water
(Answer, page 3). The examiner recognizes that Morin fails to teach that the particular
alcohol solution can be an acetylenic diol as required by the claims on appeal (Answer,
page 4). The examiner finds that Wilkinson discloses surfactants for use in
liquid/supercritical carbon dioxide applications, such as electronic cleaning operations,
where the surfactant composition comprises carbon dioxide/water mixtures with
acetylenic diols (id.). From these findings, the examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of appellants’ invention “to use
the acetylenic diols of Wilkinson as the alcohol in Morin motivated by the desire to
choose an alcohol suitable for applications such as electronic cleaning operations” (id.).
We disagree.
The initial burden of establishing a prima facie case of obviousness rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). It is incumbent upon the examiner, when combining references to establish
prima facie obviousness, to establish some reason, suggestion or motivation to combine
the references as proposed. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
1614, 1617 (Fed. Cir. 1999). As correctly found by the examiner, Morin discloses
prewetted cleaning wipes saturated with a “desired solvent,” where suitable solvents
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