Appeal No. 2006-1222 Page 4
Application No. 10/141,442
April 21, 2004. The examiner’s discussion of the obviousness rejection as it is
set forth in the non-final Office Action dated September 30, 2003 is extremely
unclear, particularly when a subsequent non-final Office Action, mailed April 21,
2004, sets forth the basis for the anticipation rejection now before this panel for
review.
Nevertheless, for clarity we reproduce, in its entirety, the examiner’s
statement of the anticipation rejection as it is found at pages 2-3 of the Office
Action, mailed April 21, 2004, emphasis added:
Claims 1-18, 20-30 and 32-36 are rejected under 35 U.S .C.
102(b) as being anticipated by Warner et al USP 5,55,345.
Warner et al. disclose lotion compositions for imparting soft,
lubricious feel to tissue paper. Warner further discloses in claim 1
that the composition is semi-solid or solid at 20°C. In column 5,
Warner also discloses that emollients are present, specifically
isopropyl myristate. In column 9, Warner further discloses that said
composition is substantially free of water. In column 9, Warner
further discloses that other emollients are also present, specifically,
cetyl and stearyl alcohol, polyhydroxy emollients, aromatic or linear
esters, fatty alcohols with carbons between 12 and 18. In column
14, Warner also discloses that other additives are present, more
specifically, antibacterial agents, perfumes, solvents, etc. Warner
discloses each and every aspect of the invention as claimed by the
applicant in the instant case. Applicant is further advised that the
courts have sanctioned the practice of nominally basing rejections
on 35 USC 103 when, in fact, the actual ground of rejection is that
the claims are anticipated by the prior art; justification for the
sanction is that lack of novelty, e.g. as evidenced by a complete
disclosure of the invention in the prior art, is the epitome of
obviousness. In re Pearson, 181 USPQ 641.
As set forth above “[u]nder 35 U.S.C. § 102, every limitation of a claim
must identically appear in a single prior art reference for it to anticipate the
claim.” Gechter v. Davidson. Further, it is the examiner’s burden of setting forth
a fact-based analysis of the claim together with the prior art pointing out where
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