Appeal No. 2006-1383 Page 6
Application No. 10/025,065
4, 5, 7 and 8 under 35 U.S.C. § 103 as being unpatentable over Löffler in view of
appellants’ “admitted prior art”.
OTHER ISSUES
As discussed above, the evidence of record on appeal was deficient
because it failed to establish why a person of ordinary skill in the art would add
Aristoflex AVC to a composition. Without this knowledge, one would have no
reason to “optimize” its amount in the composition taught by Löffler. Accordingly,
upon receipt of the administrative file we encourage the examiner to take a step
back and reconsider the invention together with the available prior art to
determine why a person of ordinary skill in the art at the time of appellants’
invention would include Aristoflex AVC in a composition such as that described
by Löffler. For illustrative purposes, we direct the examiner’s attention to
Weihofen3, which teaches the use of Aristoflex AVC as a thickener.
If after having an opportunity to review the administrative file together with
the available prior art, the examiner is of the opinion that a rejection is necessary,
the examiner should issue the appropriate rejection, clearly and articulately
explaining the basis of the rejection and the evidence relied upon to support the
position taken.
3 Weihofen et al. (Weihofen), “Hydrafresh with the right polymer,” Clariant, pages 32-33 (February
2001)
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007