Appeal 2006-2729
Application 10/193,363
invention need not be explained because the specification is directed to those
skilled in the art with conventional knowledge read into the disclosure).
In the absence of this analysis, the Examiner’s contentions based on
the breadth of functional material and surfactants encompassed by the claim
language and the failure to provide starting particle size distribution for such
materials do not establish a prima facie case. Indeed, Appellants’
contentions with respect to the disclosure of the mechanism involved these
materials in the context of the claimed processes and how that disclosure
would be considered by one skilled in the art are relevant to the inquiry even
if that mechanism is not specified per se in the claims. We are not
convinced otherwise by the Examiner’s contentions the Specification
discloses that selection of the surfactants is not on the basis of knowledge of
surfactants used in traditional systems and the characterization of
microemulsions is complex and a non-trivial task as stated in Myers which
do not establish the relative skill of one skilled in the art or the state of the
prior art.
Accordingly, in the absence of a prima facie case of nonenablement,
we reverse the ground of rejection of the appealed claims under 35 U.S.C.
§ 112, first paragraph, enablement requirement.
We agree with Appellants that the Examiner has not established a
prima facie case of anticipation or of obviousness under § 102(b) and
§ 103(a), respectively. Claim 18 is couched in customary product-by-
process format. See, e.g., In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d
1655, 1657-58 (Fed. Cir. 1990); In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 966 (Fed. Cir. 1985). Thus, the Examiner can establish a prima facie
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