Appeal No. 95-4250 Page 9
Application No. 08/086,395
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Rejections based on § 103 must rest on a factual basis with
these facts being interpreted without hindsight reconstruction
of the invention from the prior art.
In our view, the examiner has not furnished an adequate
evidentiary foundation from which a conclusion of obviousness
can be reached. In this regard, we do not find that the use of
an organosilane as claimed herein would have been reasonably
suggested for use in the composition of Yoneyama and would have
been rendered obvious within the meaning of 35 U.S.C. § 103 by
the teachings of Yoneyama taken together with Legrow and
Shioya. In particular, the examiner has acknowledged and we
agree that Yoneyama does not disclose organosilanes as being
useful additives for their composition. While Legrow does teach
that organosilanes of the type called for by the appealed
claims herein may be used in cosmetics as well as in other
applications (column 4, lines
1-7), we do not find this general suggestion of utility is
sufficiently specific to teach the use of such organosilanes in
the specific compositions of Yoneyama as a water phase
ingredient. The evidentiary record furnished by the examiner
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