Appeal No. 95-4250 Page 11
Application No. 08/086,395
In our view, however, at least one prior art supported
reason or advantage for using an organosilane as taught by
Legrow in the aqueous phase of Yoneyama is required to support
the proffered rejection under § 103. Here, the most that can
be concluded from the collective teachings of the applied
references is that it might have been obvious for one of
ordinary skill in the art to try an organosilane as a cosmetic
ingredient as generally taught by Legrow. Of course, it is by
now well settled that such is not the proper standard for
determining obviousness under 35 U.S.C. § 103. In this regard,
our court of review has made clear that "obvious to try" is not
the correct standard for determining obviousness under 35
U.S.C. § 103. See In re O’Farrell, 853 F.2d 894, 903-04, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988). In this regard, no
suggestion of using an oxyethylene functional organosilane as
an aqueous phase constituent in a gel composition as disclosed
by Yoneyama is suggested by the combined reference teachings.
Accordingly, we are constrained to reverse the rejection
of the appealed claims under 35 U.S.C. § 103 because the
examiner has simply failed to meet his burden of establishing
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