Appeal No. 1996-2396
Application 08/285,873
The examiner has the initial burden under § 103 to establish a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
It is the examiner’s responsibility to show that some objective teaching or suggestion in the
applied prior art, either explicitly or implicitly, would have led one of ordinary skill in the art
to arrive at the claimed invention. In re O’Farrell, 853 F.2d 894, 907, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988).
Here, the examiner acknowledges that the Choay reference is deficient in that it
fails to teach the treatment of the scalp. However, she has failed to provide any evidence
to support her opinion that (i) one of ordinary skill in the art would “immediately envision”
the topical application of vitamin B12 to the skin on the top of the head; i.e., to the scalp, or
(ii) that the scalp has a tendency to scaling and dryness and, thus, such persons would be
motivated to select the scalp for topical treatment with vitamin B12. We remind the
examiner that a conclusion of obviousness is based on facts, and not on unsupported
generalities. In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970); In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968). Since the examiner has not clearly set forth on the record her findings of
fact and reasons for concluding that the claimed method would have been obvious to one
of ordinary skill in the art, we are constrained to reverse the rejection.
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