Appeal No. 1996-2732
Application 08/241,524
that Aronson teaches the use of hydrogenated polyisobutene as the oil phase of the water-
in-oil emulsion described therein. Moreover, assuming arguendo, that hydrogenated
polyisobutene is a lubricant, the examiner has not explained why it would have been
obvious to one of ordinary skill in the art to use (i) the oil phase of a water-in-oil emulsion
(Example 12) in the claimed shaving gels which are oil-in-water compositions, or (ii) that
particular lubricant in a shaving cream gel out of the numerous oils disclosed by Aronson.
The examiner has not shown that some objective teaching or suggestion in the
applied prior art, or knowledge generally available in the art would have led one of ordinary
skill in the art to combine the references to arrive at the claimed invention. Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 745 F.3d 1568, 1573, 37 USPQ2d 1626, 1629
(Fed. Cir. 1996). To the contrary, the only place we find such suggestion is in the
appellants’ specification. Thus, we find that the examiner has relied on impermissible
hindsight in making his determination of obviousness. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992)(“It is impermissible to use
the claimed invention as an instruction manual or ‘template’ to piece together the teachings
of the prior art so that the claimed invention is rendered obvious”); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1141, 227 USPQ 543, 550 (Fed. Cir. 1985); W.L. Gore &
Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984) (“To imbue one of ordinary skill in the art with
knowledge of the invention in suit, when no prior art reference or references of record
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