Appeal No. 2001-0441
Application No. 08/779,219
We disagree.
It is well established that 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, 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., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). This the examiner
has not done.
Here, we find that the examiner has assumed that because the DHA-based
compositions disclosed by Andreadis (and Ziegler) and the indole/quaternary ammonium
halide-based compositions disclosed by Schultz are used for the same purpose, i.e.,
imparting a tan coloration to the skin without prolonged exposure to the sun, that the
additives employed in said compositions are interchangeable and will provide the same
effect in either context. However, the examiner has not pointed to any evidence of record
which supports this assumption. That is, the examiner has not provided any evidence
which demonstrates that antioxidants, in general, and sulfite ions, in particular, which are
used in indole/quaternary ammonium halide-based skin tanning compositions are also
used in DHA-based skin tanning compositions, and that such compounds are used for the
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007