Appeal No. 2001-0441
Application No. 08/779,219
same purpose. To the contrary, as pointed out by the appellants, the evidence of record
shows that the DHA- and indole- based compositions are so different chemically from
each other that they are unstable when both are present at the same time. Ziegler, col. 1,
lines 52-55. Thus, we find the examiner’s sweeping generalizations as to why the the
claimed subject matter would have been obvious over the applied prior art to be
unsubstantiated and inconsistent with the evidence of record. We remind the examiner
that a conclusion of obviousness must be based on fact and not unsupported generalities.
In re Freed, 425 F.2d 785, 787, 165 USPQ 570, 571 (CCPA 1970); In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1957 (1968).
Since the examiner has not pointed to any teaching(s) or suggestion(s) in either
Andreadis or Schultz that antioxidants, of any kind, are even used in skin tanning
compositions comprising DHA, we find that he has engaged in impermissible hindsight in
making his determination of obviousness. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991)(“It is impermissible, however, simply to engage in a hindsight
reconstruction of the claimed invention, using the applicant’s structure as a template and
selecting elements from references to fill the gaps”); Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985);
W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313
(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
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