Appeal No. 2001-1489 Page 7
Application No. 09/177,695
Examiner’s conclusion of obviousness over the cited prior art combination must
be supported by substantial evidence as supported by the record. See In re Lee, 277
F.3d 1338, 1343, 61 USPQ2d 1430, 1432 (Fed. Cir. 2002). The legal conclusion that
there exists a prima facie case of obviousness is based on factual inquiries. See
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “The
factual inquiry whether to combine references must be thorough and searching.”
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008
(Fed. Cir. 2001).
The patent examination process centers on prior art and the analysis thereof. When
patentability turns on the question of obviousness, the search for and analysis of the
prior art includes evidence relevant to the finding of whether there is a teaching,
motivation, or suggestion to select and combine the references relied on as
evidence of obviousness.
In re Lee, 277 F.3d 1338, 1342-1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
We find that the factual support for examiner’s position has not been thoroughly
presented and therefore the conclusion of obviousness is not supported by substantial
evidence. Until we know examiner’s reasoning leading up to the conclusion that the
claimed process for cosmetically improving human skin and skin treatment regime
product would have been obvious over the cited art combination, the panel cannot
make a meaningful review of the rejection of the claims. As a result, we vacate the
rejections of record, and remand the application for further clarification of the grounds
of rejection.
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