Appeal No. 2001-1489 Page 15
Application No. 09/177,695
Claim 11 is directed to the skin treatment regime product that is used in the
process of claim 1. Examiner should review our comments above in treating this claim
in any subsequent prosecution of this application.
For the foregoing reasons, the position put forward by the examiner in support of
the rejection of claims 1-11 over Van Scott, Dutch Patent, German Patent and the
Jacqueline Cochran Advertisement is not amenable to a meaningful review.
Accordingly, we vacate the rejection of record and remand the application so that the
examiner may provide a more reasoned review of the record. Upon return of the
application, the examiner should step back and reassess the grounds of rejection for
the pending claims in view of the comments made herein. Examiner should reformulate
the rejection and provide a clear and consistent analysis that explains how the prior art
disclosures, would lead one of ordinary skill to modify the teachings therein to thereby
derive the claimed process and product. In doing so, examiner should address every
limitation in the claims and establish differences between the claims and the prior art
and, where differences exist, explain why the prior art provides substantial evidence
supporting a prima facie case of obviousness of the claimed process and product. In
that regard, we recommend that examiner review MPEP § 706.02(j) for a model of how
to explain a rejection under 35 U.S.C. § 103.
For the foregoing reasons, we vacate the rejection under § 103 and remand to
give the examiner an opportunity to consider the issues discussed herein and take
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