Appeal No. 2001-1779
Application No. 09/398,898
any analysis regarding how the references should be modified to arrive at the
claimed invention. Rather, the examiner provides the conclusory statement that
“[i]t would have been obvious to one of ordinary skill in the art at the time of the
invention to combine the teachings of WO ‘069 and US ‘926 with the reasonable
expectation of producing a topical composition that exhibits estrogenic activity.”
Examiner’s Answer, page 4. In contravention of Lee, supra, the examiner does
not support this statement with any factual details explaining why one of ordinary
skill would have been motivated to have combined the teachings of the cited
references, or how, specifically, the references should be modified so as to result
in the claimed subject matter.
In sum, because the examiner does not, with any degree of specificity,
point to the relevant portions of the cited references which would have led the
artisan of ordinary skill to a prepare a skin care composition having the claimed
ingredients in the claimed amounts, we find that the examiner has not
established a prima facie case of obviousness. We therefore reverse the
appealed obviousness rejection.
Additional Issues
Our review of the record in this appeal included a review of parent
application 08/901,052, which issued as U.S. Pat. No. 6,030,620 on February 29,
2002. We note that each of the patented claims recites a method of using the
exact composition recited in appealed claim 2. Therefore, upon taking this case
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