Appeal No. 2002-0526
Application No. 09/141,515
& Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629,
(Fed. Cir. 1996) (citation omitted):
It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those
references.
In the present case, we find the examiner has provided evidence of a reason,
suggestion or motivation to lead one of ordinary skill in the art to combine the cited
references in the manner claimed. In particular, the examiner provides evidence
(Ramin) of a composition comprising an organic solvent such as that claimed, except
for the particularly claimed thickening or rheological agent. The examiner provides
evidence that one of ordinary skill in the art would be familiar with the use of ethyl guar
gum as a thickener or rheological agent for use with organic solvents or the creation of
coatings/film from organic solvents (Commander). Clarke further supports the
compatible use of ethyl guar in cosmetic applications.
Where the prior art, as here, gives reason or motivation to make the claimed
invention, the burden then falls on appellant to rebut that prima facie case. Such
rebuttal or argument can consist of any other argument or presentation of evidence that
is pertinent. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (en banc), cert. denied, 500 U.S. 904 (1991).
Appellant argues that the disclosure of Ramin relies heavily on the use of water
and that the present invention, by contrast, is directed to a nonaqueous composition.
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