Appeal No. 2002-0535 Page 3
Application No. 09/303,413
In response appellants point out (Brief, page 5), “it is not at all apparent
what function is served by zinc oxide in the Suffis et al. compositions. This
component is present in only the ointments of Example H and does not appear
to be discussed at another point in the disclosure or to be mentioned in the
claims.” We agree.
We find no disclosure in Suffis of zinc oxide having pigmentation or skin
protectant properties. The examiner’s unsupported assertion is not sufficient to
support a prima facie case of obviousness. See In re Lee, 277 F.3d 1338, 1343-
1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). See also W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552, 220 USPQ 303, 312-313
(Fed. Cir. 1983): “To imbue one of ordinary skill in the art with knowledge of the
invention.., when no prior art reference or references of record convey or
suggest that knowledge, is to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is used against its
teacher.”
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