Appeal No. 2002-1559 Page 9
Application No. 09/282,708
prior art would lead the ordinary artisan to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). The findings of fact underlying
the obviousness rejection, as well as the conclusions of law, must be made in
accordance with the Administrative Procedure Act, 5 U.S.C. 706 (A), (E) (1994).
See Zurko v. Dickinson, 527 U.S. 150, 158, 119 S.Ct. 1816, 1821, 50 USPQ2d
1930, 1934 (1999). Findings of fact underlying the obviousness rejection, upon
review by the Court of Appeals for the Federal Circuit, must be supported by
substantial evidence within the record. See In re Gartside,
203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000). In addition, in
order for meaningful appellate review to occur, the examiner must present a full
and reasoned explanation of the rejection. See, e.g., In re Lee, 277 F.3d 1338,
1342, 61 USPQ2d 1430, 1432 (Fed. Cir. 2002).
With respect to claim 6, the rejection does not address the limitation of the
amount of surfactant in the shampoo composition as required by the claim, nor
did it address the amount of a cationic deposition polymer set forth by the claim.
All we have is the conclusory statement of the examiner, with no supporting
evidence, that the disclosure of Brown “would have suggested to the artisan of
ordinary skill that their composition could be modified, depending on the desired
properties of the final product.” Examiner’s Answer, page 4. Conclusory
statements as to teaching, suggestion or motivation to arrive at the claimed
invention, however, do not adequately address the issue of obviousness. See
Lee, 277 F.3d at, 1343-44, 61 USPQ2d at 1433-34.
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