Appeal No. 2003-0568 Page 3
Application No. 09/264,531
inventor to combine those references.” Pro-Mold and Tool Co. v. Great Lakes
Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved.... The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
On this record the examiner fails to provide any factual evidence that would lead
a person of ordinary skill in the art at the time the invention was made to modify
the Yu reference by combining tazarotene with alpha hydroxy acid as is required
by the claimed invention.
Accordingly, we reverse the rejection of claims 1-4 under 35 U.S.C. § 103,
as being based unpatentable over Yu.
OTHER ISSUES
We wish to point out to the examiner that there is no requirement in
claims 1-4 that tazarotene and alpha hydroxy acid be part of the same
composition. See e.g., claim 4, wherein tazarotene is administered once daily in
the evening, and alpha hydroxy acid is administered once or twice daily in the
morning or evening. In this regard, it is unclear from the “search notes” section
of the file wrapper what exactly the examiner searched for. Nevertheless, upon
a brief search of the patent database using the search terms “tazarotene” and
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