Appeal No. 2003-0824 Page 7
Application No. 09/713,974
The examiner has argued that those skilled in the art would have been led
to combine Sampino and Sine, because “[i]t is generally considered prima facie
obvious to combine two compounds each of which is taught by the prior art to be
useful for the same purpose, in order to form a composition which is to be used
for the very same purpose.” Examiner’s Answer, page 4, citing In re Kerkhoven,
626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
This is not a case in which the Kerkhoven rationale can be relied on to fill
an evidentiary deficit. In Kerkhoven, the claims required “no more than the
mixing together of two conventional spray-dried detergents.” 626 F.2d at 850,
205 USPQ at 1072. Here, by contrast, Sampino teaches one compound as
useful in a shaving lotion, while Sine teaches another compound as an irritation-
reducing agent in a skin sanitizer. The references do not teach that components
of shaving lotions and skin sanitizers are interchangeable. The references thus
do not teach “two compounds . . . useful for the same purpose,” and Kerkhoven
is not on point.
Since the examiner has not shown that those skilled in the art would have
been led to combine the teachings of Sampino and Sine, the rejection of claims
1, 8, 9, 11, 13, and 14 under 35 U.S.C. § 103 is reversed. The examiner also
rejected claims 2-7, 12, and 15-18 as obvious in view of various references.
Each of these rejections, however, depends on the combination of Sampino and
Sine. We have reviewed the other references cited by the examiner; none of
them make up for the deficiency of Sampino and Sine. Therefore, the other
rejections on appeal are reversed for the same reasons discussed above.
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