Appeal No. 2003-0947 Page 5
Application No. 09/854,372
USPQ2d 1780, 1783 (Fed. Cir. 1992).
The fact that the prior art could have been modified in a manner consistent with
appellants’ claims would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). While “[b]oth [Guerrero and Mohammadi] relate to
the cosmetic art,” appellants argue that “[t]he fundamental aspect of each reference lies
with a product type different from the other,” thus, one skilled in the art would not “look
toward the pumped mousses of Mohammadi to [modify] . . . the gelled body rub of
Guerrero,” indeed “[one] skilled in the art seeking to develop a cream cleanser of the
present invention would not particularly focus on Guerrero [ ] or Mohammadi for any
source of inspiration” (Brief, page 7). Even though Guerrero “could be read to
encompass opacity,” the reference “focuses most attention on clear systems,” and
appellants argue that one skilled in the art “seeking to formulate opacity, would not find
Guerrero [ ] to be the most likely template” (id., page 8). On this record, we agree with
appellants that “[t]he switch of polymers from [Mohammadi] into [Guerrero] is not based
upon any teaching or incentive within the references” (id.). In our view, the only reason
or suggestion to combine the references in the manner claimed comes from appellants’
specification.
Accordingly, the rejection of claims 1-6 under 35 U.S.C. § 103 is reversed.
REVERSED
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