Appeal No. 2004-0600 Paper 16
Application No. 10/024,983 Page 11
silicone elastomer having no oxyalkylene units in its structure (Schulz),
because (i) incorporation of the linear silicone polymer of Schilling would provide
emulsifying activity to form the W/O emulsion, (ii) incorporation of the nonionic organic
emulsifier of Remington would be considered as adding a second surfactant to stabilize
the emulsion, (iii) incorporation of the solvent of Zhang would make the W/O emulsion
emulsified more easily and (iv) substitution of Schulz's ",T-diene crosslinked silicone
elastomer having no oxyalkylene units in its structure would improve the lubrication of
the formulation when applied onto the skin (Final Rejection, pp. 4-5).
36. The examiner further maintains that the skilled artisan would have reasonably
expected to incorporate the claimed ingredients into the W/O emulsion of Lin "given the
cited prior art ... absent evidence to the contrary" (Final Rejection, p. 5, ¶ 2).
C. Discussion
A showing of obviousness requires a motivation or suggestion to combine or
modify prior art references, coupled with a reasonable expectation of success. Brown &
Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1124-25, 56 USPQ2d
1456, 1459 (Fed. Cir. 2000). Obviousness cannot be established by hindsight
combination to produce the claimed invention. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991). As discussed in Interconnect Planning Corp. v.
Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985), it is the prior art itself,
and not the applicant's achievement, that must establish the obviousness of the
combination.
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