Appeal No. 2005-0702 Page 4
Application No. 09/443,505
the Examiner finds, without dispute by Appellant, is the 1, 3-bis($-hydroxyethyl)amino-2-
methylbenzene coupler of claim 1. Lim provides evidence that those of ordinary skill in the art
would have selected the listed ingredients for use in the hair dye of Lim in order to obtain
“certain color nuances and tints.” (Lim, col. 5, ll. 4-6).
Moreover, we agree with the Examiner that Akram provides further evidence supporting
the use of the claimed coupler in the composition of Lim. Akram indicates that couplers of the
type claimed by Appellant were known to form “intensive brown, blonde, violet and blue shades
of high heat stability and fastness to light with a large number of the known developer [oxidation
base] substances” and that their compatibility with “further couplers and direct dyestuffs is very
good, and controlled modifications of the shades of known developer/coupler systems are
therefore also possible.” (Akram, col. 4, ll. 7-22). Akram, therefore, provides further evidence of
a reason or motivation to include the claimed coupler in the composition of Lim as well as a
reasonable expectation of success.
Appellant cites In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002)
in support of their argument that the Examiner did not make a “thorough and searching” factual
inquiry. We do not agree. The point made in Lee was that the Examiner cannot rely on his or
her own knowledge, based on unknown authority, to establish that there was a reason, suggestion
or motivation to make a modification: The Examiner must provide adequate underlying factual
support for the finding. Lee, 277 F.3d at 1343, 61 USPQ2d at 1433-34. The underlying
evidence may be an objective teaching in the prior art or it may be grounded in evidence of
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