Appeal No. 2005-0702 Page 5
Application No. 09/443,505
knowledge generally available to one of ordinary skill in the art. Lee, 277 F.3d 1338, 1343, 61
USPQ2d 1430, 1433(citing In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2s 1780, 1783 (Fed. Cir.
1992)); see also In re Huston, 308 F.3d 1267, 1280, 64 USPQ2d 1801, 1810 (Fed. Cir.
2002)(The motivation, suggestion or teaching may come explicitly from statements in the prior
art, from the knowledge of one of ordinary skill in the art, or, in some cases, the nature of the
problem to be solved). The key is that there must be some basis in the prior art; the question
cannot be resolved on subjective belief and unknown authority nor may the examiner use “that
which the inventor taught against its teacher.” Lee, 277 F.3d at 1344, 61 USPQ2d at
1434(quoting W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); see also In re Huston, 308 F.3d at 1280,
64 USPQ2d at 1810. The Examiner has provided a basis in the prior art supporting the finding
of a reason, suggestion, or motivation to include an oxidation base and coupler as claimed in the
composition of Lim: those very ingredients are suggested by Lim as useful and such is also
suggested by Akram. Nor was it error, contrary to the arguments of Appellant, for the Examiner
to give weight to the knowledge of those of ordinary skill in the hair dye art as evidenced by the
references. The suggestion to combine need not be express and “may come from the prior art, as
filtered through the knowledge of one skilled in the art.” Motorola, Inc. v. Interdigital Tech.
Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489 (Fed. Cir. 1997).
Appellant also argues that “[n]othing in Lim would have led one of ordinary skill in the
art to select the claimed at least one oxidation base from among the myriad of other optional
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