Appeal No. 2005-0976 Page 3
Application No. 10/203,228
Appellants argue that, based on the teachings of the Pauly reference, one
of ordinary skill in the art would not be motivated to include Waltheria indica in a
skin whitening composition as “based on this reference’s teaching it would serve
no skin whitening purpose.” Appeal Brief, page 3. We agree.
“A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, all facts must be considered. The
Patent Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. To the extent the Patent Office rulings are so
supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. Denied, 389 U.S. 1057 (1968)
(emphasis in original).
The motivation to combine the Waltheria indica extract as taught by the
Pauly reference with an acid component selected from the group consisting of
ascorbic acid, ferulic acid, kojic acid as taught by the Bartolone reference as set
forth in the rejection is based solely on the argument that “[i]t is well known that it
is prima facie obvious to combine two or more ingredients each of which is taught
by the prior art to be useful for the same purpose [skin whitening] in order to form
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