Appeal No. 2005-2743 Page 6
Application No. 09/847,388
We are also not persuaded by the examiner’s assertion that oils and
lipophilic agents can be added to the Sebillotte-Amaud composition. As we
understand the examiner’s statement of the rejection, Sebillotte-Amaud is relied
upon to teach active agents that can be added to the composition taught by
Castro. Accordingly, it is unclear why the examiner has addressed other
ingredients that may be present in the Sebillotte-Amaud composition. The
examiner provides no evidence that the presence of these other ingredients
transforms the Sebillotte-Amaud composition into an emulsion similar to Castro’s
composition. Accordingly, there is no evidence of record to rebut appellant’s
assertion that a person of ordinary skill in the art would not turn to Sebillotte-
Amaud to select active agents that could be added to the composition taught by
Castro.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
field. … Close adherence to this methodology is especially
important in cases where the very ease with which the invention
can be understood may prompt one “to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.”
…
Most if not all inventions arise from a combination of old elements.
… Thus, every element of a claimed invention may often be found
in the prior art. … However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. … Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art,
there must be some motivation, suggestion or teaching of the
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