Appeal No. 2005-2743 Page 7
Application No. 09/847,388
desirability of making the specific combination that was made by
the applicant. [Citations omitted].
In other words, “there still must be evidence that ‘a skilled artisan, ... with no
knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem Inc. v.
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000). At best, the statement of the rejection establishes that
individual parts of the claimed invention were known in the prior art. For the
foregoing reasons, however, it is our opinion that there is no motivation to
combine the references as relied upon by the examiner.
Accordingly, we reverse the rejection of claims 1, 3-32 and 34-47 under 35
U.S.C. § 103(a) as being unpatentable over Castro in view of Sebillotte-Arnaud.
OTHER ISSUES
Having reversed the only rejection of record, we make the following
observations. Prior to taking any further action on the merits we encourage the
examiner to take a step back and consider the following observations.
I. What types of compositions can fibers be used in?
According to Castro (column 2, lines 43-44), the use of fibers in cosmetic
compositions is art recognized. In this regard, Castro refers to United States
Patent 4,820,510 and “JP 7179323.” Id., line 44. Given that fibers are used in
cosmetic compositions, would it have been obvious to a person of ordinary skill in
the art at the time the invention was made to modify the composition taught by
Sebillotte-Arnaud to include fibers, as taught by Castro? Upon review of the
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