Appeal No. 2006-1222 Page 8
Application No. 10/141,442
2. Where are appellants’ specific formulations taught in the art?
By way of example, we direct attention to claim 39. Claim 39 is drawn to
“[a] lotion comprising, propylene glycol; C12 to C15 alkyl benzoate ester; tri-
octyldodecyl-citrate; a 50/50 mixture of cetyl alcohol and stearyl alcohol; and
PEG-20 methyl glucose distearate combined in proportions which result in a
stable micro-emulsion.” The examiner has failed to favor this record with a clear
explanation as to how the combination of prior art relied upon teaches this
formulation. The same is true of the other formulations set forth in appellants’
claims.
VACATUR and REMAND
As set forth in Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1033 (Fed. Cir. 1997), “[f]or an appellate court to fulfill its role of judicial
review it must have a clear understanding of the grounds for the decision being
reviewed,” which requires that “[n]ecessary findings must be expressed with
sufficient particularity to enable [the] court without resort to speculation, to
understand the reasoning of the board, and to determine whether it applied the
law correctly and whether the evidence supported the underlying and ultimate
fact-findings.” Like the Court of Appeals in Gechter, this board requires a clear
understanding of the grounds for the decision being reviewed. It is the
examiner’s burden to provide the evidence necessary to examine the application
and if a rejection is made provide an explanation of the basis for the rejection.
As illustrated by the foregoing examples this has not occurred on this record.
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