Appeal 2007-0042
Application 09/746,880
requires consideration of at least two factors: (1) whether the prior art would
have suggested to those of ordinary skill in the art that they should make the
claimed composition or article, and (2) whether the prior art would also have
revealed that in so making, those of ordinary skill would also have a
reasonable expectation of success. See In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991). Teachings in the prior art references
must be considered for what they would have suggested to one of ordinary
skill in the art, even though the teaching of the prior art is broad. See Merck
& Co. v. Biocraft labs, Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir. 1989); In re Susi, 440 F.2d 442, 446, 169 USPQ 423, 426 (CCPA
1971). An express suggestion to substitute one equivalent for another need
not be present to render such substitution obvious. See In re Fout, 675 F.2d
297, 301, 213 USPQ 532, 536 (CCPA 1982).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness in view of the reference evidence, which
prima facie case has not been adequately rebutted by Appellants’ arguments.
As shown by factual finding (1) listed above, we determine that Krzysik
discloses every limitation of claim 1 on appeal with the exception of the
“decoupling polymer” component of the lotion composition (which may be
polysaccharides or polyacrylamides; see claim 5 on appeal; Answer 4). As
shown by factual findings (2), (3), and (4) listed above, we determine that
Krzysik teaches many other conventional or well known additives may be
incorporated into the lotion composition, as well as teaching the function of
each of the primary components. As shown by factual findings (5) and (6)
6
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