Appeal 2007-0326
Application 09/746,888
(8) Kropf teaches the well known use of “biogenic agents” in lotions
or emollients, including such biogenics as “plant extracts” (col. 3,
ll. 32-42; and col. 7, ll. 14-19).
During prosecution before the Examiner, the claim language is given
the broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
any definitions or other description contained in the Applicants’
specification. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). The claim language should only be limited if there is
an express disclaimer of a broader definition. See In re Bigio, 381 F.3d
1320, 1325, 72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004). It is well
established that before a conclusion of obviousness may be made based on a
combination of prior art references, there must be a reason, suggestion, or
motivation to lead an inventor to combine those references. See Pro-Mold
and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996).
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.
We construe the claimed term “extracted botanical active” in accordance
with Appellants’ Specification, where this term is defined as “any water-
soluble or oil-soluble active extracted from a particular plant” that provides
benefits to the skin (Specification 8:4-5 and 34:23-28). We determine that
this term cannot be limited to the plant extracts exemplified by Appellants
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