Appeal No. 2001-0983 Page 5
Application No. 08/954,946
the examiner has rejected the claims under § 103, but has identified no
difference(s) between the prior art compound/composition and the claimed
composition. Nor has the examiner explained why, assuming there is some
difference, it would have been obvious to change the known composition to the
claimed composition.
If the rejection is actually based on anticipation, the examiner needs to
discuss the limitations of the claims and explain how those limitations are met,
expressly or inherently, in the compound and/or composition disclosed in the
prior art. We note that although the Merck Index entry for phenoxyacetic acid
states that the compound is a “fungicide,” there is nothing in the entry stating that
it is used in pharmaceutical formulations as opposed to, e.g., an agricultural
formulation. We also note that phenoxyacetic acid is disclosed to be useful as a
“keratin exfoliative,” which would seem more relevant to the instant claims,
directed to a composition “for preventing an adverse reaction of the skin.”
3. The prior art
The reference applied by the examiner was submitted by Appellant in an
Information Disclosure Statement (Paper No. 2, filed December 11, 1997). The
administrative file contains no entries in the areas marked “Searched” and
“Search Notes,” nor has the examiner cited any references on a Form PTO-892
in either of the Office actions. Thus, the application contains no indication that
the examiner has conducted any search of the prior art to determine whether
more relevant prior art exists.
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