Appeal No. 2003-1424 Page 5
Application No. 09/961,623
20 USPQ2d 1438, 1443 (Fed. Cir. 1991) (prima facie obviousness requires, inter
alia, motivation to combine and reasonable expectation of success, both founded
on the prior art).
We agree with Appellants that the examiner’s references do not support a
prima facie case of obviousness. The examiner has not adequately explained
why those skilled in the art would have been led to combine Gennaro’s urea with
Klein’s anti-acne composition. Neither Klein nor Gennaro expressly suggest that
urea would be effective in treating acne, or that it would impart any other
desirable quality to Klein’s composition.
While Gennaro discloses that urea is a mild keratolytic agent, and
discloses that some other keratolytic agents are useful in treating acne, these
disclosures do not support the examiner’s position that it would have been
obvious to combine urea with Klein’s anti-acne composition. First, Gennaro does
not disclose that all keratolytic agents are useful in treating acne. See pages 767-
768: in the general discussion of keratolytics, Gennaro states only that they are
useful for “treatment of epidermophytosis [i.e., fungal infections] . . . [and] to thin
hyperkeratotic areas.” The examiner has not explained how this disclosure would
have suggested treatment of acne to those of ordinary skill in the art.
In addition, Klein teaches away from combining other active agents with its
disclosed benzoyl peroxide-containing composition. See column 2, lines 7-12:
“[B]ecause of the powerful oxidizing properties of the peroxide component, the
inclusion of this substance . . . with other active ingredients results in unstable
compositions that soon display an unacceptable loss in keratolytic potency.”
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