Appeal No. 2004-0378
Application No. 09/765,675
It may be true that Ziegler would not have motivated those skilled in the art to
add Quatrisoft to Restle’s composition for the same reason that Appellants add
Quatrisoft LM-200 to their composition, but the prior art need not suggest combining
elements for the same reason Appellants combined them in order to support a prima
facie case under § 103. See In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897,
1901 (Fed. Cir. 1990).
Appellants also seem to argue that the claimed composition has been shown to
be unexpectedly superior to prior art products. This argument is not well-developed in
the Appeal Brief, but Appellants do allude to their
demonstrat[ion] that the thickening, the transparency, and the stability of a
nanoemulsion comprising at least [one] cationic polymer comprising at
least one hydrophobic block and at least one hydrophilic block (Quatrisoft
LM 200), at least one oil, and at least one amphiphilic lipid is greater than
that of a nanoemulsion in which the at least [one] cationic polymer
comprising at least one hydrophobic block and at least one hydrophilic
block is replaced with the same amount of Carbopol Ultrez, a crosslinked
acrylic acid homopolymer.
Appeal Brief, page 5. The specification states that “[t]he inventors have discovered,
unexpectedly, that oil-in-water nanoemulsions . . . can be thickened with at least one
cationic polymer, for example, at least one cationic polymer chosen from water-soluble
and water-dispersible cationic polymers comprising at least one hydrophobic block and
at least one hydrophilic block.” Pages 3-4.
To the extent that Appellants intend to rely on the specification’s working
example as evidence of unexpected results, however, we find the evidence to be
inadequate to overcome the prima facie case. It is true that “the PTO must consider
comparative data in the specification in determining whether the claimed invention
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