Appeal No. 2006-1801 Page 6
Application No. 10/007,869
Suares discloses multi-compartment containers for skin care products. Suares,
column 2, lines 4-18. Included in the examples are retinoid compositions stored in
compartments that are separate, but joined to, compartments containing cleansers and
sunscreens. Id., Column 3, lines 28-60.
The examiner acknowledges that neither Burger nor Granger discloses the
retinoid and booster in separate compartments, but, citing the disclosures by Liu and
Suares, alleges that “one of ordinary skill in the art would have found it obvious to
employ two compartments … in order to preserve the stability of retinoids and avoid
chemical degradation prior to use …” See, e.g., Examiner’s Answer, pages 6 and 17.
To establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicants. See, e.g., In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-1317 (Fed. Cir. 2000). The
question for the purposes of this appeal is whether there would have been motivation to
have placed a retinoid composition in a container which is separate from a container
comprising any one of the booster compounds recited in the claims of this appeal.
The examiner leaned heavily on the disclosure in Liu that, in an attempt to
formulate stable retinoid compositions, skin care products had been supplied “in two
bottles, portions of which are mixed together just prior to use.” Column 2, lines 59-61.
See, also, Examiner’s Answer, page 18. This was identified as the motivation to create
a two-compartment system for storing the retinoid separate from other chemicals, such
as the arrangement described in Suares. The problem with Liu’s disclosure is that it
does not teach or suggest that the specific booster chemicals recited in claim 1 cause
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