Appeal No. 2006-1801 Page 9
Application No. 10/007,869
Because the claims do not require this purpose, any reason to have isolated the retinoid
from the booster would suffice. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990), the court held “it is not necessary in order to establish a prima facie
case of obviousness . . . that there be a suggestion or expectation from the prior art that
the claimed [invention] will have the same or a similar utility as one newly discovered by
applicant.”
In reviewing the Examiner’s Answer, it appears that the “avoiding retinoid
degradation” limitation may have been read into the claims. If so, the relevance of prior
art could have been erroneously dismissed. For example, Suares discloses sunscreen,
cleansers, anti-acne, and anti-wrinkle compositions in conjoined containers. While the
sunscreens and cleansers do not have the specific components recited in claim 1 and
others, they do have surfactants (detergents) and fragrances. See, e.g., Suares,
column 4, lines 65-67; column 8, Tables II; column 9, Table VI. A surfactant (N laury
sarcosine) and fragrance (e.g., citronellol and linolool) are recited in claim 1. Prior to
final disposition of this application, the examiner may wish to consider whether there is
prior art teaching cleansers or sunscreen compositions (e.g., which contain at least one
of the components recited in claims 1, 11, or 16) that would make the claims
unpatentable in combination with Suares.
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