Appeal 2007-0315
Application 10/374,300
We do not find this argument persuasive. As explained above, the
claimed subject matter comprising “a salt which is an amine neutralized
malonic acid present as a half-neutralized and a fully neutralized acid in a
molar ratio ranging from about 1000:1 to about 1:1000” would have been
obvious to one of ordinary skill in the art at the time the invention was made.
Even assuming that the claimed composition has the added benefit of
controlling the signs of aging, “[m]ere recognition of latent properties in the
prior art does not render nonobvious an otherwise known invention.” In re
Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed.
Cir. 1991).
Appellants also contend that the malonate salt mixture was as
effective as the known alpha-hydroxy acid (Br. 10). In Example 1 of the
Specification, the effects of ammonium glycolate (a prior art alpha-hydroxy
acid) on skin is compared to ammonium malonate of the claimed invention
(Specification ¶ 42). The ammonium malonate salt is described as being
“nearly as effective as ammonium glycolate (Specification ¶ 43).
We have considered this evidence, but do not find it persuasive. The
proper comparison to establish non-obviousness must be with respect to the
closest prior art. See Baxter, 952 F.2d at 392, 21 USPQ2d at 1285. Here,
the closest prior art is a dicarboxylic acid as disclosed by Jokura, not the
alpha-hydroxy acid against which the comparison was made. Thus, the
comparison with the prior art is not proper.
2) The claimed molar ratio of formula I to formula II is not described
in Jokura
For clarity, we designate the free dicarboxylic acid (i.e., malonic acid)
as species (1); the half- or partly-neutralized acid (i.e., malonic acid
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