Appeal 2007-0315
Application 10/374,300
substituted with one X salt ion) as species (2); and the fully-neutralized acid
(i.e., malonic acid substituted with two X salt ions) as species (3). Jokura
describes a skin composition having a molar ratio between the free acid (1)
and fully neutralized acid (3) (Jokura, at col. 3, ll. 51-60). In contrast, the
claimed composition is recited as having a different molar ratio which is
between the half-neutralized (2) (or formula (I)) and the fully neutralized
acid (3) (or formula (II)).
The Examiner’s argument is that a composition prepared from a
mixture of malonic acid (1) and its salt (3), as suggested by Jokura, would
inherently have a (2):(2) ratio which overlaps with the claimed (2):(3) ratio
when adjusted to the pH range suggested by Jokura as non-irritating to the
skin (Answer 13). The reason for this presumption is that pH determines the
ratio of the species (1), (2), and (3) (Answer 11-13). Thus, the compositions
having the same or similar pH would correspondingly have the same or
similar concentrations of species (1), (2), and (3). The Examiner provides a
well-reasoned explanation for this conclusion, including equations which
show how acid concentration (i.e., pH) would govern the ratio of species (1),
(2), and (3) in a solution of malonic acid and its salt (Answer 11-13).
Especially in view of the broad range molar ratio recited in claim 1 (“from
about 1000:1 to about 1:1000”), we find this evidence sufficient to establish
a prima facie case of obviousness.
Once prima facie obviousness has been shown, the burden shifts to
Appellants to come forward with evidence to rebut it. On the record before
us, we do not find that Appellants have provided persuasive countervailing
arguments. Appellants contend that there is “no disclosure of a fully
neutralized malonic acid (i.e. formula II)” (Br. 11). “All three species, i.e.
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