Appeal 2007-0315
Application 10/374,300
acid” (Answer 6) and “Crandall teaches the use of acids such as glycolic
acid, citric acid, and malonic acid as the actives for a moisturizing
composition” (Answer 6). Thus, the Examiner concludes “a skilled artisan
would have been motivated to utilize the instantly claimed malonic acid with
a reasonable expectation of success since the prior art teaches that Cole’s
exemplified glycolic acid and the instantly claimed malonic acid are all acids
. . . suitable for the skin and . . . useful . . . in moisturizing compositions”
(Answer 6-7).
Appellants contend that Crandall1 erred in identifying malonic acid as
an alpha hydroxy acid (Br. 7). “The listing of malonic acid amongst a series
of alpha hydroxy acids is strange. Those of skill in the art would certainly
know that malonic has no alpha hydroxy functionality. Very likely there is a
typographical error. Possibly Crandall meant to indicate ‘malic’ acid which
is alpha hydroxy functionalized” (Br. 8).
The Examiner acknowledges that Crandall erred in naming malonic
acid as an alpha hydroxy acid (Answer 14). However, the Examiner
contends “although malonic acid is not an alpha hydroxy acid, a skilled
artisan would have been motivated to utilize malonic acid since malonic acid
is known and routinely used in the cosmetic art for the same purpose as the
primary reference and appellant” (Answer 15).
Because of Crandall’s error in naming malonic acid as an alpha
hydroxy acid, we find that it is insufficient to teach the suitability of malonic
acid as an element of the claimed skin composition. The Examiner admits
1 Crandall states that its compositions can be used to deliver a list of
different molecules, including “alpha hydroxy acids (lactic, glycolic, citric,
malonic and ammonium lactate)” (Crandall, at col. 8, ll. 24-25).
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