Appeal No. 1997-2750
Application 08/191,734
would not have suggested the property of “enhanced penetration through the skin.” The
argument lacks merit.
First, even though applicants' composition may possess an advantageous property,
which is unobvious (unexpected) in view of the disclosures of the prior art references, it
does not follow that the prima facie case of obviousness has been overcome. On this
record, applicants do not rely on objective evidence of non-obviousness, for example, a
showing of substantial, actual differences in properties between the claimed composition
and the closest prior art composition, which would serve to rebut the examiner's prima
facie case. See In re Hoch, 428 F.2d 1342, 1343-44, 166 USPQ 406, 409 (CCPA 1970).
Second, although the motivation to combine references here differs from that of applicants,
nevertheless, the motivation in the prior art to combine references does not have to be
identical to that of the applicant to establish obviousness. In re Kemps, 97 F.3d 1427,
1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
In view of the foregoing, we conclude that the subject matter sought to be patented
in claims 1, 4 and 5 would have been obvious in view of the combined disclosures of
Kligman and the SALCARE SC92 brochure. Based on applicants' grouping of claims in
their Appeal Brief, page 3, we shall not discuss claims 2 or 3 separately. Those claims fall
together with claim 1. Likewise, claims 6 through 10 fall together with claim 5. The
examiner's rejection under 35 U.S.C. § 103 with respect to claims 1 through 10 is affirmed.
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