Appeal No. 2001-1025 Page 4
Application No. 09/191,974
compositions containing theophylline and copper gluconate as sun tan
accelerators….”
Therefore the examiner concludes (Final Rejection, page 3) that it would
have been prima facie obvious to modify Hruby or Hadley with Takata and
Hubaud, “because Hruby or Hadley and Takata and Hubaud establish that
alpha-MSH peptide analogs and dihydroxy acetone, theophylline and copper
gluconate are known in the art to be useful for effectively darkening the skin.”
With reference to In re Susi, 440 F. 2d 442, 445, 169 USPQ 423, 426 (CCPA
1971) the examiner argues (Final Rejection, page 4) “that ‘it is prima facie
obvious to combine two compositions each of which is taught by the prior art to
be useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose’….” The examiner further argues (id.) with
reference to Akzo v. E.I. du Pont de Nemours, 810 F. 2d 1148, 1152, 1 USPQ2d
1704, 1708 (Fed. Cir. 1987), “[w]ith respect to the claimed concentration, it is
held that ‘concentration limitations are obvious absent a showing of criticality’.”
With regard to the claimed isoelectric point and molecular weight, the
examiner finds (Final Rejection, page 4) that “since the prior art discloses
[a]pplicant’s claimed peptide analogs useful for the same purpose of darkening
skin or hair, then the isoelectric point is obvious, if not inherent.” This statement,
however, is unclear. Upon review of appellants’ specification, we find no
disclosure of alpha-MSH peptide analogs, much less a disclosure of an alpha-
MSH peptide analog with any of appellants’ claimed tanning agents. It appears
that the examiner has merely asserted that the alph-MSH peptide analogs are
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