Appeal No. 2001-1177 Page 10
Application No. 08/781,868
1780, 1783 (Fed. Cir. 1992) (citations omitted). “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. . . . [T]he idea of combining them flows logically from their
having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846,
850, 205 USPQ 1069, 1072 (CCPA 1980).
Here, we agree that N’Guyen and Burke render the composition of
claim 35 prima facie obvious. N’Guyen and Burke teach compositions for
treating skin aging and comprising glutathione and selenoamino acids,
respectively. It would have been obvious to combine the active ingredients of the
two compositions to make a third composition for treating skin aging, and
comprising both glutathione and selenoamino acids.
Appellant concedes that N’Guyen and Burke “relate equally to
compositions to repair cutaneous aging, called photoaging, by known
dermatologic processes.” Appeal Brief, page 8. He argues, however, that the
references do not support a prima facie case because they do not teach use of
the disclosed compositions “for the repair of damage to the skin from chemical
peels and thermal injury of laser surgery.” Id., page 9.
This argument is not persuasive. As discussed above, claim 35 is
directed to a composition and the preamble’s recitation of the intended use of
that composition does not limit the scope of the claimed composition. The prior
art renders obvious a composition within the scope of claim 35, albeit for a
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