Appeal No. 2001-2538 Page 7
Application No. 08/894,193
Appellant argues that the examiner has not made out a prima facie case
of obviousness. Appeal Brief, pages 11-14. Appellant also argues that the
degree of synergism observed between allantoin and citrate is unexpectedly
great. Appeal Brief, pages 14-15.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The prima facie case must account for all the limitations of the claims.
See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976) (“[W]e
must give effect to all claim limitations.” (emphasis in original)).
Here, the examiner has not shown that the prior art would have taught or
suggested all of the limitations of the instant claims. First, the examiner
concedes that the product disclosed by Hirohata is not a “foodstuff composition,”
as required by most of the claims. Rather, Hirohata discloses compositions for
cleaning dentures. The examiner provides no explanation of how this admittedly
“cosmetic composition,” Examiner’s Answer, page 5, would have suggested the
“foodstuff compositions” and related methods defined by appealed claims 21-37.
Claim 38 is the only claim on appeal that is directed to a “cosmetic
composition.” That claim, however, also contains a limitation that was not
addressed in the examiner’s rejection. Claim 38 defines a cosmetic composition
comprising, inter alia, “an amino component which accelerates discoloration.”
The instant specification states that oral hygiene compositions like those
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