Appeal No. 2003-0568 Page 2
Application No. 09/264,531
GROUND OF REJECTION
Claims 1-4 stand rejected under 35 U.S.C. § 103, as being based
unpatentable over Yu.
We reverse.
DISCUSSION
According to the examiner (Answer, page 3), Yu “discloses a composition
of treating acne, psoriasis or aged skin comprising alpha hydroxyacids, glycolic
acid … and retinoids … wherein the composition is in the form of a gel.” The
examiner recognizes, however, that Yu does not teach the retinoid is tazarotene.
Answer, page 4. Nevertheless, the examiner alleges Yu’s disclosure of retinoids
“suggest all retinoids are functionally equivalent.” Id. Based on this allegation
the examiner concludes (id.), “it would have been obvious to one of ordinary skill
in the art to use tazarotene, a retinoid, in the composition disclosed by Y[u] et al.
since there is no differentiation between the different retinoids suggesting
functional equivalency in the absence of a factual showing to the contrary.”
In response, appellant argues (Brief, page 3):
Retinoids are only disclosed at [c]olumn 12, line 9 as one of
hundreds to thousands of ingredients that can be combined with
alpha hydroxy acids. There is no disclosure as to why retinoids
should be so combined, for what use or what amounts. Moreover,
the disclosure is broadly to retinoids not tazarotene. Therefore, it is
believed that this reference would not motivate one of ordinary skill
in the art to combine a specific retinoid, tazarotene, with an alpha
hydroxy acid for treating psoriasis, and/or photodamage and/or
acne.
We agree. Prima facie obviousness based on a combination of references
requires that the prior art provide “a reason, suggestion, or motivation to lead an
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