Appeal No. 2003-1424 Page 4
Application No. 09/961,623
to be useful to treat acne individually, into a single composition and method
useful for the very same purpose is prima facie obvious.” Id.
Appellants dispute the examiner’s basis for combining the references.
See the Reply Brief, pages 2-3:
[T]he Examiner makes a general statement that all keratolytic
agents are known to be useful in treating acne. However, in the
first full paragraph describing keratolytic agents in general,
Gennaro does not mention acne as a specific primary treatment for
such an agent. Although benzoyl peroxide . . . [is] stated to be
possibly useful for treating acne, the Examiner has not
demonstrated that all keratolytic agents are useful for treating acne.
In fact, there is no indication in Gennaro that urea can be used for
treating acne. Notably, it is stated to be used to treat dry skin.
Appellants also argue that the references do not provide a reasonable
expectation of success. See the Appeal Brief, page 8:
The success to be expected here is whether a single stable
combination providing compatibility for the two active ingredients
benzoyl peroxide and urea could actually have been made
providing treatment of dermatological disorders. There is no
expectation of success that a single composition could be made
which would be stable with these two ingredients. In fact, Klein et
al. would teach away from such a single stable composition.
The examiner bears the initial burden of showing unpatentability. See,
e.g., In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
A prima facie case of obviousness requires evidence that the prior art disclosed
or suggested all of the elements of the claimed invention, and that those skilled in
the art would have been motivated to combine those elements with a reasonable
expectation of success. See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
496 (CCPA 1970) (“All words in a claim must be considered in judging the
patentability of the claim against the prior art.”); In re Vaeck, 947 F.2d 488, 493,
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