Appeal No. 2004-0273
Application No. 09/958,702
useful in cosmetics for its surfactant properties, as well as
other benefits. Answer, page 3.
The examiner concludes that it would have been obvious to
have added the hydroxycarboxylic acid alkyl and/or alkenyl
oligoglycoside ester compound of Garlisi to the composition of
Ansmann. The examiner states that with respect to the amounts of
components and the amount of unesterified glycoside, such amounts
are optimizable variables, and absent unexpectedly good results,
would have been obvious. (Answer, pages 3-4). On page 5 of the
answer, the examiner also states that one of skill in the art
would have been motivated to use the esters of Garlisi as the
surfactants of Ansmann because of the expectation of achieving a
pharmaceutical or cosmetic composition with the beneficial
properties known to be realized.
Beginning on page 3 of the brief, appellants argue that
Garlisi contains “absolutely no teaching or suggestion relating
to the combination of said hydroxycarboxylic acid alkyl and/or
alkenyl oligoglycoside esters with a fatty alcohol in order to
realize a synergistic improvement in thickening and stability
properties.”
We find that Garlisi’s use of the particularly disclosed
esters is not used in combination with a fatty alcohol.
Hence, we do not agree with the examiner’s position that because
(1) Ansmann teaches that additional surfactants can be added to
Ansmann’s composition, and because (2) Garlisi teaches that such
esters can be used in cosmetic and pharmaceuticals, then
sufficient motivation exists for the addition.
More particularly, we note that the initial burden of
presenting a prima facie case of unpatentability on any ground
rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We also note that in
order for a prima facie case of obviousness of the claimed
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