Appeal No. 2004-0378
Application No. 09/765,675
We do not agree that the prior art disclosures support only an obvious-to-try
rationale. “An ‘obvious-to-try’ situation exists when a general disclosure may pique the
scientist’s curiosity, such that further investigation might be done as a result of the
disclosure, but the disclosure itself does not contain a sufficient teaching of how to
obtain the desired result, or that the claimed result would be obtained if certain
directions were pursued.” In re Eli Lilly & Co., 902 F.2d 943, 945, 14 USPQ2d 1741,
1743 (Fed. Cir. 1990).
Here, Appellants have not shown that nanoemulsions were known, to those
skilled in the art, to differ from other emulsions in a way that would have cast doubt on
the expectation of successfully combining Restle’s and Ziegler’s disclosures.
Appellants point to the specification’s discussion of nanoemulsions and microemulsions,
but make no effort to explain how the differences between these emulsions would have
led those skilled in the art to doubt the applicability of Ziegler’s disclosure to Restle’s
nanoemulsions.
Appellants also point to the specification’s discussion of problems that can be
encountered when adding thickeners such as Carbopol to nanoemulsions, and the
different characteristics that result on addition of Quatrisoft LM 200 instead of Carbopol
Ultrez. Again, however, Appellants have not explained why the known problems with
using Carbopol as a thickener would have led those skilled in the art to doubt the
effectiveness of adding Ziegler’s Quatrisoft LM-200 to Restle’s composition. This is
especially true since Ziegler does not suggest adding a cationic polymer as a thickener,
but as a component that contributes to freeze-thaw stability and moisture retention.
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