Appeal No. 2004-0902 Page 6
Application No. 09/780,060
(a ceramide), 75 mg of cholesterol, 75 mg of palmitic acid (a saturated fatty
acid), and 30 mg of cholesteryl sodium sulphate. Composition 27 differs only in
that a racemic mixture of the ceramide 2-oleoylaminooctadecane-1,3-diol is
used. Thus, compositions 26 and 27 consist of all of the components set forth in
claim 3, only differing in that they contain one extra component—cholesteryl
sodium sulphate. Finally, Kawada teaches that its composition “enhances the
moisture-retaining capacity of the stratum corneum;” therefore the compositions
of Kawada have the same property of preventing water-loss that is a property of
the compositions of the present invention. As the compositions taught by
Kawada meet all of the limitations of claim 3, the examiner has met the burden of
demonstrating that one of ordinary skill in the art would expect the property of
adopting a crystalline lamellar phase upon application to mammalian skin to be
an inherent property of those compositions, and the burden shifts to appellants
to present evidence demonstrating that the claimed compositions are different
from the compositions taught by Kawada. See In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
We have considered the declaration submitted by the inventors, as well as
appellants’ arguments, but we do not find them to be sufficient to rebut the prima
facie case. First, the declaration sets forth opinions, but does not present any
data demonstrating that compositions 26 and 27 of Kawada do not have the
property of adopting a crystalline lamellar phase when applied to skin.
Moreover, compositions 26 and 27 of Kawada contain four components, besides
water, and thus contain only one additional component besides the three
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