Appeal No. 2004-0902 Page 10
Application No. 09/780,060
Kawada [ ] with a reasonable expectation of deriving the same
cosmetic effect as set forth in the reference.
Examiner’s Answer, page 4.
Appellants argue that the rejection fails to set forth why one of ordinary
skill in the art would have been motivated to substitute bovine brain ceramide or
ceramide 2 for the ceramide of Kawada. We agree.
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99
(Fed. Cir. 1988). The test of obviousness is “whether the teachings of the prior
art, taken as a whole, would have made obvious the claimed invention.” In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
In the instant case, the recited optically active ceramides are central to the
invention of Kawada. Also, Kawada teaches away from the use of bovine brain
ceramide, teaching that it may no longer be used due to the outbreak of bovine
spongiform encephalitis (mad cow disease). See Kawada, col. 2, lines 46-50.
Thus, we agree there is no motivation to replace the ceramides of Kawada with
bovine brain ceramide or ceramide 2, and the rejection under 35 U.S.C. § 103(a)
of claims 4 and 5 is reversed.
CONCLUSION
Because the Examiner’s Answer properly sets forth a prima facie case of
anticipation, the rejection of claims 1-3, 6-9 and 14-19 under 35 U.S.C. § 102(e)
is affirmed. The rejection of claims 4 and 5 under 35 U.S.C. § 103(a), however,
is reversed.
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