Appeal No. 2005-0149 Page ~ PAGE ~3~
Application No. 10/214,632
and 3% by weight niacinamide. Mathur, column 5, lines 57-68. Nevertheless,
the examiner recognizes (Answer, page 3), “Mathur fails to teach niacinamide in
the form of a dual chamber package as claimed.” We also note, that Mathur
does not teach two different formulations of a skin lightening composition, as is
set forth in appellants’ claimed invention.
The examiner relies on Suares to make up for the deficiency in Mathur.
The examiner finds (Answer, page 3), Suares teaches a “product contain[ing] a
first and a second active agent stored in separate containers that join[ ]
together….” According to the examiner (id.), Suares teaches a skin lightening
composition-containing niacinamide, and suggests the sequential use of the
compositions stored in the separate containers. Based on this evidence the
examiner concludes:
It would have been obvious for one of an ordinary skill in the art at
the time of the instant invention to prepare a package of containing
skin lightening active, niacinamide, and stearic acid packed in two
different compartments of a package because Suares teaches that
cosmetic active agents such as skin lightening agents (niacinamide
etc.) can be conveniently packed in different compartments of a
container and can be used sequentially or simultaneously, which
serves as a reminder to the consumer regarding the use of the
composition.
Having considered the evidence of record, it is our opinion that the
examiner failed to set forth a prima facie case of obviousness. The initial burden
of presenting a prima facie case of obviousness rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if
that burden is met, does the burden of coming forward with evidence or
argument shift to the applicant. Id., at F.2d 1445, 24 USPQ2d at 1444. “A prima
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