Appeal No. 2005-2743 Page 8
Application No. 09/847,388
prosecution history, it does not appear that the prior art was considered in this
manner. Accordingly, the record was not sufficiently developed to allow this
panel to address this issue. However, prior to taking any further action on the
merits, we encourage the examiner to take a step back and reconsider the
claimed invention in light of the prior art.
II. Active agents useful in emulsions:
From a review of the prosecution history, it is unclear whether the
examiner considered whether the prior art taught emulsions containing active
agents within the scope of appellant’s claimed invention. In this regard, we direct
attention to the examiner’s discussion of retinols and azelaic acid. Answer,
bridging paragraph, pages 5-6. According to the examiner (id.), “although
chemically different agents, [retinols and azelaic acid] are know in the art for
combating acne and related skin disorders thus … one of ordinary skill in the art
would be able to substitute one for the other.” If the examiner is correct in that
the prior art recognizes the two compounds to be equivalent, an express
suggestion to substitute one for another need not be present in order to render
such substitution obvious. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536
(CCPA 1982). We note, however, that in order to substitute azelaic acid for the
retinol taught by Castro, the prior art would have to not teach away from the use
of azelaic acid in an emulsion as taught by Castro.
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