Appeal No. 2006-0230 Page 7
Application No. 09/864,083
to prepare a hydroquinone composition at the higher claimed pH because the
higher pH would be thought to induce instability and decomposition.” In our
opinion, the evidence of record does not support this conclusion. Thus,
appellants failed to meet their burden under Best, of demonstrating that the
compositions taught by Gordon2 (e.g., those set forth in Table 1, column 2,
together with 1.5-4% hydroquinone as set forth on column 2, lines 66-67 as
required by Gordon’s claim 1) do not necessarily or inherently possess the same
pH as appellants’ claimed composition.
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as being obvious over Gordon. As set forth above, claims 4-10 and 14-
18 fall together with claim 1.
Claim 2:
According to appellants (Brief, page 4), claims 2 and 3 stand or fall
together. Accordingly, we limit our discussion to representative claim 2. Claim 3
will stand or fall together with claim 2. Young.
According to appellants (Brief, page 8), Gordon does not teach the pH
range recited in claim 2. For clarity, we note that claim 2 depends from and
further limits the pH of the composition set forth in appellants’ claim 1, from a pH
of about 5.5 to about 8.0, to a pH of about 5.5 to about 7.5. As discussed above,
there is no evidence on this record that the compositions taught by Gordon do
2 We note of interest that the assignee of the instant application is the same as that of Gordon.
Accordingly, it would appear that appellants would be able to identify the pH of the compositions
set forth in Gordon.
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