Appeal No. 2006-0230 Page 10
Application No. 09/864,083
appellants’ claims for sodium bisulfite and the ascorbic acid derivatives disclosed
by Gordon.
While it is true that an express suggestion to substitute one compound for
another equivalent compound need not be present in order to render such a
substitution obvious, the prior art must first recognize that the two components
are equivalent. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA
1982). On this record, however, the examiner failed to direct our attention to any
evidence that would suggest that a person of ordinary skill in the art would have
considered the sodium bisulfite and ascorbic acid derivatives disclosed by
Gordon to be the equivalent of sodium metabisulfite, aminopropyl ascorbyl
phosphate or sodium ascorbyl phosphate as recited in appellants’ claims.
Since the evidence of record does not support the examiner’s assertion,
we reverse the rejection of claims 11-13 and 19-23 under 35 U.S.C. § 103(a) as
being obvious over Gordon.
The combination of Lukenbach and Gordon:
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being obvious over
the combination of Lukenbach and Gordon. Appellants group claims 1 and 4-9
separately from claims 2 and 3. Brief, page 4. However, in response to this
ground of rejection, appellants do not provide separate arguments for the two
groups of claims. Accordingly, we limit our discussion to representative claim 1.
Claims 2-9 will stand or fall together with claim 1.
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