Appeal No. 2006-0230 Page 11
Application No. 09/864,083
According to the examiner (Answer, page 5), Lukenbach provides two
examples of skin whitening compositions that have a pH of 7.5. In this regard,
we note that both skin whitening compositions contain exactly the same
ingredients except for the active skin whitening agent. See Lukenbach, column
16, Examples 100B and 100C. The first composition (Example 100B, column 16)
comprises the skin whitening agent -magnesium ascorbyl phosphate (a cationic
salt of acidic ascorbyl esters). The second composition (Example 100C, column
16) comprises the skin whitening agent - hydroquinone. According to the
examiner (Answer, page 5), Lukenbach differs from appellants’ claimed
composition by not teaching a composition that comprises both magnesium
ascorbyl phosphate and hydroquinone. However, as set forth in In re Kerkhoven,
626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), “it is prima facie
obvious to combine two compositions each of which is taught by the prior art to
be useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.” In support of this proposition, the examiner
relies on Gordon to teach a composition that comprises both magnesium
ascorbyl phosphate and hydroquinone. Answer, page 5. Based on the
foregoing, it is our opinion that the examiner met her burden of presenting a
prima facie case of obviousness, and properly shifted the evidentiary burden to
appellants. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
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