Appeal No. 2006-0266 Page 6
Application No. 09/867,235
the active agent (octyl methoxycinnamate) into the skin. In re King, 801 F.2d
1324, 231 USPQ 136 (Fed. Cir. 1986). Accordingly, we find no error in the
examiner’s prima facie case of anticipation based on inherency. After the PTO
establishes a prima facie case of anticipation based on inherency, the burden
shifts to appellant to “prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.” In re Swinehart, 439 F.2d 210,
212-13, 169 USPQ 226, 229 (CCPA 1971). Accord In re Fitzgerald, 619 F.2d 67,
70, 205 USPQ 594, 596 (CCPA 1980), quoted with approval in In re Thorpe, 777
F.2d 695, 698, 227 USPQ 964, 966 (Fed.Cir.1985); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-34 (CCPA 1977); In re Ludtke, 441 F.2d 660, 664,
169 USPQ 563, 566 (1971).
In this regard, we recognize appellants’ reference to the Robinson
Declaration, received September 20, 2004, to distinguish “the subclass of oil-
soluble actives over the more general class of vitamins and anti-oxidants…” set
forth in Rouquet. Brief, bridging paragraph, pages 4-5. Accordingly, we have
considered the Robinson Declaration for evidence that the composition taught by
Rouquet would not inherently deliver octyl methoxycinnamate into the skin. Upon
review of the Robinson Declaration, we find that Robinson concludes “this data
indicate that delivery of the oil-soluble skin care active [(Farnesol)] is significantly
enhanced when delivered from a vehicle containing water, silicone and silicone
elastomer relative to the delivery of the same oil soluble skin care active from a
vehicle that does not contain a silicone elastomer.” The Robinson Declaration
does not address the composition set forth in Example 2 of Rouquet, or attempt
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