Appeal No. 2006-1801 Page 8
Application No. 10/007,869
cosmetic composition (e.g., “Cleanser”; “Sunscreen”). See, e.g., Suares, column 3,
Table 1. Other combinations of compositions, each in a separate compartment, are
also discussed. Id., column 3, lines 48-60. The examiner alleged that, in view of Liu’s
“two bottle” disclosure, Suares provides the motivation to have placed the boosters
recited in claims 1, 11, and 16 into the “second compartment.” But, missing is the logic
that would have led the skilled worker to have compartmentalized the specifically
named boosters away from the retinoid composition. Suares discusses general
purposes for keeping the compositions separate (e.g., “single formulations often
compromise the performance of the severally combined actives”; to facilitate use of
multiple compositions in a skin treatment regime), but these do not suggest the booster
components named in claims 1, 11, and 16. See, Id., Abstract; column 1, lines 15-20;
column 7, lines 64-column 8, line 6. This is not a case where the appealed claims are
so broad as to include any chemical compound in the second composition.
We are cautioned against the use of “hindsight reconstruction to pick and choose
among isolated disclosures in the prior art to deprecate the claimed invention."
Ecolochem, Inc. v. Southern Calif. Edison Co., 227 F.3d 1361, 1371, 56 USPQ2d 1065,
1072 (Fed. Cir. 2000) (quoting In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1780, 1783
(Fed. Cir. 1988)). The combination of references cited in the rejection does not provide
the requisite motivation. Accordingly, the rejection is reversed.
Other issues
The claims, as we have construed them, do not require compartmentalizing the
first and second compositions to avoid chemical degradation of the first composition.
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