Appeal No. 2006-2655
Application No. 10/750,810
In response to the Examiner’s argument (Answer 6) that it would have
been obvious to the skilled worker to have combined an oxathiazole-2-one
derivative of Muhlbauer with an acetone carrier, Appellants assert that,
because of its toxicity, acetone would not have been used in a cosmetic
composition. Br. 6-7. We agree with this argument as it pertains to claim
197 which comprises “an orally tolerable adjuvant,” but not with respect to
claim 18. As pointed out by the Examiner, the specification (at 6) discloses
that nail varnish remover, which is well known to contain acetone, is a
personal care product. Answer 5. Muhlbauer clearly teaches its compounds
formulated with acetone (at 3, ll. 11-13). See, also Muhlbauer at 6: 33.8
Consequently, a composition comprising an oxathiazole-2-one derivative in
acetone as suggested by Muhlbauer meets the limitations of claim 18.
For the foregoing reasons, we find that the Examiner has provided
sufficient evidence to establish unpatentability under 35 U.S.C. § 103 of the
claimed subject matter. We have considered Appellants’ evidence and
arguments, but do not find them adequate to rebut the rejection.
Accordingly, we affirm the rejection of claims 18 and 19.
7 However, for other reasons discussed supra, we find claim 19 to be
obvious.
8 The Examiner indicates that the compound in Example 9 falls within the
scope of claims 18 and 19. Answer 4. Appellants do not challenge this
finding. Example 9 shows the oxathiazole-2-one compound in acetone,
albeit without revealing its concentration. Without knowing its
concentration, there is insufficient evidence to determine whether this
disclosure is anticipatory to claim 18, which requires that it be present in an
amount “from 0.01 to 15% by weight, based on the total weight of the
composition.”
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