Appeal No. 2006-3151
Application No. 10/767,679
has set forth a prima facie case that including from about 0.000001 to about
90% by weight terpenoid in the fragrance would have been obvious.
Appellants state that Jokura discloses “a skin cosmetic requiring a
combination of three elements” – “ceramide (A), a dicarboxylic acid (B) and
a salt of a dicarboxylic acid (C). . . . Malonic acid is listed among eight other
dicarboxylic acids. See column 3, lines 33-37.” (Br. 6.) “The term
fragrance or perfume is mentioned only once in [Jokura]. See column 5,
line 33. ‘Perfumes’ is the very last generic adjunct compound among a long
list of other possible components. . . . There is no mention of perfume
concentration or any materials which might constitute the perfumes.”
(Br. 7.) In addition, “[n]one of the Examples include any perfume, either
generically or specifically. Neither do any of the Examples itemize a
malonic acid or salt thereof as representative of the dicarboxylic acids.”
(Id.)
Appellants also argue that “the general conditions of the claim are not
disclosed in a single reference. There is simply no issue in the present
application concerning the discovery of any optimum or workable ranges
that could be determined by routine experimentation. Instead the Examiner
presents two references unrelated to one another, with unrelated
problems/solutions and through hindsight chooses claim elements selectively
from each of these references.” (Br. 9.)
We are not persuaded by these arguments. Jokura lists malonic acid
among a list of only eight dicarboxylic acids. (Col. 3, ll. 31-37.) In
addition, Jokura specifically recites that perfumes are “commonly used in
cosmetics.” (Col. 5, lines 19-34.) Thus, even though Jokura does not
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