Appeal No. 2006-3151
Application No. 10/767,679
perfumes or fragrances would not be given the faintest hint in Jokura et al. of
any advantage in the combination of malonate and terpenoid.” (Br. 7.)
Appellants also state that Guenin “avers an extended series of objects
addressed by the invention. See column 1 (line 62) bridging to column 2
(line 15). Among those objects or problems are to control malodor, improve
fragrance efficiency (i.e. reduce the amount of material), limit irritation and
enhance masking ability against underarm odor. None of the objects of the
invention are directed at combating oxidative instability.” (Br. 7.)
Appellants argue that:
A combination of Jokura et al. in view of Guenin et al. would
not render the instant invention obvious. Neither of the
references is concerned with the problem of oxidative
instability of fragrance components, and certainly not of
terpenoids. . . . There is neither teaching nor suggestion nor
incentive for fortifying terpenoid fragrance compositions with a
malonate anti-oxidative agent. For all these reasons, a
combination of Jokura et al. in view of Guenin et al. would not
render the instant invention obvious.
(Br. 8.)
This argument is also unpersuasive. The fact that neither Jokura nor
Guenin describe that the combination of a terpenoid fragrance and a malonic
acid salt would provide a composition having oxidative stability is not
relevant to whether the Examiner has set forth a prima facie case of
obviousness. Prima facie obviousness does not require prior art references
to recognize or even suggest the problem that Appellants attempted to solve.
In addition, the prior art does not have to teach combining references for the
reason that Appellants combined them. In re Dillon, 919 F.2d 688, 692-93,
16 USPQ2d 1897, 1901 (Fed. Cir. 1990, en banc). Furthermore, Appellants
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