Appeal No. 2006-3254
Application No. 10/347,982
Appellants argue that the “even more significant advance is the relatively
non-irritating nature of the malonate salts.” (Id.)
We are not persuaded by these arguments. We note initially that
whether Jokura or Günter describes treating the signs of aging 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).
In addition, we conclude that Appellants have not set forth sufficient
evidence of unexpectedly superior results to rebut the prima facie case that
claim 1 would have been obvious. In particular, Appellants have not shown
that the claimed composition has unexpectedly superior results as compared
to the closest prior art. “[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392,
21 USPQ2d 1281, 1285 (Fed. Cir. 1991).
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious over Jokura in view of Günter, which
Appellants have not rebutted. We therefore affirm the rejection of claim 1
under 35 U.S.C. § 103. Claims 4 and 5 fall with claim 1.
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