Appeal No. 2006-3372
Application No. 10/454,521
to how to select one particular ingredient for treatment of rosacea.” Id.
Appellant argues that McAtee does not teach using lipoic acid with an α-
hydroxy as is required by the claims, and that through the examples, actually
teaches away from such a combination. Id. at 6.
Appellant’s arguments are not convincing. First, Appellant’s claim 1
is drawn to a composition, not a method of treating rosacea. As set forth
above, McAtee discloses a composition that appears to be the same as the
composition of claim 1. “[W]hen the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.” In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). “When the claimed
compositions are not novel they are not rendered patentable by recitation of
properties, whether or not these properties are shown or suggested in the
prior art.” Id. at 709, 15 USPQ2d at 1658. Thus it is irrelevant that McAtee
did not teach that the composition may be used for the treatment of rosacea,
as the compositions appear to be the same, and Appellant has not provided
any evidence how the composition of McAtee differs from the claimed
composition.
Moreover, as to Appellant’s argument that McAtee provides a laundry
list of active ingredients for acne, wrinkles and skin atrophy, anesthetics, and
microbial and fungal infections, the Perricone court found that even when a
specific claimed ingredient is found in a list, the prior art reference may still
be an anticipatory reference. 432 F.2d at 1377, 77 USPQ2d at 1327. Here,
the prior art, McAtee, lists lipoic acid and glycolic acid with 18 additional
skin care ingredients. Thus, it is not a matter of picking and choosing from
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013