Ex Parte Perricone - Page 6

                Appeal No. 2006-3372                                                                           
                Application No. 10/454,521                                                                     

                long laundry lists of ingredients: Rather, McAtee discloses compositions                       
                comprising lipoic acid and glycolic acid and mixtures thereof, in which the                    
                list containing those claimed ingredients contains only 18 additional skin                     
                care actives.                                                                                  
                      Finally, given that short list of skin care actives and mixtures thereof,                
                as referenced above, the fact that there is no specific example of a                           
                composition comprising both glycolic acid and lipoic acid does not teach                       
                away from the composition of claim 1.  A reference need not have described                     
                an actual reduction to practice of an invention in order to serve as an                        
                anticipatory reference.  See In re Siveramakrishnan, 673 F.2d 1383, 1384,                      
                213 USPQ 441, 442 (CCPA 1982); In re Donohue, 766 F.2d 531, 533,                               
                226 USPQ 619, 621 (Fed. Cir. 1985).                                                            
                Rejection of Claims 1-8 and 10-12 under 35 U.S.C. § 103(a) over McAtee                         
                      As we have affirmed the rejection of claims 1-8, 11, and 12 under                        
                35 U.S.C. § 102(a) as being anticipated by McAtee, we address the rejection                    
                only as it relates to claim 10.3  Claim 10 is drawn to the composition                         
                according to claim 1, wherein the composition further comprises a fatty acid                   
                ester of ascorbic acid.                                                                        
                      McAtee is relied upon as above (Answer 5).  As to claim 10, the                          
                examiner notes that claim 10 requires an ester of Vitamin C, and that                          
                McAtee teaches the use of Vitamin C to treat acne, although not in esterified                  
                form.  Id. at 6.                                                                               
                                                                                                              
                3 We note that Appellant argues claim 12 separately in the Reply Brief dated                   
                November 19, 2006, but as Appellant did not present those arguments                            
                originally in the Brief, we need not address them here.  See 37 CFR § 41.37                    
                (c)(1)(vii) (2006).                                                                            
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