Appeal No. 2006-3372
Application No. 10/454,521
The examiner, citing In re Ward, [329 F.2d 1021,] 141 USPQ 227
(CCPA 1964) and Galaxo Operations UK Ltd. v. Quigg, [894 F.2d 392,] 13
USPQ2d 1628 [Fed. Cir. 1990], asserts that the use of acids, ethers, esters
and salts of therapeutic compounds is obvious and well known to the
ordinary artisan (Answer 6).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). The test of
obviousness is “whether the teachings of the prior art, taken as a whole,
would have made obvious the claimed invention.” In re Gorman, 933 F.2d
982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Appellant argues that McAtee does not disclose the fatty acid ester of
Vitamin C, and that “one of skill in the art, having read McAtee [ ] simply
would not possess a fatty acid of ascorbic acid for use with the lipoic acid
ingredient together with an α-hydroxy acid in a composition for the
treatment of rosacea” (Br. 10). We agree, and the rejection is reversed.
The examiner is correct in finding that McAtee teaches the inclusion
of Vitamin C and its derivatives in the skin care compositions disclosed by
that reference (col. 10, ll. 51-55). McAtee does not teach or suggest the use
of a fatty acid ester of Vitamin C, and we do not find that the caselaw cited
by the examiner makes up for that deficiency.
We note further that the caselaw cited by the Examiner is not relevant
to the issue of whether it would have been obvious to use a fatty acid ester of
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