Appeal No. 2006-3372
Application No. 10/454,521
vitamin C in the composition of McAtee. First, the Ward case found certain
esters of a known alcohol were not obvious due to unexpected properties
possessed by those esters. Id., 329 F.2d at 1022, 141 USPQ at 228. Second.
the Galaxo case dealt with the statutory interpretation of “the active
ingredient of a new drug, . . . including any salt or ester of the active
ingredient” as found in 35 U.S.C. § 156(f)(2) (Supp. V 1987). Id.,
894 F.2d at 394, 13 USPQ2d at 1630-31. Thus, as the examiner has failed to
establish a prima facie case of obviousness as to claim 10, we are compelled
to reverse the rejection as it pertains to claim 10.
Rejection of Claim 9 under 35 U.S.C. § 103(a) over McAtee and Martin
Claim 9 is drawn to “[a] composition according to claim 1 further
comprising a tocotrienil selected from the group consisting of α-tocotrienil,
γ-tocotrienol, δ-tocotrienol, desmethyl-tocotrienol, didesmethyl-tocotrienol,
tocotrienol-P25 and mixtures thereof.”
McAtee is relied upon as above (Answer 8).
Martin is relied upon for teaching the use of tocotrienol and related
compounds, as well as lactic acid for treating acne. Id. at 9.
According to the examiner,
It is generally considered prima facie obvious to combine
compounds each of which is taught by the prior art to be useful
for the same purpose, in order to form a composition which is
useful for the very same purpose. The idea for combining them
flows logically from their having been used individually in the
prior art. As shown by the recited teachings, the instant claims
define nothing more than the concomitant use of conventional
anti-acne agents. It would follow that the recited claim define
prima facie obvious subject matter. In re Kerkhoven, 626 F.2d
848, 205 USPQ 1069 (CCPA 1980).
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