Appeal No. 2007-0179 Page 5
Application No. 10/601,856
agent), adjusts the pH of the composition. Thus, one would have been
motivated to utilize the desired acid: salt ratio depending on the
desired pH of the composition. For instance, Jokura teaches the
importance of avoiding skin irritation due to the acid; thus the pH
must be above 3 and below 10 (see column 3, lines 30-65). Therefore,
a skilled artisan would have been motivated to use a sufficient amount
of salt to either partially or fully neutralize the acid in the composition
to render a pH that does not irritant the skin wherein using equimolar
amounts of the salt and acid (full neutralization) would increase the
pH whereas partial neutralization of the acid would decrease the pH
since the compound is in an acidic form. Additionally, it should be
noted that generally differences in concentrations do not support the
patentability of subject matter that is encompassed by the prior art
unless there is evidence indicating such a[ ] concentration is critical.
See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Id. at 5: 6-20.
Appellants argue that Jokura “is focused upon achieving moisturization.
There is no suggestion that the dicarboxylic acids implicated in achieving this
moisturization would have any effectiveness at stabilizing sunscreen agents” as
described in the instant application. Br. 5. They also assert that that half-
neutralized and fully neutralized dicarboxylic acids are not described by Jokura.
“Since the free acid must be present, the fully neutralized salt of that free acid
could not coexist therewith. . . . Jokura et al. lacks the claimed di-salt.” Br. 7.
Appellants urge there would have been no motivation to have selected malonic
salts from Jokura’s disclosure. Br. 6, 8.
The Examiner bears the initial burden of showing unpatentability. See, e.g.,
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
Obviousness requires assessing “if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013