Appeal No. 2007-0179 Page 6
Application No. 10/601,856
ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
To establish a prima facie case of obviousness, there must be some suggestion or
motivation, either in the references themselves or in the knowledge generally
available to one of ordinary skill in the art, to modify the reference or to combine
reference teachings. See In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir.
1991); In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “The prima facie case is a procedural tool of patent examination, allocating
the burdens of going forward as between examiner and applicant. . . . If that
burden is met, the burden of coming forward with evidence or argument shifts to
the applicant.” In re Oetiker, 977 F2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
Here, we find that the Examiner has presented sufficient evidence to
establish a prima facie case of obviousness. First, the Examiner has identified
where the components of the claimed composition can be found in the prior art.
Answer 3-4. Secondly, having described the differences between the claimed
composition and the prior art (Answer 4), the Examiner explains why the skilled
worker would have been motivated to have modified Jakura to have arrived at the
claimed subject matter. Answer 4-5.
Before summarizing the Examiner’s position, for clarity, we designate the
free dicarboxylic acid (i.e., malonic acid) as species [1]; the half- or partly-
neutralized acid (i.e., malonic acid substituted with one “cationic counter ion”) as
species [2]; and the fully-neutralized acid (i.e., malonic acid substituted with two
“cationic counter ions”; the “di-salt”) as species [3]. Jokura describes a skin
composition having a molar ratio between the free acid [1] and fully neutralized
acid [3]. Col. 3, ll. 51-60. In contrast, the claimed composition is limited to a
different molar ratio which is between the half-neutralized [2] and fully neutralized
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013