Appeal No. 2007-0179 Page 7
Application No. 10/601,856
acid [3]. The Examiner’s argument is that a composition prepared from a mixture
of malonic acid and its salt, as suggested by Jokura, would inherently have a
[1]:[3] ratio which, when adjusted to the pH range described by Jokura as non-
irritating to the skin, would overlap with the [1]:[3] ratio described for Jokura’s
skin composition. The reason for this presumption is that pH determines the ratio
of the species [1], [2], and [3]. Compositions having the same or similar pH would
correspondingly have the same or similar concentrations of species [1], [2], and
[3]. The Examiner provides a well-reasoned explanation for this conclusion,
including equations which show how acid concentration (i.e., pH) would govern
the ratio of species [1], [2], and [3] in a solution of malonic acid and its salt.
Answer 10-13. Especially in view of the broad range molar ratio recited in claim 1
(“from about 1000:1 to about 1:1000”), we find this evidence sufficient to establish
a prima facie case of obviousness.
Once prima facie obviousness had been shown, the burden properly shifted
to Appellants to come forward with evidence to rebut it. On the record before us,
we do not find that Appellants have provided persuasive countervailing arguments.
Appellants state that “[a]ll three species, i.e., free [1], mono-salt (half-neutralized)
[2] and di-salt (fully neutralized) [3], could not exist together.” Br. 7. However,
the Examiner carefully shows, relying on LeChatelier’s principle, that all three
species could co-exist, and then derives equations to illustrate how the relative
amounts of the species are changed by adjusting the solution’s pH. Answer 11.
Appellants do not identify any defect in the Examiner’s reasoning nor do they
explain why “[t]he pKa of malonic acid would not permit the presence of all three
species,” as they allege would be the case. Br. 7.
In addressing Jokura, Appellants also appear to have misunderstood its
disclosure. See, e.g., Br. 7. (“The problem with the pH argument is that Jokura et
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