Appeal No. 2007-0179 Page 8
Application No. 10/601,856
al. require the presence of free dicarboxylic acid.”). Jokura’s requirement that its
skin composition comprises components (B) a dicarboxylic acid and (C) a salt of
the same dicarboxylic acid in a fixed molar ratio refers to how much of the
components are initially combined to prepare the skin cosmetic, not which species
are present in the composition at equilibrium.
Appellants also 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,”
which is accomplished by the claimed subject matter. Br. 5. We do not find this
argument persuasive. As explained above, the claimed subject matter comprising
“a salt of malonic acid present as a half-neutralized and a fully neutralized acid in a
molar ratio ranging from about 1000:1 to about 1:1000” would have been obvious
to one of ordinary skill in the art at the time the invention was made. “Mere
recognition of latent properties in the prior art does not render nonobvious an
otherwise known invention.” In re Baxter Travenol Labs., 952 F.2d 388, 392,
21 USPQ2d 1281, 1285 (Fed. Cir. 1991). See also Answer 9-10 for additional
arguments which we find fully persuasive.
Finally, Appellants urge that “the Examiner has extrapolated motivation to
use a mixed di- and mono- amine type malonate from a reference which does not
specifically mention this combination of salt, much less provide any specific
example.” Br. 8. We are not persuaded by this argument. As the Examiner
concludes, Jokura’s teaching of malonic acid in a list of 8 dicarboxylic acids
coupled with its disclosure amine and ammonium salts, would have rendered the
choice obvious to the skilled artisan. Answer 6. Appellants do not describe the
deficiency in this argument. Moreover, they admit in their patent application that
malonic acid “has been reported” in Jokura. Specification, § [0003].
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