Appeal 2007-0535
Application 10/601,731
finding a relatively poor performance in a skin evaluation such
as the claimed Porcine Skin Test. In certain ways Jokura et al.
could be said to lead the skilled chemist away from using
malonate by highlighting inferior performing dicarboxylic acids
or salts.
(Br. 10.)
We are not persuaded by this argument. Prima facie obviousness does
not require prior art references to recognize or even suggest the problem that
Appellants attempted to solve. In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.
1990 (en banc)). In making his prima facie case of obviousness, the
Examiner is not arguing that it would have been obvious that malonic acid
salts would provide a Flexibility Value greater than 1. Instead, the Examiner
is arguing that Jokura describes including malonic acid salts in a cosmetic
composition to achieve the benefits set forth in Jokura, and that this
composition would inherently have a Flexibility Value greater than 1. Thus,
we do not agree that Jokura teaches away from using a malonic acid salt.
Instead, we agree that the Examiner has set forth a prima facie case that one
of ordinary skill in the art would have been motivated to form a composition
within claim 1 in order to provide the “excellent moisturizing effect”
described in Jokura (Jokura, col. 1, ll. 7-11) and that this composition would
inherently exhibit a Flexibility Value greater than 1.
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious over Jokura, which Appellants have not
rebutted. We therefore affirm the rejection of claim 1 under 35 U.S.C.
§ 103. Claims 3-16 fall with claim 1.
11
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013