Appeal 2007-0535
Application 10/601,731
water, both the fully neutralized acid and the half neutralized acid would be
present in equilibrium.
Appellants also argue:
Malonic acid is present as a proton donating agent. This means
it is selected simply because it is an acid rather than for any
special aspect of the organic radical. . . . Thus, those skilled in
the art would not be led to utilize malonates for the presently
claimed purpose of controlling signs of aging such as
improving skin softness, suppleness and flexibility. Present
method claim 6 specifically focuses upon controlling the signs
of aging through use of certain malonate salt combinations.
Composition claim 1 inherently recites [the] functionality of
controlling signs of aging through [the] requirement of a
Flexibility Value greater than 1 in the Porcine Skin Test.
(Br. 11.)
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 at 692-93. 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 Beerse describes
including malonic acid salts in a composition to achieve the benefits set
forth in Beerse, and that this composition would inherently have a Flexibility
Value greater than 1. We agree with the Examiner that this is sufficient to
provide a prima facie case of obviousness.
Claim 6 is an independent claim directed to a method for controlling
signs of aging comprising applying the same cosmetic composition as
recited in claim 1 to the skin. Beerse describes applying its composition to
the skin (Beerse 4). In fact, Beerse describes applying its composition to
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