Appeal 2007-1144
Application 10/424,616
As evidence of unexpected results, Appellants point to the examples
in the Specification that demonstrate that, when compared to DHA alone, the
combination of DHA and cholesterol sulfate results in a 20% to 25% darker
tan after 4 and 5 days (id. at 11). Thus, Appellants argue, “the study
described in the present specification demonstrates that the addition of
cholesterol sulfate to DHA provides an improvement over the closest prior
art, namely a longer lasting self-tan, and thus, demonstrates patentability by
virtue of the unexpected result” (id.).
We agree that evidence of unexpected results may rebut a prima
facie case of obviousness. See In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1455-1456 (Fed. Cir. 1998). However, “when unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.” In re Baxter-Travenol
Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991).
Here, a composition containing DHA by itself is not the closest prior
art to the claims. Miklean’s compositions contain, in addition to DHA,
emollients and humectants including glycerine, butylene glycol, phenyl
trimethicone (a silicone), and the fatty acid esters coco caprylate/caprate and
octyl palmitate, (Miklean, col. 7, ll. 35-60 (Example 3)). The Specification
does not state that the compositions used in comparative Examples IV and V
(Specification 10-12) contain the humectants and emollients present in
Miklean’s tanning compositions.
The omission of humectants and emollients from the comparative
compositions in the Specification is significant because cholesterol sulfate is
disclosed in Bernstein to be a moisturizer (col. 2, ll. 1-3) and is shown in the
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