Ex Parte Maes et al - Page 7

                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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