Ex parte LE GROW et al.

Board of Patent Appeals and Interferences

Sep 26, 1997

08145553 (B.P.A.I. Sep. 26, 1997)

Application for patent filed November 4, 1993. According1
to appellants, this application is a continuation of Application
08/013,877 filed February 5, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARY E. LE GROW
and JOHN C. SMITH JR.
_____________
Appeal No. 95-0222
Application 08/145,5531
______________
ON BRIEF
_______________
Before PAK, WARREN and WEIMAR, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 15 through 34, which are all of the claims
remaining in the application.
Appeal No. 95-0222
Application 08/145,553
2
Claim 15 is representative of the subject matter on appeal
and reads as follows:
15. A composition comprising (i) from 30.0 to 97.8 percent
by weight of an alkylmethylsiloxane having the formula
in which the sum of the integers x and y is four, five, or six,
with the proviso that x and y cannot be zero; and z is an integer
having a value of one of twelve; (ii) from 0.2 to fifty percent
by weight of a cyclopolysiloxane having the formula [(CH ) SiO]3 2 a
in which a is an integer having a value of three to ten; and
(iii) two to twenty percent by weight of a silicone gum selected
from the group consisting of silanol endblocked polydimethyl-
siloxane gums having the formula HO(CH ) SiO[(CH ) SiO] Si(CH ) OH,3 2 3 2 n 3 2
and polydimethylsiloxane gums having the formula
(CH ) SiO[(CH ) SiO] Si(CH ) , in which n is an integer having a3 3 3 2 n 3 3
value of from five thousand to fifty thousand.
The references of record relied upon by the examiner are:
Pader 4,364,837 Dec. 21, 1982
Bolich, Jr. et al. (Bolich) 4,902,499 Feb. 20, 1990
Cobb et al. (Cobb) 4,906,459 Mar. 6, 1990
Clement 5,118,507 June 2, 1992
Claims 15 through 34 stand rejected under 35 U.S.C. § 103 as
unpatentable over Cobb or Bolich in view of Clement and Pader.
Appeal No. 95-0222
Application 08/145,553
3
We have carefully reviewed the record before us, including
each of the arguments and comments advanced by appellants and the
examiner in support of their respective positions. This review
leads us to conclude that the examiner's rejection of claims 15
through 34 under § 103 is not well-founded. Accordingly, we will
reverse the examiner's rejection. Our reasons for this
determination follow.
In making a rejection under § 103, the examiner has the
initial burden of supplying the factual basis for his or her
position. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178,
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). That burden can
be satisfied if the examiner supplies prior art references which
would have reasonably suggested to one of ordinary skill in the
art the claimed invention. In re Lalu, 747 F.2d 703, 705, 223
USPQ 1257, 1258 (Fed. Cir. 1984). However, it is impermissible
within the framework of 35 U.S.C. § 103 to pick and choose from
the prior art references only those portions which will support a
given position without considering what each prior art reference
would have fairly suggested to one of ordinary skill in the art.
In re Hedges, 783 F.2d 1038, 1041, 228 USPQ 685, 687 (Fed. Cir.
1986).
Appeal No. 95-0222
Application 08/145,553
4
In the present case, the examiner has supplied the Cobb,
Bolich, Clement and Pader references to support her rejection
under § 103. However, none of these references, either
individually or in combination, would have suggested the
employment of the claimed amount of a cycloalkylmethylsiloxane
defined by the claimed formula together with specific proportions
of a particular cyclopolysiloxane and a particular polydimethyl-
siloxane gum. As acknowledged by the examiner, the Cobb, Bolich
and Clement references are silent as to employing the claimed
amount of the claimed cycloalkylmethylsiloxane. Moreover, the
Pader reference as a whole would not have suggested to one of
ordinary skill in the art to employ the claimed amount of the
claimed cycloalkylmethylsiloxane together with specific pro-
portions of the particular cyclopolysiloxane and the particular
polydimethylsiloxane gum. As apparent from the Pader reference,
a huge number of nonionic and cationic hair grooming agents,
which may be inclusive of the claimed cycloalkylmethylsiloxane,
are disclosed. Nowhere does the Pader reference, however,
exemplify or show preference for siloxanes which are structurally
identical or similar to the claimed cycloalkylmethylsiloxane.
Nor does the Pader reference recognize the importance of
Appeal No. 95-0222
Application 08/145,553
5
employing the claimed amount of the claimed cycloalkylmethyl-
siloxane for the purposes of improving a skin care composition.
Accordingly, the decision of the examiner is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
)
ELIZABETH WEIMAR )
Administrative Patent Judge )
)
Appeal No. 95-0222
Application 08/145,553
6
JIM L. DE CESARE
PATENT DEPARTMENT
MAIL C01232
DOW CORNING CORPORATION
MIDLAND, MI 48686-0994