Ex Parte Lim et al

Board of Patent Appeals and Interferences

Jun 18, 2010

10991775 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MU-ILL LIM and YUH-GUO PAN
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Appeal 2009-007450
Application 10/991,775
Technology Center 1700
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Decided: June 18, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 4-13. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appeal 2009-007450
Application 10/991,775

Appellants claim a hair dyeing system comprising 4-amino-2-(1-
hydroxy-ethyl)-phenol (claim 8).
Representative claim 8 reads as follows:
8. In a hair dyeing system wherein at least one primary intermediate is
reacted with at least one coupler in the presence of an oxidizing agent to
produce an oxidative hair dye, the improvement wherein the at least one
primary intermediate comprises 4-amino-2-(1-hydroxy-ethyl)-phenol.

The Examiner rejects all appealed claims under 35 U.S.C. § 103 (a) as
being unpatentable over Vayssie (U.S. patent 5,073,174, issued Dec. 17,
1991).
The Examiner makes the undisputed finding that Vayssie discloses
hair dye precursors including a one-carbon homolog and a structural isomer
of the claim 8 compound (Ans. 4). Based on this finding, the Examiner
concludes that one having ordinary skill in this art would have been
motivated to modify either one of these prior art compounds in such a
manner as to obtain the claim 8 compound based on a reasonable
expectation that the obtained compound would possess the hair dye
precursor properties of the prior art compounds due to the close structural
similarity of the former with the latter (id.).
With respect to all appealed claims, Appellants’ sole argument is that
no motivation or reasonable expectation of success exists for the Examiner's
obviousness conclusion (Br. 4-6).
This argument is unpersuasive for the reasons well stated in the
Answer and for the reasons expressed in the prior decision for Appellants’
related appeal number 2006-1158.
We therefore sustain the Examiner’s § 103 (a) rejection of all
appealed claims over Vayssie.
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Appeal 2009-007450
Application 10/991,775

The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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