Ex parte Nojiri et al.

Board of Patent Appeals and Interferences

Jan 22, 1999

07974510 (B.P.A.I. Jan. 22, 1999)

Application for patent filed November 12, 1992.1
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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(2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIROSHI NOJIRI, SACHIO NAITO,
HIDEHISA TAKAHASHI, MASARU FUJIKI, and MUJO KIM
____________
Appeal No. 95-3320
Application 07/974,5101
____________
HEARING: December 8, 1998
____________
Before WINTERS, WILLIAM F. SMITH, and GRON, Administrative
Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
This is an appeal under 35 U.S.C. § 134 from an
Appeal No. 95-3320
Application 07/974,510
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examiner’s rejections of Claims 1-3 and 5-18, all claims
pending in this application.
Introduction
Claims 1-3 and 5-18 stand finally rejected under 35
U.S.C.
§ 103 as being unpatentable in view of the combined teachings
of Widder, U.S. Patent 3,987,161, issued October 19, 1976, and
Tizard, Veterinary Immunology, W.B. Saunders Co.,
Philadelphia, PA, p. 168 (1977). Claim 1 is representative of
the subject matter claimed and reads:
1. A hair care product comprising a yolk antibody
which has been obtained from an egg of a domestic fowl
immunized using human hair as an antigen.
Discussion
Widder describes a hair care product comprising an
antibody-containing serum which has been obtained from the
blood of “[a]ny animal which is capable of forming antibodies
in the blood” (Widder, col. 2, l. 8-9), typically rabbits and
horses (Widder, col. 2, l. 11-12), when its body is injected
with an aqueous suspension of mammalian, preferably human hair
particles
(Widder, col. 1, l. 22-42).
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Tizard teaches at page 168, second full paragraph:
Chicks may acquire antibody from the hen via the
yolk. Antibodies are readily transmitted to the yolk
while still in the ovary, and in the fluid phase of the
yolk are found at levels equal to that in hen serum. . .
. Because of
this passively acquired antibody, the newly hatched chick
is resistant to successful vaccination in the same way
that young mammals are.
In re Dow Chem. Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed.
Cir. 1988), instructs at 473, 5 USPQ2d at 1531:
The consistent criterion for determination of
obviousness is whether the prior art would have suggested
to one of ordinary skill in the art that this process
should be carried out and would have a reasonable
likelihood of success, viewed in light of the prior
art. . . . Both the suggestion and the expectation of
success must be founded in the prior art, not in the
applicant’s disclosure.
The above criterion for determination of obviousness, as it
applies to the facts in this case, raises the following
questions:
(1) Would Widder’s teaching have suggested to one having
ordinary skill in the art to use antibody-containing serum
which has been obtained from the blood of a domestic fowl
immunized using human hair as an antigen in hair care
products?
(2) Would Widder’s teaching reasonably have led one
Appeal No. 95-3320
Application 07/974,510
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having ordinary skill in the art to expect that antibody-
containing
serum which has been obtained from the blood of a domestic
fowl immunized using human hair as an antigen would be useful
in hair care products?
(3) Would the combined prior art teachings have suggested
to one having ordinary skill in the art to use yolk antibody
which has been obtained from an egg of a domestic fowl
immunized using human hair as an antigen in hair care
products?
(4) Would the combined prior art teachings reasonably
have led one having ordinary skill in the art to expect that
yolk antibody which has been obtained from an egg of a
domestic fowl immunized using human hair as an antigen would
be useful in hair care products?
To answer these questions and determine the patentability
of the claimed subject matter under 35 U.S.C. § 103 in light
of the applied prior art, we have considered the evidence and
arguments of record, including the specification and claims,
appellants’ Appeal and Reply Briefs, the Examiner’s Answer,
the applied prior art, the Declaration Under 37 CFR 1.132 by
Hiroshi Nojiri, filed February 17, 1994, the attachments
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thereto, inter alia. We note especially the following
acknowledgment in appellants’ specification (Specification, p.
3, l. 4-8):
. . . [I]t is well known that an antiserum
obtained from a mammal has complement-activating
effects so that it tends to stimulate neutrophils
to cause local inflammation. It is therefore
preferred not to use a mammal antiserum in hair
care products.
Accordingly, by applicants’ admission, persons having ordinary
skill in the art would have preferred to use and would have
had adequate incentive to try to use serum antibody which is
obtained from the blood of a non-mammalian animal immunized
using human hair as an antigen as the antibody-containing
serum Widder suggests for use in hair care products. Would
persons having ordinary skill in the art reasonably have
expected that antibody-containing serum from the blood of a
domestic fowl immunized
with human hair would be a useful component in human hair care
products? The record does not provide us with a “clear-cut”
answer. We find that the evidence of record indicates that
the antibodies in blood serum derived from fowl immunized with
human hair as an antigen “are distinct” from the antibodies in
blood serum derived from mammals immunized with human hair as
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an antigen, especially in their antigen-binding properties.
See pages 2 to 4, paragraphs 9 to 14, of Nojiri’s Declaration
Under
37 CFR 1.132. Nevertheless, Widder expressly states that
antibody-containing serum derived from the blood of “[a]ny
animal which is capable of forming antibodies in the blood”
(Widder, col. 2, l. 8-9) in response to human hair would be
useful in hair care products. We find that Widder’s
disclosure reasonably would have led persons having ordinary
skill in the art to try antibody-containing serum derived from
a domestic fowl immunized using human hair as an antigen to
determine if its antigen-binding capacity was sufficient for
use in human hair care products. However, “obvious to try” is
not the standard for unpatentability under section 103. In re
O’Farrell, 853 F. 2d 894, 903, 7 USPQ2d 1673, 1680-81 (Fed.
Cir. 1988).
Moreover, we find no suggestion in the cited prior art to
use yolk antibody derived from domestic fowl immunized with
hair antigen rather than antibody-containing serum derived
from domestic fowl immunized with hair antigen in human hair
care products. That “[a]ntibodies are readily transmitted to
the yolk while still in the ovary, and in the fluid phase of
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the yolk are found at levels equal to that in hen serum”
(Tizard, p. 168, second full para.) is not sufficient basis
for a holding that the subject matter appellants claim is
unpatentable under 35 U.S.C.
§ 103. It is not enough for the art to recognize that
passively acquired antibodies allow newly hatched chicks to
resist vaccination in the same way that young mammals do
(Id.). Fowl and mammal antibodies are distinct, and the
examiner has not explained why a person having ordinary skill
in the art would have sought to use yolk antibodies obtained
from the eggs of domestic fowl immunized using human hair as
an antigen in hair care products when the art expressly
teaches persons having ordinary skill in the art to use
antibody-containing serum obtained from the blood of animals
immunized using human hair as an antigen in hair care
products.
The holding of prima facie unpatentability under section
103 stands or falls in this case with the examiner’s finding
that “[t]he motivation lies in selecting an alternative source
for the antibody which does not involve the removal of blood
from the animal and the inconveniences associated therewith”
(Examiner’s Answer, p. 4, first para.). The examiner’s
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finding of motivation is clearly erroneous for two reasons.
First, the evidence of record establishes that persons having
ordinary skill in the art would not have looked to the egg
yolk of domestic hens for “an alternative source” for the
mammalian antibody utilized in the prior art because the serum
antibodies derived from Widder’s mammalian blood immunized
using human hair as an antigen are distinct from yolk
antibodies derived from an egg of a domestic fowl immunized
using human hair as an antigen. Second, the cited prior art
does not recognize any inconvenience associated with the
removal of blood from chickens immunized with human hair as an
antigen.
There must be a reason or suggestion in the art for
selecting the procedure used, other than the knowledge
learned from the applicant’s disclosure.
In re Dow Chem. Co., at 473, 5 USPQ2d at 1532. For the
reasons stated, we reverse the examiner’s rejection. “Both
the
suggestion and the expectation of success must be founded in
the prior art disclosure, not in the applicant’s disclosure.”
Id.
at 473, 5 USPQ2d at 1531.
Conclusion
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Application 07/974,510
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We reverse the examiner’s rejection of Claims 1-3 and 5-
18 under 35 U.S.C. § 103 as being unpatentable in view of the
combined teachings of Widder and Tizard.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
)
William F. Smith ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Teddy S. Gron )
Administrative Patent Judge )
tdc
Appeal No. 95-3320
Application 07/974,510
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