Ex Parte Postajian

Board of Patent Appeals and Interferences

Aug 18, 2010

11059075 (B.P.A.I. Aug. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/059,075 02/15/2005 Madlen Postajian POSTA-47152 9977
26252 7590 08/19/2010
KELLY LOWRY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
FRAZIER, BARBARA S
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
08/19/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MADLEN POSTAJIAN
__________

Appeal 2010-005041
Application 11/059,075
Technology Center 1600
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods of preparing a depilatory composition. The Patent Examiner

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-005041
Application 11/059,075

2
rejected the claims for obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
The invention concerns a method of preparing “a depilatory
composition of a wax-like consistency for use in removing hair from the
human body.” (Spec. [0001]).
Claims 1-19, which are all the pending claims, are on appeal. Claim 1
is representative and reads as follows:
1. A method of preparing a depilatory composition, comprising the steps
of:
placing a quantity of sucrose into a heating vessel;
adding vinegar in an amount of about 30 to 35%, and citric acid in an
amount of 2.0 to 2.5% of the quantity of sucrose, into the heating vessel;
stirring the sucrose, vinegar and citric acid to create a mixture;
heating the mixture to about 230 degrees Fahrenheit;
diluting the mixture with water in an amount of 2.0 to 2.5% of the
quantity of sucrose; and
cooling the diluted mixture to form a soft wax at room temperature
once the temperature of the diluted mixture reaches about 230 degrees
Fahrenheit.

The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) over
Naggiar2 and Le Brun3.

2 US Patent No. 5,698,187 issued to Samir F. Naggiar, Dec. 16, 1997.
3 EP 0649646 A1 by Aicha Le Brun, published Apr. 26, 1995.
Appeal 2010-005041
Application 11/059,075

3
OBVIOUSNESS
The Issue
Appellant does not contest the Examiner's finding that Naggiar
disclosed a method of preparing a cold wax depilatory composition
comprising adding sucrose, water and citric acid to a heating vessel, stirring
and heating the mixture, diluting the mixture with water, and cooling the
mixture. Appellant also does not contest the Examiner’s finding that Le
Brun disclosed preparing a depilatory composition comprising sugar and
vinegar.
Appellant contends that “Naggiar is not combinable with Le Brun”
because Le Brun required its composition to be mixed by boiling while
Naggiar taught that if its composition is boiled, the resultant mixture was
virtually impossible to work. (App. Br. 10). According to Appellant, a
skilled artisan “would immediately recognize that these conflicting
preparation procedures would preclude any notion that a depilatory
composition could be created by combining the Le Brun and Naggiar
ingredients. . . . The conflicting preparation procedures preclude any
reasonable expectation of success.” (Id. at 15).
The issue with respect to this rejection is whether a skilled artisan at
the time of the invention would have had a reasonable expectation of
successfully combining Le Brun’s vinegar with Naggiar’s method of
preparing a depilatory composition.
Appeal 2010-005041
Application 11/059,075

4
Findings of Fact
1. We agree with the Examiner’s findings concerning the explicit
teachings of Naggiar and Le Brun. (Ans. 3-7).
2. Naggiar stated: “Of particular importance is the heating procedure to
insure that the ingredients are heated to a temperature just below that at
which the material will tend to harden.” (Naggiar col. 4, ll. 11-14).
3. Naggiar stated: “Even more critical, when boiled or cooked above or
to the hardening point, the resultant mixture was virtually impossible to
work even to the extent of removing it from the cooking vat.” (Id. at col. 4,
ll. 19-22).
4. Le Brun taught a process for preparing a depilatory in which “sugar
powder and one measure of white alcohol vinegar are mixed together, and
the mixture is then brought to boiling and is blended until a paste which is
ready to use is obtained.” (Le Brun, Abstract.)
5. Le Brun taught: “one carries the mixture to boiling, one maintains the
mixture with boiling pendent a given time, this time of cooking being
substantially proportional with the number of measurements used.” (Id.,
Trans. 2).

Principle of Law
“Obviousness does not require absolute predictability. Only a
reasonable expectation that the beneficial result will be achieved is
necessary to show obviousness.” In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citations omitted).

Appeal 2010-005041
Application 11/059,075

5
Analysis
While the prior art may have provided some motivation for a skilled
artisan to try to add vinegar to Naggiar’s depilatory composition, we do not
find that the combined prior art provided a reasonable expectation of
successfully doing so. In particular, Naggiar disclosed the importance of its
heating procedure, which required “insur[ing] that the ingredients are heated
to a temperature just below that at which the material will tend to harden.”
(FF-2). Naggiar expressly cautioned that “when boiled or cooked above or
to the hardening point, the resultant mixture was virtually impossible to
work….” (FF-3). However, Le Brun disclosed that its composition of sugar
and vinegar required bringing the mixture to boiling. (FF-4). Based upon
these disclosures, we agree with Appellant that a skilled artisan would have
recognized that adding vinegar to a depilatory composition would have
required boiling the mixture, yet such a boiling step would have resulted in
Naggiar’s composition being “virtually impossible to work even to the
extent of removing it from the cooking vat.” (See FF-3).
The Examiner argues that Naggiar was “not concerned about boiling
per se.” (Ans. 8-9.) We disagree. Naggiar explicitly instructed against
boiling, against cooking to the hardening point, and against cooking above
the hardening point. (FF-3.) Therefore, we do not find that Examiner has
provided persuasive evidence on this record to suggest that a person of
ordinary skill in the art, at the time the invention was made, would have
reasonably expected to successfully combine the teachings of Le Brun and
Naggiar. See Merck, 800 F.2d at 1097.

Appeal 2010-005041
Application 11/059,075

6
CONCLUSION OF LAW
A skilled artisan at the time of the invention would not have had a
reasonable expectation of successfully combining Le Brun’s vinegar with
Naggiar’s method of preparing a depilatory composition.

SUMMARY
We reverse the rejection of claims 1-19.

REVERSED

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