Ex Parte Ramin

Board of Patent Appeals and Interferences

Nov 13, 2002

09141515 (B.P.A.I. Nov. 13, 2002)

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The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 33

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

__________

Ex parte ROLAND RAMIN
__________

Appeal No. 2002-0526
Application No. 09/141,515
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ON BRIEF
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Before LORIN, MILLS, and GRIMES Administrative Patent Judges,

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. ' 134 from the examiner's final
rejection of claims 1-38, which are all the claims on appeal in this application.
Claims 1 and 23 are representative of the claims on appeal
and read as follow:
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1. A nonaqueous composition comprising at least one film-
forming polymer and an organic phase comprising at least one
polysaccharide alkyl ether formed of units containing at least
two different saccharide rings, wherein each unit contains at
least one hydroxyl group substituted with a saturated
hydrocarbon-based alkyl chain, and wherein said organic phase
further comprises at least one medium which is a solvent for said
polysaccharide alkyl ether; and
wherein said nonaqueous composition forms a shiny film when
applied to a support.

23. A composition according to claim 1, wherein said
solvent for said polysaccharide alkyl ether is an organic
solvent.
The references relied upon by the examiner are:
Ramin 5,833,967 Nov. 10, 1998
Commander et al. (Commander) EP 0 708 114 A1 April 24, 1992
Clarke et al (Clarke), AEthyl Galactomannan Film Properties for Use in Personal Care
Applications,@ Research Disclosure 38413, XP-002067847, pp. 235-236 (1996)

References relied upon by the Appellant are:
AFlow and Consistency Index Dependence of Pseudoplastic Guar Gum Solutions,@ Drug
Development and Industrial Pharmacy (Drug), Vol. 14, No. 7, pp. 905-914 (1988)
AOrganic Rheological Additives,@ Manufacturing Chemist (Chemist), pp. 79-83 (1986)
Kirk-Othmer Encylopedia of Chemical Technology (Kirk-Othmer), 4th ed. p. 855 (1994)
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Grounds of Rejection
Claims 1-22 and 24-38 stands rejected under 35 U.S.C. ' 103
as obvious over Clarke in combination with Ramin.
Claim 23 stands rejected under 35 U.S.C. ' 103 as obvious
over Clarke and Ramin in further view of Commander.
We affirm the rejection of claim 23, vacate the rejection of
claims 1-22 and 24-38 under 35 U.S.C. ' 103 and remand the
application to the examiner for reconsideration of the issues
discussed herein.
DISCUSSION
In reaching our decision in this appeal, we have given consideration to the
appellant=s specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the noted rejection, we make reference to the examiner's
Answer for the examiner's reasoning in support of the rejection, and to the appellant=s
Brief and Reply Brief for the appellant=s arguments thereagainst. As a consequence of
our review, we make the determinations which follow.

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35 U.S.C. ' 103
1. Claim 23 stands rejected under 35 U.S.C. ' 103 as
obvious over Clarke and Ramin in further view of Commander.
In rejecting claims under 35 U.S.C. ' 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). With this as background, we
analyze the prior art applied by the examiner in the rejection of the claims on appeal.
According to the examiner (Answer, page 3), Ramin is relied
on by the examiner for the disclosure of an organic solvent based
nail varnish composition comprising a film forming polymer. The
composition may also contain rheological agents such as guar,
carob and xanthan gums and a plasticizer. Id. The composition
of Ramin may further contain an oily medium, for example plant
or mineral oils (column 2, line 54 to column 3, line 12). Id.
In one embodiment Ramin teaches a non-aqueous, solvent based
nail varnish having improved sheen (i.e., shine). Example 3,
columns 4-5.
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Therefore, it would reasonably appear that Ramin teaches
each of the claimed components, except for the specific claimed
polysaccharide alkyl ether as the rheological agent.1
The examiner relies on Commander for the disclosure that ethyl guar gum with
the degree of substitution greater than 2.4 is useful as a thickener or rheology
modification agent in organic solvent compositions that provide coatings/films. Answer,
page 4; Commander, Abstract. Clarke teaches that ethyl guar with a
degree of substitution greater than about 2.5 is useful in
colored cosmetic compositions formed from a homogeneous single
oil (organic) phase. The cosmetic compositions include
lipstick, which is generally intended to form a shiny film when
applied. Answer, page 3. The examiner suggests that one of ordinary
skill in the art would have expected guar gum derivatives, such as ethyl guar gum, to
provide thickening in the organic solvent based systems of Ramin. Answer, page 5.
We agree that the examiner has provided appropriate evidence to support a
prima facie case of obviousness of the composition of claim 23. As stated in Pro-Mold

1 According to appellant's specification the claimed
polysaccharide alkyl ether functions as a thickener in the
claimed composition. Specification, page 3.

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& Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629,
(Fed. Cir. 1996) (citation omitted):

It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those
references.

In the present case, we find the examiner has provided evidence of a reason,
suggestion or motivation to lead one of ordinary skill in the art to combine the cited
references in the manner claimed. In particular, the examiner provides evidence
(Ramin) of a composition comprising an organic solvent such as that claimed, except
for the particularly claimed thickening or rheological agent. The examiner provides
evidence that one of ordinary skill in the art would be familiar with the use of ethyl guar
gum as a thickener or rheological agent for use with organic solvents or the creation of
coatings/film from organic solvents (Commander). Clarke further supports the
compatible use of ethyl guar in cosmetic applications.
Where the prior art, as here, gives reason or motivation to make the claimed
invention, the burden then falls on appellant to rebut that prima facie case. Such
rebuttal or argument can consist of any other argument or presentation of evidence that
is pertinent. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (en banc), cert. denied, 500 U.S. 904 (1991).
Appellant argues that the disclosure of Ramin relies heavily on the use of water
and that the present invention, by contrast, is directed to a nonaqueous composition.
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Appellant further argues that Clarke fails to teach ethyl galactomannan in combination
with a film forming polymer. Brief, page 5. We agree with the examiner, however, that
Ramin clearly contemplates a composition comprising a film-forming polymer and a
solvent which can be an organic solvent (i.e., nonaqueous). Column 1, line 65 to
column 2, line 6.
Appellant argues that Drug, Chemist and Kirk-Othmer establish that Athe natural
gums disclosed in Ramin could not replace the polysaccharide alkyl ether component of
the present claims because the natural gums therein are used to thicken aqueous
phases, not organic phases...@ Brief, page 7. Appellant argues that the references
Afail to indicate why one of ordinary skill in the art would have been motivated to (1)
select at least one of the specific polysaccharide alkyl ethers according to the present
claims; and (2) select a nonaqueous solvent system so as to arrive at the claimed
composition.@ Brief, pages 7-8. We disagree. We find that Ramin's disclosure of the
use of guar gum as a rheological agent and references indicating that guar gum is
typically used in an aqueous system, to be of no consequence in rebuttal to the
examiner's rejection. In our view, the examiner provides adequate evidence of a
motivation to combine the cited references, particularly in view of Commander's
disclosure of the use of ethyl guar as a thickener or rheological agent for use with
organic solvents which would have
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reasonably appeared to one of ordinary skill in the art to be readily substituted for the
rheological agent in the composition of Ramin which comprises an organic solvent. In
our view, the examiner has provided evidence of the requisite motivation to combine the
cited references to arrive at the exact same composition, having the attendant
properties, as that claimed.
Finally, appellant argues that the examiner misapplies the doctrine of inherency
and the doctrine of intended use with respect to the claim limitation that the
Acomposition forms a shiny film when applied to a support.@ We
agree with the appellant that the recitation that the
Acomposition forms a shiny film when applied to a support@ is a
recited feature of the claim and should not be characterized as
an Aintended use@. We are also mindful that Aobviousness is not
inherent anticipation.@ Trintec Industries Inc. v. Top-U.S.A.
Corp., 295 F.3d 1292, 1296; 63 USPQ2d 1597, 1600 (Fed. Cir.
2002); Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025
(Fed. Cir. 1984). The legal concepts of inherent anticipation and obviousness
each have their own set of legal requirements.
For the reasons herein, we agree that the examiner has provided a prima facie
case of obviousness for claim 23, which remains unrebutted by appellant with sufficient
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evidence.

2. Claims 1-22 and 24-38 stand rejected under 35 U.S.C. ' 103 as obvious over
Clarke in combination with Ramin. We vacate this rejection and remand
the application to the examiner for further consideration.
Upon our review of the record, it would appear that Clarke
describes the use of ethyl galactomannan as a A