Ex parte SATO

Board of Patent Appeals and Interferences

Jul 17, 2000

08031596 (B.P.A.I. Jul. 17, 2000)

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publication in a law journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NOBUMASA SATO
__________
Appeal No. 1996-3213
Application 08/031,596
__________
ON BRIEF
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Before William F. Smith, Lorin, and Mills, Administrative Patent Judges.
William F. Smith, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims
1 through 9, all the claims remaining in the application.
Claim 1 is representative of the subject matter on appeal and reads as
follows:
A lipcolor composition comprising (a) at least one metal compound selected
from the group consisting of salts of divalent and trivalent metals and
hydroxides of divalent and trivalent metals, and (b) a water-soluble salt of
alginic acid, and wherein the composition further comprises (c) at least
Appeal No. 1996-3213
Application 08/031,596
Our consideration of this Japanese language document has been based upon an1
English language translation thereof. A copy of the translation is attached to this
opinion.
2
one red or orange lake color with aluminum, barium or zirconium having a
COONa or COOK group in its structure and (d) an oil component having
appearance of liquid at a temperature of 20 EC.
The reference relied upon by the examiner is:
Japanese Kokai (Sato) 1[1989]-96111 April 14, 1989 1
Claims 1 through 9 stand rejected under 35 U.S. C. § 103. As evidence of
obviousness, the examiner relies upon Sato. We reverse.
Discussion
In relevant part, the lipcolor composition in claim 1 on appeal requires the
presence of at least one red or orange lake color with aluminum, barium or
zirconium having a COONa or COOK group, i.e., a sodium or potassium salt. Sato
describes a lipcolor composition which may broadly contain a “pigment.” See page
6, second full paragraph of the translation. In an example of a rouge according to
the invention of Sato, pigments described as “red 202” and “yellow 4 aluminum
lake” are used. See page 8 of the translation.
At page 3 of the Examiner’s Answer, the examiner refers us to paragraph 16
of the Office action mailed February 28, 1994 for a statement of the rejection.
Turning to that section of the Office action, we find the examiner’s position to be that
Sato “does not disclose a red or orange lake, it discloses a yellow lake. It would
Appeal No. 1996-3213
Application 08/031,596
3
have been obvious . . . to use any color combination of lakes to achieve a desired
lipcolor.”
While the examiner is, no doubt, correct in determining that cosmetics such
as lipcolors may be provided in a variety of colors, the difficulty with the examiner’s
position is that the claims on appeal do not require just any color. Rather, they
require specific sodium or potassium salts of red or orange lake colors with
aluminum, barium or zirconium. Simply put, Sato does not describe or suggest the
specific color compounds required by claim 1 on appeal. A conclusion of
obviousness must be based upon the subject of a claim as a whole. 35 U.S.C. §
103(a). Here, the examiner has not focused on the precise subject matter required
by claim 1 on appeal. As a result, the examiner has not addressed the key question
as to whether the colors required by claim 1 on appeal were in fact available in the
prior art. Where as here the examiner’s determination of the obviousness is based
upon less than the claimed subject matter as a whole, the determination is legally
incorrect and must be reversed.
The examiner’s rejection is reversed.
Other Issues
We note that appellant admits at page 4, lines 13-22 of the specification that
the specific colors required by claim 1 on appeal are known. However, the
specification does not indicate that these colors were known to be useful in
cosmetic compositions at the time of the present invention.
Appeal No. 1996-3213
Application 08/031,596
4
Upon return of the application, we urge appellant and the examiner to make
of record the relevant prior art knowledge concerning these known colors and
particularly their uses. Once that knowledge is made of record, appellant and the
examiner will be in a position to determine whether that prior art knowledge in
combination with Sato or other relevant prior art would have rendered the subject
matter as a whole of any claim on appeal obvious to one of ordinary skill in the art.
The decision of the examiner is reversed.
REVERSED
)
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Hubert C. Lorin )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Demetra J. Mills )
Administrative Patent Judge )
WFS/cam
Appeal No. 1996-3213
Application 08/031,596
5
Gerald Levy
Kane, Dalsimer, Sullivan, Kurucz,
Levy, Eisele and Richard
711 3 Avenuerd
New York, NY 10017-4059