Ex parte SHAH

Board of Patent Appeals and Interferences

May 26, 2000

08240862 (B.P.A.I. May. 26, 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publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SNEHAL M. SHAH
__________
Appeal No. 1996-2731
Application 08/240,862
__________
ON BRIEF
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Before WILLIAM F. SMITH, SPIEGEL, and ADAMS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 3-6, 8, 9,
12, 13, 17, 18 and 21-23, all the claims pending in the application. Claim 21 is
representative of the subject matter on appeal and reads as follows:
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Application No. 08/240,862
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21. A water-based hair preparation containing as its essential cosmetically
active ingredients from about 78.1 to about 60.6 weight percent of hydrolyzed wheat
protein and wheat oligosaccharide, from about 6.3 to about 12.1 weight percent of wheat
amino acids, from 15.6 to about 24.3 weight percent panthenol; and from about 0 to about
3 weight percent of panthenyl ethyl ether.
The references relied upon by the examiner are:
Maes et al. (Maes) 4,705,681 Nov. 10, 1987
Syed et al. (Syed) 5,348,737 Sep. 20, 1994
(filed July 21, 1993)
BROOKS INDUSTRIES inc. (Brooks), Cosmetic Ingredients & Ideas®, “PLANT
PROTEINS, Versatile Alternative Cosmetic Grade Proteins”, (Spring 1992).
GROUNDS OF REJECTION ON APPEAL
Initially, we note that the issue of whether the examiner properly required appellant to
cancel “new matter” from the specification relates to a petitionable matter and not to an
appealable matter. See, In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971),
see also, MPEP § 1002.02(c), item 3(b). Accordingly, we will not review this issue raised
by appellant on pages 5-7 of the brief. We further note the examiner’s statement at page 4
of the Examiner’s Answer (Paper No. 12, mailed September 25, 1995), “[c]laim 13 is
allowable of the prior art of record. Claims 17 and 18 are objected to as being dependent
upon a rejected base claim.” Therefore, we will not address claims 13, 17 and 18. In
addition, we note that the examiner withdrew the final rejection of claims 1-18 under 35
U.S.C. § 112, first paragraph, as the disclosure is enabling only for claims limited to the
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Application No. 08/240,862
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components and concentrations listed on page 9 and Table I of the specification. The
examiner also withdrew the final rejection of claims 1-18 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention with respect to the phrases “[a]ctive
ingredients” and “consisting essentially of”. See, Examiner’s Answer (Paper No. 12,
mailed September 25, 1995), page 3. The remaining issue on appeal is the rejection of
claims 3, 5, 6, 8, 9, 12 and 21-23 under 35 U.S.C. § 103 as being unpatentable over Maes,
Brooks and Syed. We reverse.
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, and to the respective positions articulated by the
appellant and the examiner. We make reference to the Examiner’s Answer for the
examiner’s reasoning in support of the rejection. We further reference appellant’s Brief
(Paper No. 11, filed September 11, 1995) for the appellant’s arguments in favor of
patentability.
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Application No. 08/240,862
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Maes teaches a water-based hair treating composition comprising 9 parts by
weight d-panthenyl ethyl ether per 1 part by weight d-panthenol. See, e.g., Maes, Column
2, Table 1, and claim 1. The examiner recognizes on page 3A1 of the Examiner’s Answer,
that “Maes fails to teach the inclusion of the claimed wheat components.” To make up for
the deficiency in Maes, the examiner provides Brooks and Syed for their teaching of
hydrolyzed wheat protein for hair treatments. The examiner concludes in the bridging
paragraph of pages 3A-4 of the Examiner’s Answer that “[i]t is prima facie obvious to
combine two composition [sic] each of which is taught by the prior art to be useful for the
same purpose in order to form a third composition that is to be used for the very same
purpose.”
Appellant argues that the Maes formulation must contain both d-panthenyl ethyl ether
and d-panthenol in a very specific weight ratio of 9:1 panthenyl ethyl ether to panthenol.
Appellant argues that in contrast to Maes’ formulation, appellant’s invention does not
require the presence of panthenyl ethyl ether and that when panthenyl ethyl ether is present
it is at a lower concentration than panthenol. See, Brief, bridging paragraph, pages 13-14.
In addition, appellant argues, at page 14 of the Brief, that Maes teach away from
appellant’s claimed invention by disclosing the advantages of a 1:9 pantenol:pantenyl ethyl

1 We note that the Examiner’s Answer contains two pages numbered page “3”. For clarity,
we refer the first occurrence of page “3” as page 3, and the second occurrence of page “3”
as page 3A.
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ether formulation over a commercially available 7:3 pantenol:pantenyl ethyl ether
formulation.
The initial burden of establishing reasons for unpatentability rests on the examiner.
See, In re Oetiker, 977 F.2d. 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Here, the examiner has failed to state how a person having ordinary skill in the art would
have found appellant’s claimed invention obvious. The mere fact that the prior art could be
so modified would not have made the modification obvious unless the prior art suggested
the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). The examiner has not explained how a person having ordinary skill
in the art would have arrived at the composition recited in the claims on appeal in view of
the primary reference teaching away from the claimed invention. “[W]hile it may ordinarily
be the case that the determination of optimum values for the parameters of a prior art
process would be at least prima facie obvious, that conclusion depends upon what the
prior art discloses with respect to those parameters.” In re Sebek, 465 F.2d 904, 907, 175
USPQ 93, 95 (CCPA 1972). Accordingly, the examiner has failed to establish a prima
facie case of obviousness.
Having determined that the examiner has not established a prima facie case of
obviousness, we find it unnecessary to discuss appellant’s unexpected results relied upon
to rebut any such prima facie case.
Appeal No. 1996-2731
Application No. 08/240,862
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REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
CAROL A. SPIEGEL ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
DONALD E. ADAMS )
Administrative Patent Judge )
Appeal No. 1996-2731
Application No. 08/240,862
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