Mark Benn et al.

Patent Trials and Appeals Board

Dec 30, 2019

14243494 - (D) (P.T.A.B. Dec. 30, 2019)

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.
14/243,494 04/02/2014 Mark BENN 085137-545913 8114
30678 7590 12/30/2019
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
12/30/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK BENN and MICHAEL DEGEORGE
____________

Appeal 2018-002227
Application 14/243,4941
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.

COTTA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
powder composition. The Examiner rejected the claims on appeal under
35 U.S.C. § 112 as indefinite and under 35 U.S.C. § 103(a) as obvious.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
L’Oreal. Appeal Br. 2.

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STATEMENT OF THE CASE
The Specification discloses that “there is an increasing demand for the
hair care products referred to as ‘hair relaxers’ or ‘hair straighteners’ which
can relax or straighten curly or kinky hair, including wavy hair.” Spec. ¶ 3.
“One type of composition that can be applied onto hair in order to change its
shape and make it more manageable is an alkaline composition.” Id. ¶ 4.
One type of alkaline composition is a “no-lye composition” which “employs
guanidine hydroxide as the active agent for straightening or relaxing hair.”
Id. ¶ 5. “Guanidine hydroxide is unstable and therefore, most commercial
products of this type are based on a two-component system containing a first
composition comprising a hydroxide-based compound such as calcium
hydroxide and a second composition comprising a carbonate compound such
as guanidine carbonate.” Id. According to the Specification, “[t]he two
compositions are mixed prior to relaxing or straightening the hair in order to
produce a compound such as guanidine hydroxide that would effectively
straighten or relax the hair.” Id.
The Specification discloses that “[t]raditionally, alkaline hair
relaxing/straightening products are commercially available in liquid, lotion
or cream form in order to facilitate their application onto hair.” Id. ¶ 6.
Such products “should have a viscosity such that they do not run or drip
when applied . . . so as to avoid contacting the skin . . . and . . . ensure the
deposition of the alkaline agents onto the hair fibers.” Id. This presents
formulation challenges in two component no-lye formulations, as well as
challenges with packaging and transport. Id. In addition, the Specification
discloses that there is a need for “hair relaxing and straightening products
that are readily available and easy and convenient for the consumer to use,
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store, and travel with, as well as provide cost savings to the manufacturer in
terms of processing, storage space and transport.” Id. ¶ 7. The Specification
thus concludes that “it would be desirable to formulate a hydroxide-based
compound and a carbonate compound into single composition wherein these
two ingredients remain unreacted until the composition is ready to be used to
relax or straighten hair.” Id. ¶ 8.
The Specification states: “The present invention provides a
composition in the form of a powder and method for relaxing/straightening
hair in an easy, convenient manner, while remaining efficacious.” Id. ¶ 9.
According to the Specification, it was “surprisingly and unexpectedly
discovered that by combining a starch, a silica material, a liquid fatty
substance, an acrylic polymer, wax, and a chelant compound with an
alkaline material comprising a hydroxide-containing compound and a
carbonate compound, a . . . powder composition that can be used for relaxing
or straightening hair was achieved.” Id. ¶ 10. The Specification also states
that when this powdered composition was mixed with an aqueous
composition, it was “surprisingly and unexpectedly discovered” that a
“ready to use composition having a pH required for effectively relaxing or
straightening hair” having a “viscosity which corresponds to a thick, creamy
and homogeneous consistency that facilitates the ease of application” was
obtained. Id. ¶ 11.
Claims 1–24, 26–29, and 31 are on appeal. Claim 1 is representative
and reads as follows:
1. A powder composition comprising:
(a) from about 8% to about 30% by weight of at least one
hydroxide-containing compound selected from the group
consisting of alkali metal hydroxides, alkaline-earth metal
hydroxides, and mixtures thereof;
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(b) from about 8% to about 30% by weight of at least one
carbonate compound selected from the group consisting of
lithium carbonate, sodium carbonate, potassium carbonate,
guanidine carbonate, and mixtures thereof;
(c) from about 1% to about 12% by weight of at least one
starch;
(d) from about 0.1 % to about 20% by weight of at least
one silica material;
(e) from about 20% to about 50% by weight of at least
one liquid fatty substance selected from the group consisting of
a C6-C16 alkane, a non-silicone oils of plant, mineral or
synthetic origin, a liquid fatty alcohol, a liquid fatty acid, a
liquid ester of a fatty acid and/or of a fatty alcohol, and a
mixture thereof;
(f) from about 0.5% to about 5% by weight of at least one
acrylic polymer;
(g) from about 0.5% to about 10% by weight of at least
one wax; and
(h) from about 0.5% to about 5% by weight of at least
one chelant compound;
all weights above being based on the total weight of the
powder composition.

Appeal Br. 22.
The claims stand rejected as follows:2
Claims 23 and 28 were rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to point out and distinctly claim the
subject matter the inventors regard as the invention.

2 In the Examiner’s Answer, the Examiner withdrew the provisional
rejections of claims 1–9, 11–24, 26–29, and 31 under the doctrine of
obviousness-type double patenting over the claims of co-pending
Application No. 14/243,466 and over the claims of co-pending Application
No. 14/243,522. Ans. 3.
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Claims 1–3, 5–9, 11–24, 26–29, and 31 were rejected under 35 U.S.C.
§ 103 as obvious over the combination of Legrand3 and Caskey.4
Claims 1–7, 11–24, 26–29, and 31 were rejected under 35 U.S.C.
§ 103 as obvious over the combination of Legrand, Matsunaga, and Welz.5
Claims 1–3, 5–24, 26–29, and 31 were rejected under 35 U.S.C. § 103
as obvious over the combination of Legrand, Caskey, and Matsunaga.6
INDEFINITENESS
Claims 23 and 28 each require that the claimed composition have a
viscosity of “from about 50 uD to about 120 uD.” The Examiner found
these claims were indefinite “because they recite the undefined term ‘uD.’”
Ans. 3. Appellant argues that paragraph 316 of the Specification “describes
how the viscosity is measured and defines the term ‘uD’ (units of
deflection).” Appeal Br. 12. We find that the Examiner has the better
position.
Paragraph 316, in its entirety, states:
Viscosity was measured using the Mettler RM 180 Rheomat
spindle #3 at 25°C (uD = Units of Deflection).
Spec. ¶ 316. We acknowledge that paragraph 316 defines “uD” and
specifies equipment on which “uD” can be measured. However, Appellant
has not identified persuasive evidence that the ordinary artisan would have
understood a “unit of deflection” to correspond to a specific quantified

3 Legrand, US Patent No. 6,444,197 B2, issued Sept. 3, 2002 (“Legrand”).
4 Caskey, US Patent No. 5,575,989, issued Nov. 19, 1996 (“Caskey”).
5 Welz et al., US Patent Publication No. 2012/0009134 A1, published Jan.
12, 2012 (“Welz”).
6 Matsunaga, US Patent No. 6,878,169 B2, issued Apr. 12, 2005
(“Matsunaga”).
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amount of deflection. The definition of “uD” provided in the Specification
appears, on its face, to simply identify a generic category of measurement.
Absent identification of a specific quantified amount of deflection known to
correspond to a “unit,” the claimed range lacks meaning. The problem is
analogous to, for example, claiming a structure of “50–120 units of length”
without specifying whether the units of length should be measured in
millimeters, centimeters, inches, etc. Accordingly, we affirm the
Examiner’s rejection of claims 23 and 28 as indefinite.
OBVIOUSNESS OVER LEGRAND AND CASKEY
Claims 1–3, 5–9, 11–22, 24, 26, 27, 29, and 31
Appellant argues claims 1–3, 5–9, 11–22, 24, 26, 27, 29, and 31
together. We designate claim 1 as representative.
Legrand discloses “a composition for bleaching keratin fibers, for
example, human keratin fibers such as the hair, comprising at least one
oxidizing agent and at least on combination of two specific polyurethane
polyethers.” Legrand, 1:5–9. The Examiner found that Legrand disclosed
all of the elements of claim 1, although not all within the same composition.
To arrive at the claimed composition, the Examiner started with Example 1
of Legrand, which discloses a bleaching composition including an
anhydrous portion and an aqueous portion. The anhydrous portion of
Example 1 is reproduced below.
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Id. at 22:33–45.
With respect to claim elements 1(a) and 1(b), the Examiner found that
Legrand taught the “inclusion of sodium hydroxide, potassium hydroxide[,
and] alkali metal carbonates” for use in its inventive composition. Ans. 7.
The Examiner found that the genus of alkali metals was relative small –
comprised of only six elements – and thus the ordinary artisan would
“immediately envisage lithium carbonate, sodium carbonate[,] and
potassium carbonate for inclusion in LEGRAND’s invention as alkali metal
carbonates.” Id. The Examiner concluded that it would have been obvious
to substitute the claimed amounts of sodium or potassium hydroxide (as
required by element 1(a)), and lithium, sodium, or potassium carbonate (as
required by element 1(b)) for the ammonium chloride and sodium
metasilicate disclosed in Legrand’s Example 1. Id. at 8. The Examiner
reasoned the ordinary artisan would have reason to make this substitution
because all of these compounds are identified in Legrand as basifying agents
and because Example 1 of Legrand discloses using ammonium chloride and
sodium metasilicate in an amount comprising 16% of the composition. Ans.
8; see also, Legrand, 20:59–68, 22:30–50.
With respect to claim element 1(c), the Examiner found that Aculyn
46, one of the components of Legrand’s Example 1 is taught to comprise 4%
maltodextrine. Ans. 4. The Examiner further found that Legrand taught that
“polyether (a) (i.e. Aculyn 46) generally comprise 5% of the composition.”
Id. The Examiner then concluded that the “adjustment of particular
conventional working conditions (e.g. determining result effective amounts
of polyether(a) in a matrix of maltodextrin) is routine optimization which is
within the skill of the ordinary artisan.” Id. at 4–5.
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With respect to claim element 1(d), the Examiner found that Legrand
disclosed both silica and titanium oxides as additives. Id. at 5 (citing
Legrand claim 50). From this, the Examiner concluded that it would have
been obvious to have substituted “2% silica for the 2% titanium dioxide” in
Legrand’s Example 1 because “silica and titanium dioxide are both fillers
suitable for use in the compositions of [Legrand’s] invention.” Id.
With respect to claim element 1(e), the Examiner found that Legrand
taught that the anhydrous composition “may comprise at least one additive .
. . in an amount of 0–30% by weight” which “may be mineral and synthetic
waxes and oils.” Id. at 6. The Examiner also noted that mineral oil is
disclosed “as a medium to disperse some particular polymers.” Id. at 6–7.
The Examiner then concluded that it would have been obvious to use such
oils in the amount claimed because the claimed range overlaps with the
range disclosed in Legrand.
With respect to claim element 1(f), the Examiner found that Legrand
taught that “Pemulen TRl and TR2 (i.e. acrylates C10-30 alkyl acrylate
crosspolymer) and Aculyn 44 and 46 may be present as additional
thickeners.” Ans. 6. The Examiner noted that Aculyn 46 is present in
Example 1 in an amount of 1.2%. Id. The Examiner then concludes that it
would have been obvious to “have looked to LEGRAND’s teachings and
added 1.2% acrylates C10-30 alkyl acrylate crosspolymer to the anhydrous
powder because acrylates C10-30 alkyl acrylate crosspolymer (i.e. Pemulen
TRl and TR2) and Aculyn 46 are both thickening agents suitable for use in
the compositions of LEGRAND’s invention.” Id.
With respect to claim element 1(g), the Examiner found that Example
1 of Legrand disclosed 2% calcium stearate, which met the claim
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requirement that the composition comprise 0.5–10% of at least one wax. Id.
at 5.
With respect to claim element 1(h), the Examiner found that Example
1 of Legrand disclosed 1% ethylenediaminetetraacetic acid, which met the
claim requirement that the composition comprise 0.5–5% of at least one
chelant compound. Id.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4–9, 12–18; Final Act. 5–12) and
agree that the claims would have been obvious over the combination of
Legrand and Caskey. We address Appellant’s arguments below.
Appellant argues that the Examiner “relies on multiple lists of
optional components set forth in Legrand, picks out the claimed components
from these lists, and simply lumps the claimed components together to
recreate what is claimed” without “set[ting] forth reasons for the selections.”
Appeal Br. 12–13. Appellant contends that “none of the claimed
components are actually required in the compositions of Legrand – they are
all described as optional” and points out that “that merely pointing to the
presence of all claim elements in the prior art is not a complete statement of
a rejection for obviousness.” Id. at 13 (citing Examination Guidelines
Update: Development in the Obviousness Inquiry After KSR v. Teleflex, 75
Fed. Reg. 53643,, 53647 (September 1, 2010)). We are not persuaded.
Claim elements 1(c), 1(g) and 1(h) are present in the composition of
Legrand’s Example 1.7 With respect to the other claim elements, the

7 Claim element 1(c) is present in the composition of Legrand’s
Example 1 because Aculyn 46 includes maltodextrine. In addition,
Legrand discloses that polyurethane ployether (a), which Legrand
teaches is a component of its bleaching composition (Legrand 2:5–
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Examiner has identified specific reasons to modify the composition of
Legrand’s Example 1 to arrive at the claimed composition. Ans. 4–8, 13–
14. In particular, the Examiner found that Legrand disclosed that sodium
hydroxide, potassium hydroxide and alkaline-earth metal carbonate,
ammonium chloride, and sodium metasilicate were functionally equivalent
basifying agents (Ans. 7–8, 13–14), and that silica and titanium dioxide were
functionally equivalent fillers. Ans. 5, 13–14. The record supports this
determination. Legrand, 20:59–67; 26:47–51. This provides reason to
substitute the claim elements 1(a), 1(b), and 1(d) for the ammonium
chloride, sodium metasilicate, and titanium dioxide in the composition of
Legrand’s Example 1.
The Examiner also found that Legrand taught that its compositions
may include additives such as mineral oil, and that its compositions may
include additional thickeners, such as Pemulen TR1 and TR2 and Aculyn 44
and 46. Ans. 6–7. The record supports this determination. Legrand 20:38–
56, 21:46–53, 26:39–45. This provides reason to include claim elements
1(e) and 1(f) in the composition of Legrand’s Example 1. In addition, the
Examiner finds additional reason to include mineral oil in Legrand’s
teaching that mineral oil was used as a medium to disperse polymers (see,
Legrand, 11:60) and in the knowledge of the ordinary artisan that mineral oil
was an emollient and humectant. Ans. 6–7.
The Examiner’s obviousness conclusion here is consistent with
Wrigley, where the Federal Circuit found a “strong case of obviousness”
where the claim at issue “recite[d] a combination of elements that were all

23), also includes Aculyn 46. Legrand 2:38–56.

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known in the prior art, and all that was required to obtain that combination
was to substitute one well-known . . . agent for another.” Wm. Wrigley Jr.
Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012); see
also, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result”); Merck & Co., v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
discloses a multitude of effective combinations does not render any
particular formulation less obvious.”); In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980) (“It is prima facie obvious to combine two compositions each
of which is taught by the prior art to be useful for the same purpose, in order
to form a third composition which is to be used for the very same purpose.”).
Appellant argues that unexpected results demonstrate that the claimed
composition is not obvious. Appeal Br. 17. As support, Appellant compares
a composition falling within the scope of the claims to three commercially
available comparative compositions. Id. at 17–18. “The viscosities and pH
values for the comparative commercial compositions and the inventive
composition[] were measured at room temperature over various time points
in order to determine how the viscosity and pH changed over a period of 60
minutes with constant mixing.” Id. at 17. Appellant contends that the
results “show that the change in viscosity over time for the inventive
formulation was surprisingly small (4.78% change) compared to the change
in viscosities over time for the commercial, comparative compositions (43%,
36.2% and 45.3%).” Id. at 18. In addition, Appellant contends that the “pH
of the inventive formulation was maintained, thereby showing that the
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inventive formulation retains its viscosity without losing alkalinity.” Id. We
are not persuaded.
As the Examiner points out, claim 1 is drawn to a powder composition
and does not recite any limitations pertaining to water or other solvents.
Ans. 17. The composition on which Appellant relied to demonstrate
unexpected results mixed the allegedly inventive composition with a 1:3
ratio of water. As Appellant has not directed us to persuasive evidence that
the allegedly unexpected results would extend to mixtures with other
amounts of water, we agree with the Examiner that the results are not
commensurate with the scope of the claims.
In addition, claim 1 encompasses a range of amounts for each of
components 1(a)–1(h), and each of these components describes a genus
which could be met by multiple different components. In contrast, the
composition Appellant relies on as evidence that the claimed composition
exhibits unexpected results is limited to specific amount of specific species
falling within the claimed ranges and within the claimed genera. Appellant
does not direct us to persuasive evidence that these specific amounts and
specific species are representative of the full scope of possible components
falling within the scope of the claim. For this additional reason, we agree
with the Examiner that the results are not commensurate with the scope of
the claims.
Finally, we agree with the Examiner that Appellant has not compared
the claimed composition to the closest prior art – the composition of
Legrand. Appellant argues that the comparative examples it provided were
“more applicable to what is claimed than the compositions of Legrand”
because they “include a claimed hydroxide containing component
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(component (a) of the claims), which is a critical element of the instant
case.” Appeal Br. 19. We are not persuaded because Appellant has not
directed us to persuasive evidence that the hydroxide containing component
is critical. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir.
1989) (“Attorneys’ argument is no substitute for evidence.”); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974). Moreover, we note that the comparative
examples do, in fact, include hydroxide containing components, albeit not in
the amounts claimed. Spec. 63 (identifying comparative compositions 5–7
as including calcium hydroxide or sodium hydroxide).
Accordingly, we affirm the Examiner’s rejection of claim 1. Because
they were not argued separately, claims 1–3, 5–9, 11–22, 24, 26, 27, 29, and
31 fall with claim 1.
Claims 23 and 28
Claims 23 and 28 each require that the claimed composition have a
viscosity of “from about 50 uD to about 120 uD.” The Examiner finds that
Legrand teaches the composition of Legrand “necessarily has the recited
viscosity because: ‘[p]roducts of identical chemical composition cannot have
mutually exclusive properties.’” Ans. 8 (citing In re Spada, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990)). Appellant argues that the Examiner
“improperly relies on inherency to account for the claimed viscosity.”
Appeal Br. 15. According to Appellant, because “Legrand does not describe
an ‘identical chemical composition’ (i.e., a composition containing each of
the claimed components) reliance on inherency is legal error.” Id. at 15. We
find that Appellant has the better position.
The Federal Circuit has recognized that “inherency may supply a
missing claim limitation in an obviousness analysis.” PAR Pharm., Inc. v.
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TWI Pharm., Inc., 773 F.3d 1186, 1194—95 (Fed. Cir. 2014). However,
“the concept of inherency must be limited when applied to obviousness, and
is present only when the limitation at issue is the ‘natural result’ of the
combination of prior art elements.” Id. at 1195 (citation omitted). Here, in
contesting Appellant’s showing of unexpected results, the Examiner asserted
that evidence showing that a single composition falling within the scope of
claim 1 retained its viscosity did not establish unexpected results because it
was not commensurate with the scope of claims encompassing several
different genera of components present in a range of amounts. This
argument suggests that the claimed viscosity may not be the natural result of
producing a composition falling within the scope of the claims.
The Examiner contends that Legrand teaches “Appellant’s preferred
species of non-starch, non-acrylic polymers” and that Appellant’s
Specification “links [these] . . . polymer[s] to viscosity and thickening.”
Ans. 14–15. We agree with the Examiner that Appellant’s Specification
suggests that these polymers could be used to modify viscosity. See, Spec.
¶ 226. However, claims 23 and 28 do not require a non-starch, non-acrylic
polymer, and the Examiner does not direct us to persuasive evidence linking
the amount of these viscosity modifying polymers taught to be present in
Legrand – 0.05% to 10% (see, Legrand, 25:58–67) – with the claimed
viscosity.
However, because we affirmed the rejection of claims 23 and 28 as
indefinite, we reverse, pro forma, the Examiner’s prior art rejection here
because the claims are not sufficiently definite to allow determination of
whether the prior art renders the claims obvious.
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We therefore reverse the rejection over claims 23 and 28 consistent
with In re Steele because “substantial confusion exists in the record at all
levels of the prosecution as to the proper interpretation to be given to the
appealed claims. We believe that this confusion arose and has continued
because the claims do not particularly point out and distinctly claim the
invention as required by 35 U.S.C. § 112.” In re Steele, 305 F.2d 859, 863
(CCPA 1962). “Our decision is not to be construed as meaning that we
consider the claims on appeal to be patentable as presently drawn.” Id.
OBVIOUSNESS OVER LEGRAND, MATSUNAGA, AND WELZ
In rejecting claims 1–7, 11–24, 26–29, and 31 over the combination of
Legrand, Caskey, Matsunaga, and Welz, the Examiner applied the Legrand
as discussed above. Ans. 9. The Examiner relied upon Matsunaga and Welz
to address the additional limitation recited in dependent claim 4 requiring
that “the hydroxide-containing compound is calcium hydroxide and the
carbonate compound is guanidine carbonate.” Id. at 10. The Examiner
found that Matsunaga disclosed that “guanidine carbonate and hydroxide
salts are alkali agents for use in hair dye compositions” and Welz disclosed
that “potassium hydroxide, sodium hydroxide and calcium hydroxide are all
preferred inorganic alkalizing agents for use in her [hair bleaching]
composition.” Id. The Examiner concluded that it would have been obvious
to have modified Legrand’s hair bleach powder by “substituting
LEGRAND’s potassium and sodium hydroxide salts with calcium hydroxide
as suggested by WELZ and substituting LEGRAND’S alkali metal
carbonates with guanidine carbonate as suggested by MATSUNAGA
because LEGRAND, MATSUNAGA and WELZ are [all] directed to
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compositions which permanently modify the color of hair through use of
alkali reagents.” Id.
Appellant argues that “the Examiner has not articulated any reason for
picking out the specific elements from Matsunaga and Welz.” Appeal Br.
20. We are not persuaded because, as discussed above, the Examiner
articulates a reason to use the elements taught by Matsunaga and Welz.
Namely, the Examiner explains that Matsunaga and Welz disclose that
calcium hydroxide and guanidine carbonate are alkali agents useful for
modifying hair color. This provides reason to substitute calcium hydroxide
and guanidine carbonate for the alkali agents taught by Legrand to be useful
for modifying hair color. KSR, 550 U.S. at 416 (“[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”). Accordingly, we affirm the
Examiner’s rejection of claims 1–7, 11–22, 24, 26, 27, 29, and 31 over the
combination of Legrand, Matsunaga, and Welz for the reasons discussed
above.
The Examiner does not rely on Matsunaga or Welz to address the
deficiencies with respect to the viscosity limitations discussed above.
Accordingly, we reverse the Examiner’s rejection of claims 23 and 28 for
the reasons discussed above.
OBVIOUSNESS OVER LEGRAND, CASKEY, AND MATSUNAGA
In rejecting claims 1–3, 5–24, 26–29, and 31 as obvious over the
combination of Legrand, Caskey, and Matsunaga, the Examiner applied
Legrand and Caskey as discussed above. Ans. 11. The Examiner relied
upon Matsunaga to address the additional limitation recited in claim 10
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requiring that “the one or more carbonate compounds comprises guanidine
carbonate.” Id. The Examiner found that Matsunaga rendered this
additional limitation obvious for much the same reasons as discussed above
in connection with the rejection over Legrand, Matsunaga, and Welz. Id.
Appellant does not separately argue this rejection, but argues that this
rejection should be reversed for the same reasons the rejection over the
combination of Legrand and Caskey and the rejection over the combination
of Legrand, Matsunaga, and Welz should be reversed. Reply Br. 2 n. 1.
Accordingly, we affirm the Examiner’s rejection of claims 1–3, 5–22, 24,
26, 27, 29, and 31 as obvious over the combination of Legrand, Caskey, and
Matsunaga for the reasons discussed above.
The Examiner does not rely on Caskey or Matsunaga to address the
deficiencies with respect to the viscosity limitations discussed above.
Accordingly, we reverse the Examiner’s rejection of claims 23 and 28 for
the reasons also discussed above.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
23, 28 112 Indefiniteness

23, 28
1–3, 5–9, 11–24,
26–29, 31
103(a) Legrand, Caskey

1–3, 5–9, 11–
22, 24, 26, 27,
29, 31
23, 28
1–7, 11–24, 26–
29, 31
103(a) Legrand,
Matsunaga, Welz
1–7, 11–22,
24, 26, 27, 29,
31
23, 28
1–3, 5–24, 26–29,
31
103(a) Legrand, Caskey,
Matsunaga
1–3, 5–22, 24,
26, 27, 29, 31
23, 28
Overall Outcome 1–24, 26–29,
31

AFFIRMED