Ex Parte Elliott et al

Board of Patent Appeals and Interferences

Jan 12, 2012

10592221 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REBECCA JUSTINE ELLIOTT,
ANAND RAMCHANDRA MAHADESHWAR,
BRODYCK JAMES LACHLAN ROYLES,
and LAXMIKANT TIWARI
____________

Appeal 2011-009802
Application 10/592,221
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1 and 4-10 (App.
Br. 5; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of straightening hair. Claim 1 is
representative and is reproduced in the “CLAIMS APPENDIX” of
Appellants‟ Brief (App. Br. 17).

Appeal 2011-009802
Application 10/592,221

2
Claims 1, 4-6, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yui,
1
Patel,
2
and Yu.
3,4

Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yui, Patel, Yu, and Vermeer.
5

We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellants‟ claimed method requires, inter alia, that a composition
comprising gluconolactone, a cationic surfactant, and water be applied to
and then rinsed from the hair up to 30 minutes after application (Claim 1).
6

FF 2. The Examiner finds that Yui‟s suggestion to “apply[] mist to the hair
at application . . . satisfies the instant limitation of „rinsing the hair up to 30
minutes after application‟” (Ans. 13).
FF 3. The Examiner fails to identify a suggestion in any of Patel, Yu, or
Vermeer of rinsing a hair care composition from the hair up to 30 minutes
after application.

1
Yui et al., US 5,747,016, issued May 5, 1998.
2
Patel et al., US 4,911,919, issued March 27, 1990.
3
Yu et al., US 5,547,988, issued August 20, 1996.
4
The Examiner incorrectly included canceled claim 3 in the statement of the
rejection (Ans. 3; Cf. August 31, 2010 After Final Amendment 4 (“Claim 3
has been cancelled without prejudice”)).
5
Vermeer, US 5,641,480, issued June 24, 1997.
6
Claims 4-6, 9, and 10 depend directly or indirection from claim 1.
Appeal 2011-009802
Application 10/592,221

3
ANALYSIS
Appellants contend that Yui‟s compositions “are formulated as leave-
on, not rinse-off compositions” and nothing in Yui suggests that the
compositions “are rinsed from hair up to 30 minutes after application” (App.
Br. 12). We agree. The Examiner failed to establish an evidentiary basis on
this record that supports the Examiner‟s conclusion that misting hair is
equivalent to rinsing a composition from the hair as required by Appellants‟
claimed invention (see FF 1; Cf. FF 2). See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 1, 4-6, 9, and 10 under
35 U.S.C. § 103(a) as unpatentable over the combination of Yui, Patel, and
Yu is reversed. The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yui, Patel, Yu, and Vermeer is
reversed.
REVERSED

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