Appeal No. 1997-4101
Application 08/425,802
composition to hair. See, e.g., column 1, lines 58-column 2, line 24 and column 7, lines 8-
10. In our view, Bolich anticipates claim 1 since it describes the two positive manipulative
steps required by that claim. While Bolich does not explicitly state that the purpose of
performing the method of that reference is for the “temporary shaping of keratin fibers” or
that the guar gum is “a shaping or shape retaining agent,” it has long been held that
“merely discovering and claiming a new benefit of an old process cannot render the
process again patentable.” In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990). As indicated in In re May, 574 F.2d 1082,
1089, 197 USPQ 601, 607 (CCPA 1978), our determination that Bolich anticipates claim
1 is not a new ground of rejection since anticipation is the epitome of obviousness.
2. Claims 30 through 33
Claim 30 is representative of this group. Claim 30 requires three positive
manipulative steps, i.e., applying to wet or dry keratin fibers a cosmetic composition as in
claim 1 on appeal, shaping the keratin fibers to which the cosmetic composition has been
applied and allowing the shaped keratin fibers to dry.
As set forth above, Bolich describes a cosmetic composition as required by claim
30 to hair for the purpose of shampooing. Thus, Bolich describes the first step of claim 30.
The question to be resolved is whether Bolich teaches or suggests the shaping and drying
steps set forth in claim 30.
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