Appeal No. 2001-1489 Page 8
Application No. 09/177,695
While we reach no decision on the merits of this appeal, we offer the following
comments in an effort to advance prosecution and assist the examiner in clarifying the
grounds of rejection.
Claim 1 is directed to a process for cosmetically improving human skin through a
treatment regime. At present, this claim has been rejected as obvious under 35 U.S.C.
§ 103 over Van Scott, Dutch Patent, German Patent and the Jacqueline Cochran
Advertisement. As we have stated, this rejection is not supported by substantial
evidence because not all the limitations of the claim have been addressed.
Notably, the following step has not been addressed:
instructing consumers by placing on the containers or packaging associated
therewith instructions on use of the first and second compositions in a sequential
manner to achieve the first and second benefits in a treatment regime, … .
Examiner does mention it in the “Response to Argument” section of the Examiner’s
Answer (p. 4), wherein examiner concludes that:
The instructions on the containers (printed matter) does not carry any patentable
weight, as it is within the ken of the skilled chemist to provide the instruction so that
the consumers can use it.
Suffice it to say that if, during subsequent prosecution, examiner should repeat this
statement, examiner would be improperly dismissing this step as not being a limitation
in the claim. In point of fact, the printed instructions may carry patentable weight.
Differences between an invention and the prior art against it cannot be ignored
merely because those differences reside in the content of the printed matter. [The
examiner] cannot dissect a claim, excise the printed matter from it, and declare the
remaining portion of the mutilated claim unpatentable. The claim must be read as a
whole.
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