Appeal No. 2001-2397 Page 9
Application No. 08/855,779
compositions, the examiner should bear in mind the claim construction discussed
above. With regard to claims 11-41, we note that the preamble recitation of a
“shampoo,” “conditioner,” etc. limits the claimed compounds to compositions that
would be useful in the recited capacity. Thus, the preambles of claims 11-41
constitute limitations of the claims that must be considered in comparing the
claimed subject matter to the prior art.
We also note that the instant specification discloses that “hair and skin
care cosmetics” comprising “hydrophobically modified nonionic cellulose ethers”
were known in the prior art. See page 2, lines 1-9. The examiner should, of
course, consider the patentability of the instant claims in view of the prior art as a
whole. Finally, the examiner’s obviousness analysis should not be confined to
claims 11-43. These claims are ultimately dependent on claim 1, and a
conclusion that a dependent claim is obvious necessarily requires concluding
that the independent claim on which it depends is also obvious. The examiner
should consider whether any or all of the pending claims would have been
obvious in view of the prior art.
Future Proceedings
We are not authorizing a Supplemental Examiner’s Answer under 37 CFR
§ 1.193(b)(1). Ex parte Zambrano, 58 USPQ2d 1312, 1313 (Bd. Pat. App. & Int.
2001).
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