Appeal No. 2005-0241
Application No. 09/904,831
proposed by the [e]xaminer by adding, as a thickener to its
hair dyeing compositions, cetyl-modified hydoxyethyl
cellulose.” Brief, page 8.
We are unpersuaded by appellants’ position that
because the thickening agents are taught in column 8,
whereas the composition being used for hair dyeing is
taught in column 9, that using a thickener in combination
with an oxidative dye composition is therefore not
suggested by Dubief. One of ordinary skill in the art
would have evaluated Dubief’s disclosure as a whole,
because a prior art disclosure is not limited to its
working examples or to its preferred embodiments. Merck &
Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807, 10
USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi,
681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (CCPA 1982);
In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA
1976); In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966).
On page 8 of the brief, appellants also argue that the
thickening agents of Dubief are disclosed via a series of
laundry lists. Appellants argue that NATROSOL PLUSŪ
appears in one such laundry list and there is nothing in
Dubief that would have motivated one of ordinary skill to
use any particular thickener with any given composition.
Appellants conclude that thus, to choose one from among the
extensive laundry lists is not suggested by Dubief. We
disagree. The limited selection taught in Dubief does not
rise to the level, for example, as discussed in In re
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