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Ex Parte Hossel et al - Page 8
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Board of Patent Appeals and Interferences > 2006 > Ex Parte Hossel et al - Page 8
Appeal No. 2007-0080 Page 8
Application No. 09/771,595
which exhibit a wide range of reactivity with alkaline as well as acidic
solutions, liquids, and gases.
Tanner, column 2, lines 9-17. To address these problems, Tanner describes a surface-
treated zinc oxide which shows “unexpected photostability, chemical stability, and
physical stability” when used in combination with dibenzoylmethane for skin application.
Id., column 2, lines 20-27. It is not apparent from Tanner whether surface treatment
would overcome the problems experienced with zinc oxide when utilized in another
milieu, i.e., in combination with a cationic polymer for the hair.
We further note that Appellants argue in their Brief that inorganic sunscreens
would have been considered unsuitable for a hair conditioner because they would have
been expected to leave a pigmented residue on the hair which would not have been
acceptable. Brief, page 6. Arguments of counsel cannot take the place of evidence
lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 593,
44 USPQ2d 1610 (Fed. Cir. 1997). Because these arguments were unsupported by
evidence, we did not consider them in reaching our decision.
In sum, we do not find that the Examiner has met her burden in establishing that
the skilled worker would have recognized that zinc oxide would be a suitable sunscreen
block for hair. To put this in terms of the teaching, suggestion, motivation test4 which
has been used by the Federal Circuit to determine obviousness, there is insufficient
evidence to establish that the skilled worker would have been motivated with a
reasonable expectation of success to have modified Dieing by the addition of a UV filter
as taught by Tanner. Accordingly, we reverse the rejection.
4 DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 80 USPQ2d 1641
(Fed. Cir. 2006).
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Last modified: November 3, 2007
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