Appeal 2007-0533
Application 09/930,320
These arguments were made in Appeal 2005-1428 and are addressed in the
decision of that appeal (pages 6-7).
Appellants also argue that “Claim 1 has been further amended
responsive to the Board’s decision . . . to explicitly exclude thickening
agents that are not defined as performance agents as defined in the
specification and to further distinguish the instant invention from Rath, et
al.” (Br. 7). However, for the reasons discussed above, we conclude that the
amendment to claim 1 does not distinguish the claimed method from that
disclosed by Rath. The rejection of claim 1 as obvious in view of Rath and
Stewart is affirmed. Claims 2-5, 7-11, 13-19, 22, and 25-29 fall with claim
1.
4. REJECTION OF CLAIMS 6, 20, AND 21
Claims 6, 20, and 21 stand rejected under 35 U.S.C. § 103 as obvious
in view of Rath, Stewart, and Rigg. As discussed above, claim 6 adds to
claim 1 the requirement that a label is affixed to the container that identifies
the components of the composition. The Examiner relies on Rigg for
teaching “a customized cosmetic composition in a container having a bar
code label for identifying the customized composition” (Answer 7).
We agree with the Examiner that the cited references support a prima
facie case of obviousness. The only limitations added by claim 6 to claim 1
relate to the contents of a printed label. However, where the difference
between a claimed invention and the prior art consists of the content of
printed matter, the printed matter must create a “new and unobvious
functional relationship” in order to patentably distinguish the claimed
product from the prior art. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013