Appeal No. 1996-2731
Application No. 08/240,862
Maes teaches a water-based hair treating composition comprising 9 parts by
weight d-panthenyl ethyl ether per 1 part by weight d-panthenol. See, e.g., Maes, Column
2, Table 1, and claim 1. The examiner recognizes on page 3A1 of the Examiner’s Answer,
that “Maes fails to teach the inclusion of the claimed wheat components.” To make up for
the deficiency in Maes, the examiner provides Brooks and Syed for their teaching of
hydrolyzed wheat protein for hair treatments. The examiner concludes in the bridging
paragraph of pages 3A-4 of the Examiner’s Answer that “[i]t is prima facie obvious to
combine two composition [sic] each of which is taught by the prior art to be useful for the
same purpose in order to form a third composition that is to be used for the very same
purpose.”
Appellant argues that the Maes formulation must contain both d-panthenyl ethyl ether
and d-panthenol in a very specific weight ratio of 9:1 panthenyl ethyl ether to panthenol.
Appellant argues that in contrast to Maes’ formulation, appellant’s invention does not
require the presence of panthenyl ethyl ether and that when panthenyl ethyl ether is present
it is at a lower concentration than panthenol. See, Brief, bridging paragraph, pages 13-14.
In addition, appellant argues, at page 14 of the Brief, that Maes teach away from
appellant’s claimed invention by disclosing the advantages of a 1:9 pantenol:pantenyl ethyl
1 We note that the Examiner’s Answer contains two pages numbered page “3”. For clarity,
we refer the first occurrence of page “3” as page 3, and the second occurrence of page “3”
as page 3A.
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