Appeal No. 1996-3213
Application 08/031,596
have been obvious . . . to use any color combination of lakes to achieve a desired
lipcolor.”
While the examiner is, no doubt, correct in determining that cosmetics such
as lipcolors may be provided in a variety of colors, the difficulty with the examiner’s
position is that the claims on appeal do not require just any color. Rather, they
require specific sodium or potassium salts of red or orange lake colors with
aluminum, barium or zirconium. Simply put, Sato does not describe or suggest the
specific color compounds required by claim 1 on appeal. A conclusion of
obviousness must be based upon the subject of a claim as a whole. 35 U.S.C. §
103(a). Here, the examiner has not focused on the precise subject matter required
by claim 1 on appeal. As a result, the examiner has not addressed the key question
as to whether the colors required by claim 1 on appeal were in fact available in the
prior art. Where as here the examiner’s determination of the obviousness is based
upon less than the claimed subject matter as a whole, the determination is legally
incorrect and must be reversed.
The examiner’s rejection is reversed.
Other Issues
We note that appellant admits at page 4, lines 13-22 of the specification that
the specific colors required by claim 1 on appeal are known. However, the
specification does not indicate that these colors were known to be useful in
cosmetic compositions at the time of the present invention.
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