Ex parte AHLUWALIA et al. - Page 3




              Appeal No. 1997-1717                                                                                           
              Application No. 08/068,256                                                                                     

                                                        Background                                                           
                      The present invention is directed to a process of reducing mammalian hair                              
              growth by applying to the skin a composition including an inhibitor of 5-lipoxygenase                          
              (specification, page 1, lines 12-15).  Appellants state that they “conceived that inhibiting the               
              enzyme 5-lipoxygenase would reduce the rate of hair growth” (appeal brief, page 3).                            
              According to appellants, “[e]very inhibitor of 5-lipoxygenase that applicants tested caused                    
              a reduction in hair growth.” (Id.)                                                                             


                                                        Discussion                                                           
                                         I.      Rejection under 35 U.S.C.  103                                             
                      All of the appealed claims stand rejected under 35 U.S.C.  103 as unpatentable                        
              over Breuer, Shander I and Shander II.  After careful consideration of the record, we will not                 
              sustain this rejection.                                                                                        
                      The examiner argues that all three references “disclose a number of structures                         
              which are useful in inhibiting hair growth” (examiner’s answer, page 4).  According to the                     
              examiner, “[w]hile none of the compounds of the prior art are identified as              5-                    
              lipoxygenase inhibitors they would render the instantly claimed process obvious if they                        
              possessed any such activity” (Id.) (emphasis added).  The examiner places the burden on                        
              appellants to show that the prior art compounds are “completely inactive” as 5-                                
              lipoxygenase inhibitors (Id.).  We disagree with this line of reasoning.                                       




                                                             3                                                               



Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007