Ex parte SAMAIN - Page 5




              Appeal No. 1997-4101                                                                                         
              Application 08/425,802                                                                                       



              composition to hair.   See, e.g., column 1, lines 58-column 2, line 24 and column 7, lines 8-                
              10.  In our view, Bolich anticipates claim 1 since it describes the two positive manipulative                
              steps required by that claim.  While Bolich does not explicitly state that the purpose of                    
              performing the method of that reference is for the “temporary shaping of keratin fibers” or                  
              that the guar gum is “a shaping or shape retaining agent,” it has long been held that                        
              “merely discovering and claiming a new benefit of an old process cannot render the                           
              process again patentable.”  In re Woodruff, 919 F.2d 1575, 1578,                                             
              16 USPQ2d 1934, 1936 (Fed. Cir. 1990).  As indicated in In re May, 574 F.2d 1082,                            
              1089, 197 USPQ 601, 607 (CCPA 1978), our determination that Bolich anticipates claim                         
              1 is not a new ground of rejection since anticipation is the epitome of obviousness.                         
              2.  Claims 30 through 33                                                                                     
                     Claim 30 is representative of this group.  Claim 30 requires three positive                           
              manipulative steps, i.e., applying to wet or dry keratin fibers a cosmetic composition as in                 
              claim 1 on appeal, shaping the keratin fibers to which the cosmetic composition has been                     
              applied and allowing the shaped keratin fibers to dry.                                                       
                     As set forth above, Bolich describes a cosmetic composition as required by claim                      
              30 to hair for the purpose of shampooing.  Thus, Bolich describes the first step of claim 30.                
              The question to be resolved is whether Bolich teaches or suggests the shaping and drying                     
              steps set forth in claim 30.                                                                                 

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