Appeal No. 2002-1559 Page 6
Application No. 09/282,708
composition may be used in a hair gel. See Brown, page 4, lines 50-55. Thus
Brown teaches all of the elements of the claim—a gel composition as part of a
hair treatment composition. Because the claim requires no more than the gel
composition, and because Brown teaches that the gel composition may be used
in a hair treatment composition such as a hair gel, the burden shifts to appellants
to demonstrate that the gel composition taught by Brown would not be expected
to have utility in a hair treatment composition or that one of ordinary skill would
not know what the right ingredients are. See, e.g., In re Donohue, 766 F.2d 531,
533, 226 USPQ 619, 621 (Fed. Cir. 1985) (noting that an anticipatory reference
need only place the public in possession of the invention, and that such
possession is achieved if one of ordinary skill could combine the reference with
his own knowledge to make the claimed invention).
Appellants argue further that:
If this is a proper reading of Brown, then as stated at page 23, lines
11-14, Brown anticipates transparent or opaque emulsions, lotions,
creams, pastes or gels. Brown further anticipates shampoos,
conditioners and hair styling gels, and yet there is no explicit
teaching in Brown for any of these compositions.
Moreover . . . under the present reading of Brown it could be
said to read on all types of antiperspirant compositions. These
would include, roll-ons, creams, soft solids, sticks, powders, sprays,
and other antiperspirants. It cannot be that this is a proper reading
of Brown when in fact Brown gives no specific examples or
concrete directions regarding the formation of antiperspirant
materials.
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