Appeal No. 2003-0615
Application No. 09/319,165
primary reference, which disclosed a dead bolt lock, taught away
from the ratcheting mechanism of the secondary reference.8
Winner, 202 F.3d at 1350, 53 USPQ2d at 1588. The Federal Circuit
stated: “Trade-offs often concern what is feasible, not what is,
on balance, desirable. Motivation to combine requires the
latter.” Winner, 202 F.3d at 1349, 53 USPQ2d at 1587. Then, in
a footnote, the court stated: “The fact that the motivating
benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.”
Winner, 202 F.3d at 1349 n.8, 53 USPQ2d at 1587 n.8.
In accord with Winner, the improved hair finish and reduced
likelihood of skin and hair damage provided by using Tsujino’s
enzyme instead of peroxide must be balanced against any resulting
loss of hair dyeing effect.
Tsujino states that when hydrogen peroxide is used, “damage
of hair to some degree is inevitable and also skin trouble might
8 The present case differs significantly from Winner in that
Andrillon does not teach against using Tsujino’s enzyme.
Andrillon’s hydrogen peroxide is merely a conventional oxidizing
agent used in the examples (col. 10, lines 8-12).
12
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