Appeal No. 2003-0862
Application No. 09/518,032
The examiner concludes from the teachings of Murray, however, that “one would
obtain a silicone conditioning agent comprising any combination of a silicone fluid, a
silicone gum and an amino functional silicone incorporated into a volatile silicone. The
conditioning agent is then incorporated into a hair care composition.” Answer, page 4.
We agree that the examiner has provided sufficient evidence to establish a prima
facie case of obviousness based upon Murray. We initially note that claim 1 is a broad
claim including open ended claim language and claiming each silicone ingredient in
broad terms which encompass a class of silicone compounds, and is not limited to
three specific silicone compounds in combination.
Murray teaches a silicone conditioning agent which may incorporate a non-
volatile silicone gum having the claimed viscosity into a volatile silicone solvent. Murray
discloses volatile silicone solvents having a viscosity as in claim 1. Amino functional
silicones are also disclosed. While Murray does not explicitly disclose an example
having all three silicone components as claimed, Murray does specifically disclose a
preference for mixtures of non-volatile silicones with volatile silicones, and mentions
that amino functional silicone conditioning agents are useful in Murray’s hair care
compositions.
Where the prior art, as here, gives reason or motivation to make the claimed
invention, the burden then falls on an appellants to rebut that prima facie case. Such
rebuttal or argument can consist of any other argument or presentation of evidence that
is pertinent. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
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