Appeal No. 2004-0378
Application No. 09/765,675
the limitations of claim 1 except for the inclusion of a cationic polymer. See Paper No.
5, mailed August 16, 2001, paragraph bridging pages 2-3. The examiner relied on
Ziegler for this limitation:
Ziegler et al. teach a cosmetic o/w [oil-in-water] composition comprising
quaternary ammonium phosphate esters and 0.10-10% by weight of
cationic polymers. . . . The reference teaches that the composition
provides stability against phase separation during freeze-thaw cycles and
is effective in moisture retention.
Paper No. 5, page 3. The examiner concluded that “[i]t would have been obvious to one
of ordinary skill in the art at the time the invention was made to have modified the
composition of Restle et al. by adding the cationic polymers, as taught by Ziegler et al.,
because of the expectation of successfully producing a cosmetic composition with
enhanced stability and moisture retention.” Id.1
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. Only if that burden is met, does the
burden of coming forward with evidence or argument shift to the applicant.” In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[The examiner]
can satisfy this burden only by showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead that individual
to combine the relevant teachings of the references.” In re Fritch, 972 F.2d 1260, 1265,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
1 In a subsequent communication, the examiner clarified that the rejection was based on the obviousness
of adding both the cationic polymer and phosphate ester of Ziegler’s composition to the composition
disclosed by Restle. See Paper No. 7, mailed January 30, 2002, page 3. Appellants responded to this
position in the Appeal Brief. See pages 13, 14-16.
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