Appeal No. 2004-0378
Application No. 09/765,675
by adding the aminosilicone, as taught by Decoster et al., because of the expectation of
successfully producing a cosmetic detergent composition.” Id.
We agree with Appellants that this rationale does not support a prima facie case
of obviousness with respect to claims 64-67. The examiner has not provided sufficient
evidence or sound scientific reasoning to show that those skilled in the art would have
been motivated to select the aminosilicone disclosed by Decoster as useful in a
cosmetic detergent composition, and to add that aminosilicone to the oil-in-water
nanoemulsion suggested by Restle and Ziegler. Therefore, the examiner has not made
out a prima facie case of obviousness with respect to claims 64-67. The rejection of
these claims is reversed.
Summary
We reverse the rejection of claims 63-67 and 78-82 and affirm the rejection of
claims 1-62, 68-71, and 83. However, we designate our affirmance with respect to
claims 20 and 23-29 as a new ground of rejection under 37 CFR § 1.196(b), in order to
give Appellants a fair opportunity to respond. See In re Kronig, 539 F.2d 1300, 1302-
03, 190 USPQ 425, 426-27 (CCPA 1976).
Time Period for Response
In addition to affirming the examiner’s rejection of one or more claims, this
decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b) (amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b)
provides, “A new ground of rejection shall not be considered final for purposes of judicial
review.”
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007