Appeal No. 2004-0744 Page 9
Application No. 09/671,188
line 37 through column 18, line 7). Note, for example, Coffindaffer’s disclosure that
“[t]he conditioning agents for use herein include shampoo soluble conditioning agents
and crystalline conditioning agents” (column 16, lines 39 through 41, emphasis added);
that soluble conditioning agents can include soluble silicone fluids, e.g., polymethyl-
siloxanes (id., lines 42 through 45); and that “[t]he amount of such ingredients should
preferably be chosen such that that entire amount added is soluble in the composition”
(id., lines 56 through 58, emphasis added).
In our judgment, the examiner has fallen prey to the insidious effect of hindsight
in stating the case of obviousness under 35 U.S.C. § 103(a) based on a combination of
references. The examiner has not adequately explained why it would have been
obvious “to pick and choose from any one reference [Coffindaffer] only so much of it as
will support a given position [shampoo soluble cationic polymer], to the exclusion of
other parts necessary to the full appreciation of what such reference fairly suggests to
one of ordinary skill in the art [shampoo soluble conditioning agents, e.g., polymethyl-
siloxanes].” In re Hedges, 783 F.2d at 1041, 228 USPQ at 687. The examiner has not
explained why the combined disclosures of Cardin, Coffindaffer, and Cardinali would
have led a person having ordinary skill to an antidandruff composition containing the
polydimethylsiloxane conditioner of Cardin, said to be insoluble based on its disclosed
viscosity; but not containing the shampoo soluble conditioning agents (e.g., polymethyl-
siloxanes) disclosed by Coffindaffer. Accordingly, on these facts, we agree with
applicants that “[t]he Examiner has merely reconstructed Appellants’ claimed subject
matter based on Appellants’ own disclosure” (Paper No. 21, sentence bridging pages 25
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