Appeal No. 2004-1572
Application No. 09/370,104
II. Whether the Rejection of Claims 9-11, 34-36, and 49-51 Under
35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the invention as set forth in claims 9-11, 34-36, and 49-51. Accordingly, we reverse.
With respect to dependent claim 9, we note that the Examiner has relied on the Van
Gelder reference alone to reject claim 9 under 35 U.S.C. § 103. However, claim 9 depends from
claim 4 which was rejected based on the Watanabe reference. The rejection of claim 9 before us
is silent as to how the Van Gelder reference teaches or suggests the limitations of claim 4.
Alternatively, the rejection is silent as to how the Van Gelder reference may be combined with
the Watanabe reference as applied to claim 4. In either case, the Examiner has not met the initial
burden of establishing a prima facie case of obviousness.
Therefore, we will not sustain the Examiner’s rejection under 35 U.S.C. § 103.
III. Whether the Rejection of Claims 12-16, 22-28, 39-42, and 52-61 Under
35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the invention as set forth in claims 12-16, 22-28, 39-42, and 52-61. Accordingly, we reverse.
With respect to independent claim 12, Appellants argue at page 13 of the brief, “there is
no teaching or suggestion in [Van] Gelder … identifying a hair of the plurality of hairs as a
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