Appeal No. 2005-1655 Page 6
Application No. 09/852,624
anionic surfactants with no further guidance provides evidence that selection of the appropriate
surfactant was recognized as within the skill of the art.
Nor can we agree with Appellants that the surfactants of Lim would have been merely
“obvious to try” in the composition of Tomura. An invention is “obvious to try” where the prior
art provides either no indication of which parameters would be critical or no direction as to
which of many possible choices is likely to be successful. Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1845 (Fed. Cir.), cert. denied, 493 U.S. 975
(1989)(quoting In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)).
Here, the indication is that the selection of anionic surfactant is not particularly critical, it is the
alkali and polymer combination which is critical for stable solubilization of uric acid. There is
no indication that anything more than routine experimentation is required to select the anionic
surfactant that will be useful in the composition of Tomura.
Nor can we agree that the Examiner has failed to provide specific reasoning for
combining the teachings of Lim with those of Tomura (Brief, p. 17). Tomura directs one of
ordinary skill in the art to select anionic surfactants for use in the hair dye composition discussed
therein and Lim provides evidence of what anionic surfactants were known in the art for use in
hair dyes. That one of ordinary skill in the art would have selected those typical anionic
surfactants for their known properties flows from the disclosures in Tomura and Lim.
We conclude that Tomura’s suggestion that anionic surfactants can be appropriately
added to the compositions of Tomura without any specific evidence that certain anionic
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