Appeal No. 2006-2423 Page 5
Application No. 10/297,871
Appellants argued that prima facie obviousness had not been established
because Lindenbaum was not analogous art to the claimed subject matter since it
taught formulations for enhancing hair or nail growth, not hair dyes. Brief, pages 5-6.
They also contended that “the Lindenbaum reference teaches away from addition to a
dye composition since it restores the natural color of the hair.” Id., page 8.
A prerequisite to a finding of obviousness is a determination of what constitutes
“prior art” to the claimed subject matter. In re Clay, 966 F.2d 656, 658, 23 USPQ2d
1058, 1060 (Fed. Cir. 1992). This inquiry, “frequently couched in terms of whether the
art is analogous or not,” is necessary in order to ascertain whether “the differences
between the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art.” 35 U.S.C. § 103; Clay, 966 F.2d at 658,
23 USPQ2d at 1060. “Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved. In re Deminski, 796 F.2d 436, 442, 230 USPQ 313,
315 (Fed.Cir.1986); In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979).” Clay, 966 F.2d at 658-59, 23 USPQ2d at 1060.
We agree with Appellants that Gast and Lindenbaum are not properly
combinable because they are not analogous prior art. As argued by Appellants, Gast is
concerned with changing the natural color of hair by applying a hair dye. Lindenbaum,
on the hand, describes a formulation for growing hair that has the “unexpected result” of
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007