Appeal No. 2006-2423 Page 6
Application No. 10/297,871
restoring the natural color to the nascent hair “in many instances where the hair color is
diminished and characterized as being gray or graying.” Lindenbaum, Abstract;
page 12, lines 3-7. These references occupy different fields of endeavor and have
different purposes. They are therefore not properly combinable to render obvious the
claimed subject matter.
The examiner asserted that the references were from the same field of endeavor
because both teach hair treatment compositions. Answer, page 10. However,
Lindenbaum cannot be considered to be within Appellants’ and Gast’s field merely
because both relate to hair care. Lindenbaum teaches formulations for growing hair
and restoring its natural color; both Gast and Appellants teach compositions for altering
the natural hair color. These are clearly different fields of endeavor – hair coloring
versus hair restoration.
Even when the prior art is not within the same field of endeavor, a reference may
be still properly combined when pertinent to the problem an inventor seeks to solve.
Clay, 966 F.2d at 658-59, 23 USPQ2d at 1060. “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically would have commended itself
to an inventor’s attention in considering his problem.” Clay, 966 F.2d at 659,
23 USPQ2d at 1061.
We do not see why a skilled worker would consider the problem of covering up
natural hair color pertinent to a reference for growing hair and restoring it to its natural
color. Lindenbaum’s purpose is to regrow naturally-colored hair. Appellant’s purpose
is to color hair. A person of ordinary skill in the art would not reasonably have expected
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