Appeal No. 2006-2423 Page 7
Application No. 10/297,871
to solve the problems of hair coloration by consider a reference dealing with regrowing
hair. The examiner has failed to establish a case of prima facie obviousness.
Accordingly, we reverse the rejection of claims 24-30.
Composition claims 33-35, 37-40, and 47
With respect to the composition claims 33-35, 37-40, and 47, we are in different
territory. Claim 47, the only independent claim in this grouping, characterizes the
subject matter of the claim in its preamble as a “hair coloring composition.” In our view,
this is an intended use and should not restrict its scope. Preamble language that
merely states the purpose or intended use of the claimed subject matter is generally not
treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345, 65 USPQ2d 1961, 1964-65
(Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553
(Fed. Cir. 1997).
From the record before us, it appears that the examiner may have required this
feature to be present when performing the search for prior art. For example, our review
of the STIC search report suggests that the search may have required the hair coloring
utility, when the properly construed composition claims do not have this constraint.
Component 1 of claim 47 is a “colorant comprising an oxidation dye precursor.”
Coupled with the claim preamble, we also find this insufficient to restrict the claim
scope. The application devotes at least ten pages to the description of an extensive
number of colorants, including colorants at least four different generic formulas.
Specification, pages 9-18. Even though we recognize that the claim requires the
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