Appeal 2006-2632
Application 09/881,807
expectation of achieving successful composition for dyeing
hair, and would expect such a composition to have similar
properties to those claimed, absent unexpected results. Further,
the similarities in chemical structure between the prior art and
the claimed compounds and which have similar utilities
establishes a prima facie case of obviousness. (Answer 5).
[O]ne having ordinary skill in the art would have found it prima
facie obvious to add the cationic polymers (polyquaternium-37)
discussed in Cotteret et al. (US' 908) into the composition of
Narasimhan et al. (US' 989 B1) with the reasonable expectation
of obtaining all of the advantages discussed in Cotteret.
(Answer 9).
Appellants argue that the Examiner has oversimplified the steps
required to arrive at the claimed invention from the combined teachings of
Narasimhan and Cotteret and has failed to establish the requisite motivation
to combine these references. Specifically, Appellants argue the Examiner
has not provided reasons for his selection of the claimed components from
Narasimhan’s extensive list of both required and optional composition
components. In addition, Appellants assert that even assuming one of
ordinary skill in the art would have selected the claimed fatty alcohol,
alkoxylated fatty alcohol, fatty amide, and oxidizing agent, the Examiner has
not explained why one of ordinary skill in the art would have selected
polyquaternium 37 from Cotteret’s extensive list of cationic polymers,
particularly give Cotteret’s preference for cationic polymers which are not
homopolymers comprising repeating units of formula (I).
Where all the elements of an invention can be found in a combination
of prior art references, a proper analysis under § 103 requires, inter alia,
consideration of two factors: (1) whether the prior art would have suggested
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