Appeal No. 2007-0080 Page 4
Application No. 09/771,595
inorganic UV filter (“sunblock”). Tanner, column 1, lines 9-13; column 2, lines 53-57.
The Examiner also relies on George for teaching that it was known in the art to
incorporate sunscreen agents into hair care products. Answer, page 4. Based on these
teachings, the Examiner concludes:
it would have been obvious to one having ordinary skill in the art at the
time the invention was made to modify the hair care compositions of
EP 0 893 117 [Dieing] such that to employ UV filters of Tanner et al. One
having ordinary skill in the art would have been motivated to do this to
obtain compositions having improved photostability, chemical stability and
physical stability as suggested by Tanner et al. One having ordinary skill
in the art would have been further motivated to do this to obtain
compositions that would protect hair from UV radiation as suggested by
both Tanner et al. and George et al.
Answer, page 4.
Appellants do not dispute that Dieing describes the copolymer recited in claim 1
as component A), but challenge the Examiner’s conclusion that it would have been
obvious to have added Tanner’s surface-treated zinc oxide to it. They argue
[i]n light of the technical background knowledge which is reflected in the
disclosures of the secondary references [Tanner and George] it is
therefore clear that, at the time appellants made their invention, a person
of ordinary skill in the art considered inorganic pigments such as zinc
oxides suitable for sun protection of the skin. The secondary references
fail, however, to suggest or imply that inorganic sunscreen agents would
be reasonably considered by a person of ordinary skill in the art as being
useful for the protection of hair.
Brief, pages 5-6.
To establish obviousness, the Supreme Court in Graham v. John Deere,
383 U.S. 1, 148 USPQ 459 (1966) has required that the following factors be taken into
consideration: (a) the scope and contents of the prior art; (b) the differences between
the prior art and the claimed subject matter; (c) the level of skill in the pertinent art; and
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