Ex Parte Fairley et al - Page 6

                   Appeal No. 2006-2731                                                                                               
                   Application No. 10/102,077                                                                                         

                   conditioning agents for the insoluble hair conditioning component (see, page 13, line 35                           
                   and claim 3), however, the repeated teaching of the patent is to the use of silicone                               
                   conditioning agent.”  Br. 8 (emphasis in original).                                                                
                           As the Examiner noted, “the prior art teachings are not limited to preferred                               
                   embodiments and Coffindaffer et al. teach both silicone as well as oily conditioning                               
                   agents . . . , at the suggested particle sizes.”  Answer 6.                                                        
                           Coffindaffer discloses all the limitations in claims 1 and 2, except (i) the claimed                       
                   group of fatty ester oils, i.e., triglycerides, and (ii) the particle size range 0.8 to 4 microns.                 
                   Thiel discloses specific fatty ester oils useful in conditioning shampoos, i.e., triglycerides,                    
                   and the advantages of using them.  Thus, we agree with the Examiner that it would have                             
                   been obvious to a skilled artisan to use one of Thiel’s triglycerides as a specific fatty ester                    
                   oil in Coffindaffer.                                                                                               
                           With respect to the claimed particle size range, there is substantial overlap                              
                   between Coffindaffer’s “less than about 2 microns” and Appellants’ claimed ranges, i.e.,                           
                   0.8 to 4.0 microns in claim 1 and 1.0 to 3.5 microns in claim 2.  Such an overlap is                               
                   sufficient to establish prima facie obviousness, absent a showing that “the claimed range                          
                   achieves unexpected results relative to the prior art range.”  In re Woodruff, 919 F.2d                            
                   1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).                                                                 
                           Appellants argue there is nothing in Coffindaffer to suggest limiting the bottom                           
                   end of their particle size ranges.  Br. 9.  They further argue Coffindaffer suggests just the                      
                   opposite in that Coffindaffer prefers very small particles, i.e., down to 0.05 microns.  Id.                       
                   In essence, they argue their data show the lower limit to their range is important, perhaps                        
                   critical, to the performance of their conditioning shampoo.  Id.                                                   


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