Appeal 2007-0107
Application 10/013,885
Appellants focus on the exemplified compounds, such as Example 13,
and the Formula II compounds of Hardy is misplaced in that both Hardy and
Susi also teach or suggest other compounds that are UV protective, as
evidenced by Formula I of Hardy or Susi. The fact that Hardy and Susi
disclose a variety of effective triazine compounds, some of which are not
embraced by Appellants’ narrowed claims, does not negate the teaching of
other particular formulations, as disclosed in these references. One of
ordinary skill in the art would have arrived at a compound included within
the compounds employed in representative appealed claim 1 by following
the teachings of Hardy or Susi in selecting a compound that is effective in
protecting against the effects of ultraviolet light.
Appellants also argue that the triazines of the secondary references are
structurally different from Hardy or Susi. Hardy or Susi are directed to
using their UV absorbers in polymers. Thus, Appellants assert that there is
no motivation to combine the secondary references with Hardy or Susi in
forming a cosmetic preparation as maintained by the Examiner as the
secondary references indicate preferences for different triazines than those of
Hardy or Susi (Br. 10-12). However, the test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981).
Here, the secondary references evince that triazines are known, in
general, to be useful as UV absorbers for a variety of uses, including
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013