Appeal 2007-0321
Application 10/669,547
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990,
78 USPQ2d 1329, 1338 (Fed. Cir. 2006). We do not agree that Michaels
teaches away from increasing the amount of mineral oil and/or emollient to
achieve a composition having 90% lipophilic material.
Specifically, Michaels states that “[t]o assist in the deposition of the
mineral oil as a film on the skin, there is added to said oil a minor amount of
an anhydrous, low-molecular weight, monohydric, aliphatic alcohol of from
one to four carbon atoms . . .” (Michaels, col. 2, ll. 37-41, emphasis added).
Michaels also states that the composition can contain up to “about 85% of
the mineral oil” (id. at col. 2, ll. 44-45, emphasis added), in addition to as
much as 2-3% (id. at col. 1, l. 19; col. 2, ll. 61-62), of an emollient such as
lanolin. In view of the “minor amount” of alcohol carrier required, and the
qualifying “about” language used to describe the mineral oil percentage, we
do not agree that Michaels teaches 85% to be the absolute maximum mineral
oil percentage. Rather, we agree with the Examiner that one of ordinary
skill following Michaels’ teachings would have arrived at claim 1’s
composition containing 90% lipophilic material through routine
experimentation.
Appellants argue that Michaels’ mineral oil composition is intended
as a lubricant for shaving, in contrast with Appellants’ use of the lipophilic
composition as a protective coating against harsh chemical depilatories (Br.
11).
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