Ex Parte Dobkowski et al

Board of Patent Appeals and Interferences

Feb 18, 2009

10841042 (B.P.A.I. Feb. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIAN JOHN DOBKOWSKI,
JEFFREY WILLIAM ROSEVEAR, PREM CHANDAR,
MARC NICOLAAS GERARD DE MUL, and JACK POLONKA
__________

Appeal 2008-54011
Application 10/841,042
Technology Center 1600
__________

Decided:2 February 18, 2009
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

1 Unilever Home & Personal Care USA, Division of Conopco, Inc. is the
real party in interest.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5401
Application 10/841,042

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
One approach that cosmetics use to hide skin imperfections is a “soft
focus effect” in which “incoming light is distorted by scattering (lensing)”
(Spec. 1). However, a “cosmetic covering that is too opaque hides the skin
under a paint-like coating. Imperfections are hidden but there is no radiance”
(id. at 2).
The Specification discloses that “a soft focus effect with radiance can
be obtained by a combination of fine particle sized zinc oxide or zirconium
oxide suspended with a crosslinked silicone elastomer. The zinc oxide or
zirconium oxide must have an average particle size less than 300 nm” (id. at
3). The Specification discloses that “[a]bsent the elastomer or the oxide,
there would be insufficient soft focus effect. Oxide alone is inefficient
because of excessive loss of reflectance/radiance” (id.).
Claims 1-3, 6-8, and 11-13 stand rejected and are on appeal (App. Br.
3). The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 is representative and reads as follows:
Claim 1: A cosmetic composition comprising:
(i) from about 0.01 to about 30% of a crosslinked
silicone elastomer by weight of the composition;
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(ii) from about 0.1 to about 20% of a zinc oxide or
zirconium oxide by weight of the composition of
average particle size less than 300 nm;
(iii) from about 0.001 to about 10% of a taurate
polymer by weight of the composition;
(iv) from about 0.01 to about 10% of porous particles
of polymethylmethacrylate by weight of the
composition;
(v) from about 0.1 to about 5% of a light reflective
inorganic platelet shaped particle by weight of the
composition having an average particle size of
about 10,000 to about 30,000 nm and being
selected from the group consisting of titanium
dioxide coated mica and bismuth oxychloride;
(vi) from about 0.05 to about 2% of a non-coated mica
by weight of the composition of average volume
particle size ranging from 1,000 to 10,000 nm; and
(vii) a cosmetically acceptable carrier system
comprising from about 30% to about 90% of water
by weight of the composition.

The Examiner cites the following documents as evidence of
unpatentability:
Faryniarz et al. US 2003/0228337 A1 Dec. 11, 2003
Barrow3 et al. US 2004/0185070 A1 Sep. 23, 2004
Bissett et al. US 2005/0019356 A1 Jan. 27, 2005

The following rejection is before us for review:
Claims 1-3, 6-8, and 11-13 stand rejected under 35 U.S.C. § 103(a) as
being obvious in view of Faryniarz, Bissett, and Barrow (Ans. 3-6).
OBVIOUSNESS
ISSUE

3 The Examiner relies on Barrow to meet limitations and ingredients not
recited in claim 1. We therefore do not discuss Barrow further.
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The Examiner cites Faryniarz as teaching a cosmetic composition that
includes a crosslinked silicone elastomer, zinc oxide, a taurate polymer, and
a cosmetically acceptable carrier (Ans. 3). The Examiner concedes that
Faryniarz differs from claim 1 in that its compositions are not disclosed as
containing light reflective platelet-shaped particles of either titanium dioxide
coated mica or bismuth oxychloride, non-coated mica, or porous particles of
polymethylmethacrylate (id. at 4).
The Examiner cites Bissett to show that those ingredients were known
in the art as being “commonly used in the skin care industry including
particulate matter providing a wide range of functions such as modifying
skin feel, reducing shine, and improving application properties, etc.” (Id.)
Based on these teachings, the Examiner finds that a person of ordinary skill
in the art would have been prompted to include Bissett’s particulate
materials in Faryniarz’s compositions (id. at 5).
The Examiner finds that adjusting “particular conventional working
conditions (e.g., determining the size of the zinc particles and the result
effective amounts of the ingredients taught by the cited references) is . . .
merely a matter of judicious selection and routine optimization which is well
within the purview of the ordinary artisan” (id.). Moreover, the Examiner
contends, “[i]nterference pigments in particular are pearlescent and reflect,
refract and transmit light because of the large difference in the refractive
index of the mica platelets and titanium dioxide coating (Bisset[t], pg. 13,
para. 194)” (id. at 5-6). The Examiner finds that one of ordinary skill in the
art “would thus be motivated to seek out the optimal transmission and
reflection intensities for such a composition” (id. at 6).
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Appellants contend that the Examiner erred in concluding that claim 1
would have been obvious to a person of ordinary skill because the claimed
compositions have “both a soft focus and a radiance effect . . . [which] has
been achieved by combining a number of ingredients which in unexpected
unison act to achieve the desired results” (App. Br. 7). Specifically,
Appellants contend that Examples 1, 2, and 3 in the Specification
demonstrate that each of the ingredients in the composition of claim 1 is
critical to achieving both soft focus and radiance (id. at 8-11).
Appellants further argue that the cited references do not suggest the
claimed combination of ingredients because Faryniarz discloses that taurate
polymers are not the most preferred polymers in its compositions (id. at 10).
Moreover, Appellants argue, Bissett would have indicated to a person of
ordinary skill that “no special care would be necessary in selecting
particulate materials. There would be no specific limitations. No special
combinations of particulates would be suggested to those of any skill in this
art. Neither would there be any importance given to physical properties of
any of the selected particulate materials” (id.). In contrast, Appellants urge,
“[e]xperiments presented by Appellant[s] clearly dispel fungibility of
particulates” (id.).
In view of the positions advanced by the Examiner and Appellants,
the issues with respect to this rejection are (a) whether the Examiner failed
to make a prima facie case that a person of ordinary skill in the art would
have considered claim 1 obvious in view of the cited references, and (b) if
the Examiner has made out a prima facie case of obviousness, whether
Appellants have presented secondary evidence of nonobviousness sufficient
to rebut the Examiner’s prima facie case.
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FINDINGS OF FACT (“FF”)
1. Faryniarz discloses “personal care compositions containing acid
functionalized polymers neutralized by hydroxy amines” (Faryniarz [0002]).
2. Regarding its functionalized polymers, Faryniarz discloses that
“[p]articularly preferred polymers include Carbopol® 940 and Carbopol®
Ultrez Z 10 which are polyacrylates crosslinked with diallyl monomer;
polyacrylic acid; poly(acrylic acid/acryloyldimethyl) taurate;
hydroxyethylacrylate/acryloyldimethyl taurate; poly(acrylic
acid/acrylamide); acryloyldimethyl taurate/vinyl pyrrolidone;
poly(acryloyldimethyl taurate/vinylformamide); and polyacrylamide
crosslinked with acryloyldimethyl taurate” (Faryniarz [0023]).
3. Regarding its functionalized polymers, Faryniarz also discloses:
Most preferred are Carbomers. This category are
polymers formed from free radical polymerization of acrylic
acid crosslinked with allyl ethers of sucrose of pentaeryt[h]ritol.
They are available as Carbopol® 900 series which includes
910, 934, 940, 941, 954, 980 and 981, all sold by the B. F.
Goodrich Company. Copolymers known as acrylates C10-30
alkyl acrylate crosspolymers commercially available as
Carbopol® 1382 or Pemulen TR-1 may also be useful, but are
less preferred because of the hydrophobic C10-30 alkyl acrylate
chain.

(Faryniarz [0024].)
4. Faryniarz discloses that its compositions also contain a “cosmetically
acceptable carrier. Amounts of the carrier may range from 1 to 99.9%,
preferably from about 70 to about 95%, optimally from about 80 to about
90%. Among the useful carriers are water, emollients, fatty acids, fatty
alcohols, humectants, thickeners and combinations thereof” (Faryniarz
[0027]).
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5. Faryniarz discloses that the emollients can be “silicone oils, synthetic
esters and hydrocarbons. Amounts of the emollients may range anywhere
from about 0.1 to about 95%, preferably between about 1 and about 50% by
weight” (Faryniarz [0028]). One class of suitable silicone emollients
includes “emulsifying and non-emulsifying silicone elastomers” (id. at
[0031]).
6. Faryniarz discloses that its compositions can contain inorganic
“[s]unscreen actives . . . such as microfine titanium dioxide, zinc oxide,
polyethylene and various other polymers. Amounts of the sunscreen agents
when present may generally range from 0.1 to 30%, preferably from 2 to
20%, optimally from 4 to 10% by weight” (Faryniarz [0047]).
7. Faryniarz discloses that “[c]olorants, fragrances, opacifiers and
abrasives may also be included in compositions of the present invention.
Each of these substances may range from about 0.05 to about 5%, preferably
between 0.1 and 3% by weight” (Faryniarz [0055]).
8. Unlike the composition recited in claim 1, Faryniarz does not disclose
its compositions as containing porous polymethylmethacrylate particles,
platelet-shaped particles of either titanium dioxide-coated mica or bismuth
oxychloride, or non-coated mica.
9. Bissett discloses “skin care compositions containing [an] N-acyl
amino acid, particularly N-acyl derivatives of Phenylalanine or Tyrosine,
their isomers, or their salts” (Bissett [0001]).
10. Bissett discloses that “[p]referred carriers comprise an emulsion such
as oil-in-water emulsions and water-in-oil emulsions, e.g., silicone-in-water
or water-in-silicone emulsions” (Bissett [0078]). Bissett discloses that the
silicone component can be a silicone elastomer (id. at [0095]-[0097]).
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11. Bissett discloses that its compositions can contain particulate
materials:
The compositions of the present invention may contain
one or more particulate materials. Nonlimiting examples of
particulate materials useful in the present invention include
colored and uncolored pigments, interference pigments,
inorganic powders, organic powders, composite powders,
optical brightener particles, and combinations thereof. These
particulates can be platelet shaped, spherical, elongated or
needle-shaped, or irregularly shaped, surface coated or
uncoated, porous or non-porous, charged or uncharged, and can
be added to the current compositions as a powder or as a pre-
dispersion. These particulate materials may provide a wide
range of functions, including but not limited to modifying skin
feel, masking the appearance of certain skin characteristics such
as blotchy areas, age spots, freckles, fine lines, wrinkles, and
pores, absorbing excess skin sebum/oils, reducing skin shine,
improving application properties of the composition, masking
the color of other components of the composition, filling in skin
pores, lines and wrinkles, and reducing migration of liquid
materials on the skin.

(Bissett [0192].)
12. Bissett discloses:
Particulate materials useful herein include but are not
limited to bismuth oxychloride, sericite, mica, mica treated with
barium sulfate or other materials, zeolite, kaolin, silica, boron
nitride, lauroyl lysine, nylon, polyethylene, talc, styrene,
polypropylene, polystyrene, ethylene/acrylic acid copolymer,
sericite, aluminum oxide, silicone resin, barium sulfate, calcium
carbonate, cellulose acetate, PTFE, polymethyl methacrylate,
starch, modified starches such as aluminun starch octenyl
succinate, silk, glass, and mixtures thereof. Preferred organic
powders/fillers include, but are not limited, to polymeric
particles chosen from the methylsilsesquioxane resin
microspheres such as for example those sold by Toshiba
silicone under the name Tospearl 145A; microspheres of
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polymethylmethacrylates such as those sold by Seppic under
the name Micropearl M 100 . . . .

(Bissett [0193].)
13. Bissett discloses:
Also useful herein are interference pigments.
Interference pigments, for purposes of the present specification
are defined as thin platelike layered particles having two or
more layers of controlled thickness with different refractive
indices that yield a characteristic reflected color from the
interference of typically two, but occasionally more, light
reflections, form different layers of the platelike particle. The
most common examples of interference pigments are micas
layered with about 50-300 nm films of TiO2, Fe2O3, silica, tin
oxide, and/or Cr2O3. Such pigments are often peralescent
[sic]. Pearl pigments reflect, refract and transmit light because
of the transparency of pigment particles and the large difference
in the refractive index of mica platelets and, for example, the
titanium dioxide coating. . . . Especially preferred are
interference pigments with smaller particle sizes, with an
average diameter of individual particles less than about 75
microns in the longest direction, preferably with an average
diameter less than about 50 microns.

(Bissett [0194].)
14. Bissett discloses:
Other pigments useful in the present invention provide
color primarily through selective absorption of specific
wavelengths of visible light, and include inorganic pigments,
organic pigments and combinations thereof. . . . Inorganic
white or uncolored pigments useful in the present invention, for
example TiO2, ZnO, or ZrO2, are commercially available from
a number of sources.

(Bissett [0195].)
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15. Appellants’ Example 1 discloses the preparation of seven different
compositions, designated Samples 1 through 7, whose ingredients are listed
in Table 1 (Spec. 28), reproduced below:

16. In order to evaluate their “soft focus” properties, optical
measurements were performed on the seven compositions by drying the
compositions onto plastic overhead transparency sheets, shining a light
source onto the compositions, and then measuring the transmission intensity
of the applied light (Spec. 29-30). The results are shown in Table II (Spec.
31), reproduced below:
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17. As seen from the data presented in Table II, only Sample 1 had, at all
angles, transmission intensities that were considered by Appellants to be
within acceptable in ranges.
18. Appellants’ Example 2 discloses an evaluation of zinc oxide in
contrast to titanium dioxide in four different compositions, designated
Samples 8 through 11 (Spec. 32). The compositions had the ingredients
disclosed in Table III (Spec. 33-34), reproduced below:

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19. The transmission intensity measurements were provided in Table IV
(Spec. 35), set forth below:

20. As can be seen from Table IV, “[o]n an equivalent weight basis
Sample 8[, which contained zinc oxide,] provided a Transmission Intensity
which was within the acceptability range. By contrast, the titanium dioxide
formulated Sample Nos. 9, 10 and 11 exhibited Transmission Intensity
values outside the acceptable range” (Spec. 35).
21. Appellants’ Example 3 evaluated the soft focus effects of a variety of
different thickening polymers in seven different compositions, designated
Samples 12 through 18 (Spec. 35-37). The ingredients in Samples 12-18 are
set forth in Table V (Spec. 36-37), reproduced below:
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22. The Specification discloses that “Samples 13, 16 and 18 were all
unstable with either initial phase separation (between oil and water) at 75°C
or exhibited separation upon cooling. Thus, unsuitable polymers included
Carbomer, Salcare SC96® and Pemulen TR-1” (Spec. 38).
23. The transmission intensity measurements of Samples 12, 14, 15, and
17 were provided in Table VII (Spec. 39) reproduced below:
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24. The Specification describes the data as showing that the transmission
intensity “for the xanthan gum (Sample 14) was outside the Acceptability
Range. . . . The Viscolam AT® 100/P (Sodium Acrylate/Sodium
Acryloyldimethyltaurate Copolymer) in Sample 15 exhibited excellent
Transmission Intensity Opacity at all angles and Reflection Intensity fell
within the parameters necessary to achieve both soft focus and radiance”
(Spec. 38).
PRINCIPLES OF LAW
Addressing the obviousness question in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 127 S. Ct. 1727 (2007), the Supreme Court reaffirmed
that it is obvious to choose from among known solutions to an art-
recognized problem:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
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leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at ___, 127 S. Ct. at 1742.
Thus, “when a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” Id. (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)).
When evaluating claims for obviousness, “the prior art as a whole
must be considered. The teachings are to be viewed as they would have
been viewed by one of ordinary skill.” In re Hedges, 783 F.2d 1038, 1041
(Fed. Cir. 1986). Accordingly, “‘[i]t is impermissible within the framework
of section 103 to pick and choose from any one reference only so much of it
as will support a given position, to the exclusion of other parts necessary to
the full appreciation of what such reference fairly suggests to one of
ordinary skill in the art.’” Id. (quoting In re Wesslau, 353 F.2d 238, 241
(CCPA 1965)).
Thus, “in a section 103 inquiry, ‘the fact that a specific [embodiment]
is taught to be preferred is not controlling, since all disclosures of the prior
art, including unpreferred embodiments, must be considered.’” Merck &
Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference
must be evaluated, including nonpreferred embodiments, and a reference is
not limited to the disclosure of specific working examples.” (citations
omitted)).
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However, it is well settled that evidence of unexpected results may
rebut an examiner’s prima facie case of obviousness. See In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998); see also KSR, 127 S. Ct. at 1740 (“The
fact that the elements worked together in an unexpected and fruitful manner
supported the conclusion that Adams’s design was not obvious to those
skilled in the art.”) (discussing United States v. Adams, 383 U.S. 39 (1966)).
Nonetheless, “[m]ere improvement in properties does not always
suffice to show unexpected results. . . . [W]hen an applicant demonstrates
substantially improved results . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
Thus, “any superior property must be unexpected to be considered as
evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007).
Moreover, “when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991).
Also, “’objective evidence of nonobviousness must be commensurate
in scope with the claims.’” In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir.
1990) (quoting In re Lindner, 457 F.2d 506, 508 (CCPA 1972)); see also In
re Muchmore, 433 F.2d 824, 826 (CCPA 1970) (evidence which “might”
have shown that claim encompassed unexpectedly superior processes held
insufficient to overcome prima facie case of obviousness where claim
“read[] on both obvious and unobvious subject matter”).
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ANALYSIS
Appellants’ arguments do not persuade us that the Examiner failed to
make a prima facie case of obviousness with respect to claim 1, nor are we
persuaded that Appellants have presented secondary evidence of
nonobviousness sufficient to rebut the Examiner’s prima facie case.
Faryniarz discloses that cosmetic compositions can suitably contain a
silicone elastomer (FF 5), zinc oxide (FF 6), taurate polymer (FF 2), aqueous
carrier (FF 4), and also colorant ingredients (FF 7). Bissett discloses that
cosmetic compositions can also suitably contain the claimed
polymethylmethacrylate particles (FF 12), platelet shaped particles of
titanium dioxide-coated mica or bismuth oxychloride (FF 13; see also FF 11,
12), and non-coated mica (FF 12).
Bissett discloses that those substances are among a number of
particulate materials that provide various functionalities to cosmetic
compositions, including “masking the appearance of certain skin
characteristics such as blotchy areas, age spots, freckles, fine lines, wrinkles,
and pores, . . . reducing skin shine, . . . masking the color of other
components of the composition, [and] filling in skin pores, lines and
wrinkles” (Bissett [0192] (FF 11)).
We agree with the Examiner that a person of ordinary skill in the art,
advised of the advantages of particulate materials in cosmetic compositions,
would have been prompted to include Bissett’s particulate materials in
Faryniarz’s compositions. We are therefore not persuaded that the Examiner
failed to make a prima facie case of obviousness for claim 1.
We note, as Appellants argue, that the taurate polymers are not
Faryniarz’s “[m]ost preferred” polymers (Faryniarz [0024] (FF 3)).
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However, Faryniarz does disclose that “particularly preferred polymers
include . . . poly(acrylic acid/acryloyldimethyl) taurate;
hydroxyethylacrylate/acryloyldimethyl taurate; . . .; acryloyldimethyl
taurate/vinyl pyrrolidone; poly(acryloyldimethyl taurate/vinylformamide);
and polyacrylamide crosslinked with acryloyldimethyl taurate” (Faryniarz
[0023] (emphasis added) (FF 2)). Given Faryniarz’s disclosure that taurate
polymers are among its “particularly preferred polymers,” we are not
persuaded Faryniarz “teaches away from Appellant’s claims” (App. Br. 10),
as Appellants argue.
We also note that both Faryniarz and Bissett disclose zinc oxide and
titanium oxide alongside each other as suitable pigments in cosmetic
compositions (see FF 6, 14), whereas Appellants have presented data
showing that compositions including zinc oxide have optical properties in
Appellants’ acceptable range for soft focus, whereas compositions having
titanium dioxide do not (FF 18-19). However, Appellants point to no actual
evidence, in affidavit form or otherwise, suggesting that a person of ordinary
skill in the art would have considered the differences in light transmission
intensities between zinc oxide and titanium dioxide to be unexpected. Cf. In
re Soni, 54 F.3d at 751; Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1371.
While Appellants aver that the claimed ingredients “in unexpected
unison act to achieve the desired results” (App. Br. 7), it is well settled that
argument by counsel cannot take the place of evidence. In re Cole, 326 F.2d
769, 773, (CCPA 1964); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997). We are therefore not persuaded that the differences in light
transmission intensities between cosmetic compositions containing zinc
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oxide and titanium dioxide equate to a showing of unexpected results
sufficient to overcome the Examiner’s prima facie case.
Appellants urge that their comparative experiments show that “each of
the claimed elements (i) through (vi) have a significant and critical [e]ffect
upon delivering a combined soft focus and radiance effect. Absent one of
the materials or substitution of one of those materials would not achieve the
desired results” (App. Br. 11). We are not persuaded, however, that
Appellants have made a showing of unexpected results adequate to
overcome the Examiner’s prima facie case of obviousness.
Specifically, Faryniarz differs from claim 1 in that Faryniarz does not
disclose its compositions as containing porous polymethylmethacrylate
particles, platelet-shaped particles of either titanium dioxide-coated mica or
bismuth oxychloride, or non-coated mica (FF 8). However, Bissett discloses
that those substances are among a variety of particulate ingredients which
are suitable in cosmetic compositions for masking skin imperfections (see
FF 11-14). Thus, while Appellants have made comparative experiments
which compare the presence and absence of the claimed ingredients in
cosmetic compositions (see, e.g. FF 15, 16), we see no suggestion that the
claimed particulate ingredients would function better, or in an unexpectedly
different manner, than the other ingredients disclosed by Bissett as providing
skin masking effects.
Moreover, to the extent Appellants urge that their comparative
examples are adequate evidence of unexpected results, the compositions
tested in the Specification are much more limited in scope than the subject
matter encompassed by claim 1. Specifically, the tested compositions
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contain a number of ingredients not recited in the claims, including, for
example, sunscreen agents (FF 15, 18, 21).
Also, for example, claim 1 recites that the composition has from about
0.001 to about 10% of taurate polymer, whereas only limited concentrations
of taurate polymer were tested in Appellants’ examples (Example 1, 0.8, 0.4,
and 0.6 weight percent (FF 15); Example 2, 0.8 weight percent (FF 18);
Example 3, 0.8 and 2.0 weight percent (FF 21)). Notably, despite being
encompassed by the concentrations in claim 1, Sample 6 (0.4% taurate
polymer) and Sample 7 (0.6% taurate polymer) are disclosed in the
Specification as not having light transmission intensities suitable for soft
focus (FF 16). Thus, not only does claim 1 encompass subject matter much
broader than the compositions tested, it also encompasses compositions
explicitly disclosed in the Specification as not having the properties averred
to as being unexpected.
In sum, we agree with the Examiner that a person of ordinary skill
would have considered the composition recited in claim 1 to be prima facie
obvious in view of Faryniarz and Bissett. For the reasons discussed above,
we are not persuaded that Appellants have presented sufficient evidence to
overcome the Examiner’s prima facie case of obviousness.
We therefore affirm the Examiner’s obviousness rejection of claim 1.
Claims 2, 3, 6-8, and 11-13 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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