ARGEMBEAUX, Horst

Patent Trials and Appeals Board

Aug 6, 2019

14914833 - (R) (P.T.A.B. Aug. 6, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/914,833 02/26/2016 Horst ARGEMBEAUX 3321-P50272 4272
13897 7590 08/06/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
CHANG, KYUNG SOOK
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
08/06/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HORST ARGEMBEAUX1
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Appeal 2018-008213
Application 14/914,833
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Appellant identifies Beiersdorf AG as the real party-in-interest. App. Br. 3.

Appeal 2018-008213
Application 14/914,833

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SUMMARY
Appellant has filed a Request for Rehearing (hereinafter the
“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our
Decision of May 15, 2019 (hereinafter the “Decision”).
The Decision affirmed the Examiner’s rejection of claims 34, 40–42,
44–52, and 53 under 35 U.S.C. § 103 as being obvious over the combination
of Schulz et al. (DE 102011085500 A1, May 2, 2013) (“Schulz”); Stolz et al.
(US 2011/0046034 A1, February 24, 2011) (“Stolz”); and Hornung et al.
(US 2014/0127147 A1, May 8, 2014) (“Hornung”).2
In the Request, Appellant seeks reconsideration of our Decision
affirming the Examiner’s rejection of claims 34, 40–42, 44–52, and 53 under
35 U.S.C. § 103. Specifically, Appellant argues that: “the Board apparently
has overlooked the fact that a peeling agent must inherently be capable of
peeling/abrading . . . skin from the surface of the skin and the only state in
which sea salt would be able to function as a peeling agent would be the
solid state.” Request 2 (citing Decision 6).
Appellant contends:
that the preparation of Schulz includes sea salt in dissolved form,
where the dissolved sea salt functions as a humectant . . . rather
than a peeling agent, wherefore one of ordinary skill in the art
would not have any reason to replace the very small amount of
sea salt in the compositions of Schulz by any known peeling
agent.

2 Klug et al. (US 2014/0127147 A1, May 8, 2014) (“Klug”) is the US version
of Hornung.
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Application 14/914,833

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Request 1–2. Appellant contends “the Board has not explained why one of
ordinary skill in the art allegedly would not (or at least not necessarily)
arrive at the conclusion that in the compositions of Schulz the sea salt is
present in dissolved form and thus, is not capable of acting as peeling
agent.” Request 3.
We are not persuaded that we overlooked or misapprehended
Appellant’s arguments on appeal. Appellant continues to argue that Schulz
teaches sea salt in a dissolved state, and not in a solid state for use as a
peeling agent. In the Decision, we noted that: “Appellant’s Specification
expressly discloses sea salt as a peeling active ingredient,” without any
additional limitation on the physical state of the material. Decision 6.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). In the rehearing request, Appellant seeks
to import the limitation that the sea salt of the prior art be present in the
“solid state.” Request 2. “Absent an express definition in their
specification, the fact that [A]ppellants can point to definitions or usages that
conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). The
Examiner points to other sources, particularly Appellant’s own
Specification, to support the broadest reasonable interpretation of “peeling
agent” including sea salt without further limitation. See Ans. 8. We
continue to agree with the Examiner that sea salt, without limitation as to
physical form or amount, is encompassed by the broadest reasonable
interpretation of “peeling agent” consistent with Appellant’s Specification.
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Application 14/914,833

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“[D]uring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(citation omitted). In other words, Appellant’s Specification discloses sea
salt as a peeling active ingredient, and Appellant may not now seek to
redefine that term for the purposes of the present Appeal.
Furthermore, Appellant continues, in the request, to attack Schulz
individually. See Request 1–4. However, the Examiner cited Stolz, in
combination with Schulz, for teaching the specifically claimed peeling
agent, e.g., hydrogenated castor oil. See Decision 4–5.
With respect to the combination, Appellant argues:
[E]ven if a person of ordinary skill in the art would recognize that
if the sea salt in the compositions of Schulz were present in solid
form rather than in dissolved form it would likely be capable of
acting as a peeling agent this would clearly not prompt her to add
a peeling agent to the compositions of SCHULZ.

Request 4. Appellant makes this argument without adducing any supporting
evidence of record. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
As stated in the Decision, “the Examiner has provided a reason that a
person of ordinary skill in the art would have sought to combine the stain-
and dirt-absorbing properties of Stolz’s cleaning bodies with the Schulz’s
shower formulations.” Decision 9. In particular, “Stolz teaches that: ‘it is
also possible to mix the cleaning bodies . . . that are based on hydrogenated
castor oil with abrasives . . . and to employ the mixture in skin cleaning
agents.” Decision 8 (citing Stolz ¶ 51). In other words, Schulz teaches an
emulsifier-free skin-cleaning agent, and Stolz teaches cleaning bodies
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combinable with known skin cleaning agents. See id. at 9. Therefore, the
combination is one of familiar elements that yields predictable results. Id.
We are consequently not persuaded that the Board overlooked or
misapprehended Appellant’s arguments.

DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the requested relief with respect to
making any changes therein.

DENIED