BEIERSDORF AG

Patent Trials and Appeals Board

Aug 31, 2020

2020000626 (P.T.A.B. Aug. 31, 2020)

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.
15/551,597 08/17/2017 Anja BAUER 3321-P50393 7083
13897 7590 08/31/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
ALLEY, GENEVIEVE S
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/31/2020 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 ANJA BAUER, BEIERSDORF AG, VOLKER KALLMAYER,
PETER STEIDLE, and KLAUS-PETER STANGE1
_____________

Appeal 2020-000626
Application 15/551,597
Technology Center 1600
______________

Before RICHARD M. LEBOVITZ, DEBORAH KATZ, and JOHN A.
EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 5–24. Appeal Br. 17–19 (Claims
App.); Final Act 1. We have jurisdiction over the pending claims under 35
U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “[A]pplicant[s]” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies Beiersdorf AG, as the real
party in interest. Appeal Br. 3.
Appeal 2020-000626
Application 15/551,597
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INVENTION
The claims relate to a cosmetic preparation comprising an emulsion of
one or more hydrophilic phases and one or more lipophilic phases contained
within a metal can. See Abstract. Claim 5, the sole independent claim, is
reproduced below with some formatting added.
5. A cosmetic product, wherein the product comprises a
metal can which comprises
a metallic container (A) containing a cosmetic
preparation (Z) and comprising a rotation thread (A') and a lid
(D) having a thread (D') and being made of the same metal as
the container (A), lid (D) being unscrewable and screwable onto
container (A) in by thread (D') and thread (A') via rotational
movement, and
wherein the cosmetic preparation (Z) comprises an
emulsion of one or more hydrophilic phases and one or more
lipophilic phases,
the one or more lipophilic phases comprising, in a total
concentration of at least 3% by weight, based on a total weight
of the preparation,
(i) at least one lipid having a spreading value at
25°C of at least 700 mm2/10 minutes,
(ii) at least one lipid having a dropping point >
30°C, and
(iii) at least one monohydric and/or polyhydric
alcohol.

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Application 15/551,597
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PRIOR ART
Name2 Reference Date
Walsh US 2004/0057921 A1 Mar. 25, 2004
Lee US 2010/0287891 A1 Nov. 18, 2010
Wegner US 2014/0364509 A1 Dec. 11, 2014
Kulkarni US 2015/0044157 A1 Feb. 12, 2015

REJECTIONS3 AT ISSUE4
1. Claims 5–12, 14, 16–19, and 21–23 stand rejected under 35 U.S.C.
§ 103 over Wegner and Lee. Final Act. 4–8.
2. Claim 13 stands rejected under 35 U.S.C. § 103 over Wegner, Lee,
and Lutz. Final Act. 8–10.
3. Claims 15 and 24 stand rejected under 35 U.S.C. § 103 over Wegner,
Lee, and Kulkarni. Final Act. 10–12.
4. Claim 20 stands rejected under 35 U.S.C. § 103 over Wegner, Lee,
and Walsh. Final Act. 12–14.

2 All citations herein to the references are by reference to the first named
inventor/author only.
3 The present application was examined under the first inventor to file
provisions of the AIA. Final Act. 2.
4 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
July 30, 2019, the Reply Brief (“Reply Br.”) filed November 5, 2019, the
Final Office Action (“Final Act.”) mailed January 2, 2019, the Examiner’s
Answer mailed September 6, 2019, and the Specification (“Spec.”) filed
August 17, 2017.
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ANALYSIS
We have reviewed the rejections of Claims 5–24 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
Except with respect to Claims 7 and 20, we are not persuaded that Appellant
identifies reversible error. We adopt as our own the findings and reasons set
forth in the rejection from which this appeal is taken and in the Examiner’s
Answer, to the extent consistent with our analysis below. We provide the
following explanation to highlight and address specific arguments and
findings primarily for emphasis.

CLAIMS 5–12, 14, 16–19, AND 21–23: OBVIOUSNESS OVER WEGNER AND LEE.
Lid.
Claim 5, the sole independent claim, recites, inter alia, “a metallic
container (A) containing a cosmetic preparation (Z) and comprising a
rotation thread (A') and a lid (D) having a thread (D') and being made of the
same metal as the container (A), lid (D) being unscrewable and screwable
onto container (A).”
The Examiner finds Lee teaches a metallic, i.e., aluminum, storage
container for pharmaceutical products. Final Act. 6–7. The Examiner finds
Wegner discloses “the compositions are desirably provided as a ready to use
product in a manually operated dispensing container,” provided a pump head
or trigger spray mechanism, i.e., “lid.” Final Act. 6 (citing Wegner ¶ 84).
But, the Examiner finds Wegner does not teach the lid is attached via a
screw mechanism. The Examiner finds Lee teaches the base and lid
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comprise compatible threads. Id. at 7. The Examiner defines “lid” as: “a
movable cover for the opening of a hollow container.” Final Act. 14; Ans.
4.
Appellant contends the portion of Lee, relied upon by the Examiner,
does not fairly teach a lid. Appeal Br. 7 (quoting Lee ¶ 27) (“the connection
region of the storage container can be formed by a lock-in, lock-on or screw
connection. As a function of the materials which are used, the region for
connecting or fixing the metering device on the storage container is
configured here optimally.”). Appellant argues the “screw mentioned in
LEE is not for connecting or fixing a lid on the storage container but rather
is for connecting or fixing a metering device on the storage container.”
Appeal Br. 7.
The Examiner finds Lee discloses a hollow storage container and a
screw-on metering device which the Examiner finds meets the definition of
“lid.” Ans. 4.
Appellant contends “the Examiner [has not] pointed to any part of the
instant specification from which it might be concluded that the lid mentioned
therein may be in the form of a metering device and is not just a ‘regular’
(screwable) lid as shown in the drawings of the instant application.” Reply
Br. 2.
We agree with Appellant that an interpretation of a claim term must
be “consistent with the specification.” Reply Br. 2 (quoting In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997)). But we are equally mindful that in
interpreting the claims, however, limitations may not be imported into the
claims from the Specification. See SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appellant fails to direct our
attention to any specification disclosure that limits the claimed lid to “a
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‘regular’ (screwable) lid as shown in the drawings of the instant
application.” See Reply Br. 2. We are not persuaded the Examiner errs.
Made of the same metal.
Claim 5 recites, inter alia, that the lid is made of the same metal as the
container. Appellant contends “LEE does not contain any indication that the
‘metering device’ mentioned therein is made of the same metal as the
container.” Appeal Br. 9; see Reply Br. 3.
The Examiner finds Lee discloses “the storage container can be
formed from glass, metal, in particular aluminum.” Adv. Act.5 2.
Moreover, the Examiner finds the “material of the ‘metering device’ of Lee
that covers the storage container is a mere design choice.” Id. (quoting Lee
¶ 27) (“as a function of materials which are used, the region for connecting
or fixing the metering device on the storage container is configured here
optimally”).
Appellant contends Lee does not affirmatively recite the metering
device is made of the same metal as the container. Appeal Br. 9. Appellant
further argues it would be unlikely the metering device is made of metal.
The Examiner repeats the finding that Lee discloses the container may
be formed of metal and as a function of the materials used, the connecting
region of the metering device is configured optimally. Ans. 4–5.
Appellant argues the Examiner has not proffered evidence that
metering devices are made of metal and not plastic. Reply Br. 3.
We find Lee at least suggests the connecting region of the metering
device may be made of metal. We note Claim 5 recites “comprises,” which

5 Advisory Action mailed March 20, 2019.
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indicates the can and lid must contain metal, but that other materials are not
excluded. For example, Appellant discloses the claimed metal can further
comprise an “inner protective coating applied before the shaping of the can
having thermoplastically sealable or ultrasound-weldable properties.” Spec.
4, ll. 4–6. We are not persuaded the Examiner errs.

Claim 7
Claim 7 recites: “[t]he cosmetic product of claim 5, wherein the
preparation comprises up to 20 % by weight of lipophilic substances, based
on a total weight of the preparation.”
Appellant contends Wegner discloses a cosmetic product comprising
from 40 to 99% by weight of a C1–6 alcohol. Appeal Br. 10. Appellant
argues such lower alcohols are lipophilic and thus, Wegner teaches away
from Claim 7 which limits lipophiles to 20%. Id.
The Examiner finds “the hydroxyl group is referred to as a
hydrophilic (i.e., not lipophilic) group, because it forms hydrogen bonds
with water.” Ans. 5–6 (citing Encyclopedia Britannica (“Physical
Properties of Alcohols,” 2019, p. 3, last ¶)). The Examiner further finds
“methanol, ethanol, n-propyl alcohol, isopropyl alcohol and t-butyl alcohol
are all miscible with water (i.e., hydrophilic and not lipophilic).” Id. at 6.
The Examiner finds the low molecular weight alcohols of Wegner do not
read on the claimed lipophiles. Id.
Appellant disputes the Examiner’s characterization of compounds
having hydroxyl groups as limited to hydrophilic compounds. Reply Br. 3.
We find, contrary to the Examiner’s finding, that “[a]lcohols are also
the simplest form of amphiphilic molecules having both hydrophobic and
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hydrophilic segments”6 and thus are correctly found to be a lipohilic phase
as required by the claims. Whereas Claim 7 limits lipophiles to a
concentration of 20 wt.%, Wegner discloses a composition comprising a
minimum of 40 wt% lipophile. The Examiner did not provide a reason why
such value would have been obvious to one of ordinary skill in the art. We
decline to sustain the rejection of Claim 7.
Claim 19.
Claim 19 recites: “[t]he cosmetic product of claim 5, wherein the
preparation comprises hydrogenated coconut fatty acid glycerides.”
Appellant contends the Examiner’s citation to Wegner’s disclosure of
PEG-30 or PEG-80 glyceryl cocoates are ethoxylated compounds which fail
to “qualify as hydrogenated coconut fatty acid glycerides.” Appeal Br. 11.
The Examiner finds Wegner discloses: “low spreading emollients
include mono-, di-, and triglycerides and butters and hydrogenated versions
of seed and nut oils (e.g., coconut oil).” Ans. 6.
Appellant does not reply to this finding. We are not persuaded the
Examiner errs.
CLAIM 13: OBVIOUSNESS OVER WEGNER, LEE, AND LUTZ.
Claim 13 depends from Claim 5. Appellant contends Lutz fails to
cure the deficiencies of Wegner with respect to Claim 5.
Because Appellant fails to persuade us the Examiner errs with respect
to Claim 5, we are not persuaded the Examiner errs with respect to Claim
13.

6 Deepti Ballal and Walter G. Chapman, Hydrophobic and hydrophilic
interactions in aqueous mixtures of alcohols at a hydrophobic surface, The
Journal of Chemical Physics 139, 114706 (2013).
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CLAIMS 15 AND 24: OBVIOUSNESS OVER WEGNER, LEE, AND KULKARNI.
Claim 15 recites: “The cosmetic product of claim 5, wherein the
preparation comprises palmitic acid, stearic acid, myristic acid, arachidonic
acid, and oleic acid.”
The Examiner finds Wegner teaches wherein the composition further
contains skin conditioners such as carboxylic and fatty acids, but fails to
teach wherein the “acid is stearic, palmitic, myristic, arachidonic or oleic
acid.” Final Act. 11 (emphasis added). The Examiner finds Kulkarni
teaches that stearic acid and palmitic acid are both used as skin conditioners.
Id.
Appellant contends the preparation of Claim 5 comprises “palmitic
acid, stearic acid, myristic acid, arachidonic acid, and oleic acid.” Appeal
Br. 13. Appellant argues Kulkarni fails to teach the combination of the five
acids. Id.
The Examiner finds Kulkarni discloses the inclusion of cottonseed oil
which is known to contain each of the claimed acids. Ans. 6–7.
Appellant does not reply to this finding of the Answer. We are not
persuaded the Examiner errs.

CLAIM 20: OBVIOUSNESS OVER WEGNER, LEE, AND WALSH.
Claim 20 recites: “The cosmetic product of claim 5, wherein the
preparation comprises cera microcristallina.”
Appellant contends the Examiner has provided no motivation to
combine the microcrystalline wax of Walsh into Wegner’s alcohol-based
sanitizer composition. Appeal Br. 13–14. Appellant argues there is no
motivation to combine exfoliating particles into a sanitizer, particularly one
that claims an improved feel. Appeal Br. 14.
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The Examiner finds “Walsh teaches that such microcrystalline wax
particles advantageously aid in exfoliating the skin which provides a
reason/motivation for one of ordinary skill in the art to incorporate it into the
sanitizer composition of Wegner.” Ans. 7.
Appellant replies the Examiner has not explained why, nor provided
evidence, that it is commonly considered advantageous for a sanitizer
composition to have exfoliating properties. Reply Br. 3.
We agree that the Examiner did not meet the burden of providing
adequate reason or motivation to add the exfoliating particles to Wegner.

CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
5–12, 14,
16–19, 21–
23
103 Wegner, Lee 5, 6, 8–12,
14, 16–19,
21–23
7
13 103 Wegner, Lee, Lutz 13
15, 24 103 Wegner, Lee,
Kulkarni
15, 24
20 103 Wegner, Lee,
Walsh
20
Overall
Outcome
5, 6, 8–19,
21–24
7, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART