Ex Parte Dreher

Board of Patent Appeals and Interferences

Sep 16, 2010

09482773 (B.P.A.I. Sep. 16, 2010)

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.
09/482,773 01/13/2000 John D. Dreher 99.49 7449
23487 7590 09/16/2010
THE ESTEE LAUDER COS, INC
155 PINELAWN ROAD
STE 345 S
MELVILLE, NY 11747
EXAMINER
YU, GINA C
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
09/16/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN D. DREHER
__________

Appeal 2010-006829
Application 09/482,773
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-11 and 35.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claims 1, 6, and 8 are representative of the claims on appeal, and read
as follows:
1. A method of reducing the appearance of lines and wrinkles associated
with aging of the skin, which comprises applying to the skin exhibiting the
age-associated lines and wrinkles a makeup composition comprising an
interference pigment having a blue or violet reflectance, combined with at
least one metal oxide pigment.

6. The method of claim 1 in which the composition further comprises at
least one inorganic, non-matte, non-spherical powder in an amount in the
range of from about 2 to about 10 percent by weight of the total
composition.

8. The method of claim 1 in which the composition further comprises
bismuth oxychloride.

The following grounds of rejection are before us for review:
I. Claims 1-5, 7, 9, and 11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Kimura2 as evidenced by Wrinkles and
Wrinkle Treatments.3
II. Claims 1-7, 9-11, and 35 stand rejected under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Hineno4 and
Kimura.

2 Kimura, US 5,690,916, issued Nov. 25, 1997.
3 Wrinkles and Wrinkle Treatments, www.skincarereviews.com, printed on
February 15, 2007.
4 Hineno, US 6,207,174 B1, issued Mar. 27, 2001.
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III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Hineno and Kimura as further
combined with Hurst.5
We affirm.
ISSUE
Has the Examiner established by a preponderance of the evidence that
the method taught by Kimura inherently anticipates the method of claim 1?

FINDINGS OF FACT
FF1 According to the Specification, “the invention relates to compositions
that can enhance the facial appearance by diminishing the viewer’s ability to
perceive fine lines and wrinkles on the face.” (Spec. 1.)
FF2 The Specification teaches:
The inevitable process of aging, whether chronological or UV-
induced, strikes everyone, leaves the skin marked by a number
of afflictions, the most noticeable of which start as fine lines
and wrinkles, ultimately progressing to more discernable
furrows and lines. The concern is not limited to the older
person; even younger women now are more conscious of the
early development of lines, which may result from excessive
exposure to sun due to an active outdoor lifestyle.

(Id.)
FF3 The Specification teaches further that “[i]t has been unexpectedly
discovered that the presence of an interference pigment having a blue or
violet reflectance in a standard makeup composition, particularly a

5 Hurst et al., Face Powders, 116-121, in POUCHER’S, PERFUMES, COSMETICS
AND SOAPS, COSMETICS, VOLUME 3, (Hilda Butler ed., 1993).
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foundation, can create the illusion of substantially flawless skin, by
‘deceiving’ the observer’s eyes into not perceiving the lines and wrinkles
that are actually present on the wearer’s skin.” (Id. at 2.)
FF4 As to the inclusion of an inorganic powder, the Specification teaches:
The composition also preferably contains an inorganic powder.
It has been observed that, with the use of interference pigments
producing only a blue or violet reflectance color in combination
with metal oxides alone, these compositions do produce the
desired reduction in appearance of fine lines and wrinkles, but it
is an ‘all-or-nothing’ appearance: the viewer perceives the full
benefit of the reflectance from the interference pigment when
looking at the skin from the specular angle, or head-on;
however, when the same skin is viewed at an incident angle, the
reflectance from the interference layer is not visible, and only
the pigment is seen. Thus, the transition between these two
views is quite sharp, and therefore somewhat less than ideal.
However, it has been unexpectedly discovered that the
transition between viewing at specular and incident angles can
be softened by the inclusion in the formula of an inorganic
powders, such as a silica or polymethylmethacrylate. Although
the powder can be any of the type ordinarily used in cosmetics,
it is particularly preferred that the powder be a non-matte
powders, in an amount of about 2 to about 10%.

(Id. at 4.)
FF5 The Examiner’s statement of the anticipation rejection may be found
at pages 3-4 of the Answer. As Appellant states that the claims stand or fall
together with respect to each ground of rejection (App. Br. 3), we focus our
analysis on claim 1, and claims 2-5, 7, 9, and 11 stand or fall with that claim.
FF6 The Examiner finds, citing Example 13, that Kimura teaches “a
foundation comprising 9.0 % by weight of blue interference pigment and
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iron oxides, 11.0 % by weight of titanium dioxide, and sericite, other
noninterference inorganic pigments.” (Ans. 3.)
FF7 The Examiner also finds that “Kimura is directed to a treatment of
various hyperpigmentation disorders including angioma, red face, spots, and
freckles, which affect diverse racial groups.” (Id. at 8.)
FF8 Kimura “relates to skin-color adjusting method and composition by
which a hyperchromic portion of the skin caused by nevus, angioma, red
face, spots, freckles, and the like can become inconspicuous and a colored
titanium oxide coated mica suitable for that composition, which has a
transmitted light component with excellent dichroism and chroma.”
(Kimura, col. 1, ll. 11-17.)
FF9 Citing Wrinkles and Wrinkle Treatments, the Examiner finds that the
“claimed method of covering wrinkles of the skin as recited is inherently
practiced by using the prior art composition, since wrinkles and lines are
natural event and lines and wrinkles may be visible as early as 20-25 years
of age.” (Ans. 3-4.)
FF10 Specifically, as taught by Wrinkles and Wrinkle Treatments, “certain
inevitable problems happen,” one of which is wrinkles. (Wrinkles and
Wrinkle Treatments, page 1 of 6.) Factors that can cause skin to wrinkle are
sunlight and UV radiation from the sun, as well as smoking. (Id. at pages 2
and 3 of 6.)
FF11 Specifically, Wrinkles and Wrinkle Treatments teaches that as early as
20-25 years of age, vertical wrinkles on the forehead and between the
eyebrows may become visible, and that from 25-35 wrinkles begin to
deepen. (Id. at page 4 of 6) The reference teaches further that between 35-
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50, deeper wrinkles occur, and laughter lines and crow’s feet also deepen.
(Id.)
FF12 Thus, Wrinkles and Wrinkle Treatments teaches that the appearance of
wrinkles and lines is an inevitable event, and lines and wrinkles may be
visible as early as 20-25 years of age, but are clearly visible by 35 years of
age.

PRINCIPLES OF LAW
It is hornbook law that merely recognizing something that was not
known before is insufficient to render an old process again patentable. In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1351 (Fed. Cir. 2002). See also In
re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990); In re Omeprazole Patent
Litig., 483 F.3d 1364, 1373 (Fed. Cir. 2007).
In addition:
[A] prior art reference may anticipate when the claim limitation
or limitations not expressly found in that reference are
nonetheless inherent in it. . . . Inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in
the art. Artisans of ordinary skill may not recognize the
inherent characteristics or functioning of the prior art.
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999).
In MEHL, the patentee claimed a “method of hair depilation” utilizing
steps which had been described in a prior art publication. The prior art
method did not perform the steps for the purpose of hair depilation, but it
was determined that hair depilation would have been a necessary, albeit
unrecognized and inherent, consequence of carrying out the method. MEHL,
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192 F.3d at 1366. Although the claim preamble expressly required the
method to be performed for the purpose of hair depilation, the court did not
find it necessary that the article’s authors “appreciate the results” of their
process to constitute an anticipation of the claimed process. (Id.).
Similarly, in Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1378-79 (Fed. Cir. 2005), a method claim preamble which required
“preventing sunburn damage to exposed skin surfaces,” was found satisfied
by a prior art skin composition which had been applied to skin surfaces, but
for a different purpose. “[T]he new realization alone [that the old
composition would prevent sunburn damage] does not render the old
invention patentable.” Perricone, 432 F.3d at 1377.

ANALYSIS
Appellant argues that claim 1 has been amended to “make it clear that
the makeup compositions comprising interference pigment having a blue or
violet reflectance combined with at least one metal oxide are applied to skin
exhibiting ‘age-associated’ lines and wrinkles.’” (App. Br. 5.) Appellant
argues that Kimura does not anticipate the method of claim 1 because the
reference “fails to explicitly or implicitly teach ‘applying to the skin
exhibiting age-associated lines and wrinkles a makeup composition
comprising an interference pigment having a blue or violet reflectance
combined with at least one metal oxide pigment.’” (Id.)
Appellant asserts that the populations to which the makeup
composition of Kimura and that of the method of claim 1 are not necessarily
the same, as Kimura teaches applying the composition “to blue discolored
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skin in the lateral ocular area of an Asian female.” (Id.) Appellant asserts
that merely because that step “might possibly also involve the application of
the composition to age-wrinkled skin also is not adequate to support a
rejection based on anticipation by inherency.” (Id. at 5-6.)
Appellant further asserts that it is well known that discoloration may
occur in children, whose skin would not yet exhibit age associated wrinkles.
(Id. at 6.) Appellant also argues that Asian women protect themselves from
sunlight exposure, and thus “the so-called ‘normal progress of wrinkles by
age group’ disclosed in ‘Wrinkles and Wrinkle Treatments’ is not
necessarily, and in fact, is highly unlikely to be, applicable to the skin of
Asian females, or therefore to all skins.” (Id.)
Appellant’s arguments have been carefully considered, but are not
deemed to be convincing. First, while Appellant asserts that application of
the foundation of Kimura to Ota’s nevus, which is a patch of blue
discoloration, necessarily requires application to a female of Asian decent,
Appellant has presented no evidence that Ota’s Nevus exclusively occurs in
Asian females, and arguments of counsel cannot take the place of evidence
in the record. In re Scarbrough, 500 F.2d 560, 566 (CCPA 1974).
Second, Appellant appears to be arguing that Asian females do not
suffer from age-associated lines and wrinkles, but again, provides no
evidence to support that assertion. In addition, both Wrinkles and Wrinkle
Treatments and Appellant’s Specification teach that aging is an inevitable
process. (See FF2 and FF10.) As Wrinkles and Wrinkle Treatments makes
clear, it is not only UV exposure that causes age-associated lines and
wrinkles, but it is the aging of the skin, and other factors may contribute to
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the appearance of lines and wrinkles, which include not only exposure to
sunlight, but also include factors such as smoking and air pollution. (See
Wrinkles and Wrinkle Treatments, pages 2 and 3 of 6.)
Third, what is required by claim 1 is applying to skin exhibiting age-
associated lines and wrinkles a makeup composition comprising an
interference pigment having a blue or violet reflectance, combined with at
least one metal oxide pigment Giving the claim its broadest reasonable
interpretation, see In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (during ex
parte prosecution, claims are to be given their broadest reasonable
interpretation consistent with the description of the invention in the
specification), the phrase “skin exhibiting age-associated lines and wrinkles”
would encompass any level of age associated lines and wrinkles.
Thus, performance of the method of Kimura of applying, for example,
the foundation of Example 13, to skin having blue pigmentation, if applied
to skin of a person 25 years or older, one of ordinary skill would expect that
the application would reasonably be to a person having at some level skin
exhibiting age-associated lines and wrinkles. Such application would then
inherently reduce the appearance of those lines and wrinkles, even though
that result was unrecognized by Kimura.
For example, in Perricone, 432 F.3d at 1379, a claim to a method of
preventing sunburn damage by topically applying a composition to exposed
skin was found anticipated by a disclosure of a topical skin cream “[b]ecause
all skin surfaces are susceptible to sunburn damage.” Anticipation was
based the skin’s susceptibility to sunburn, not the requirement that, each
time the prior art topical cream was applied to exposed skin, sunburn was
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actually prevented. Likewise, we do not find it necessary that the
appearance of age-associated lines and wrinkles be reduced in every case. It
is enough that the aging process of skin is inevitable, making it certain that
some people following Kimura’s guidance would have inherently carried out
the claimed method.

CONCLUSION OF LAW
We conclude that the Examiner has established by a preponderance of
the evidence that the method taught by Kimura inherently anticipates the
method of claim 1. We thus affirm the anticipation rejection as to claim 1.
As claims 2-5, 7, 9, and 11 stand or fall with claim 1, we affirm the rejection
as to those claims as well.

ISSUE (Obviousness)
Has Appellant presented evidence of unexpected results, such that
when weighed with the evidence of obviousness, is sufficient to demonstrate
the unobviousness of claims 6 and 7?
Has the Examiner demonstrated by a preponderance of the evidence
that claim 8 is rendered obvious by the combination of Hineno, Kimura, and
Hurst?

ADDITIONAL FINDINGS OF FACT
FF13 The Examiner’s statement of the obviousness rejection over the
combination of Hineno with Kimura may be found at pages 4-5 of the
Answer. Again, we focus our analysis on claim 1 as Appellant states that
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the claims stand or fall together as to each ground of rejection. (App. Br. 3.)
We note further that the Appellant has presented separate arguments as to
claims 6 and 7. (See App. Br. 10.)
FF14 The Examiner’s statement of the obviousness rejection over the
combination of Hineno, Kimura, and Hurst may be found at pages 5-6 of the
Answer.
FF15 In addition, Kimura teaches that when a foundation sample according
to the invention was applied to the skin,
not only was [it] excellent in covering blue hyperchromic
portions of Ota’s nevus or the like (i.e. in skin-color adjusting
effect) but also yielded transparent feel and natural finishing.
Also, when a commercially-available powdery foundation was
applied after the application of this adjusting foundation, the
gloss of titanium oxide coated mica changed into a natural
transparent feel so as to yield a finishing feel which was
comparable to the normal portion.

(Kimura, col. 20, ll. 31-39.)
FF16 The Examiner notes that Hineno and Kimura fail to specifically teach
the use of bismuth oxychloride in the makeup composition. (Ans. 5.)
FF17 The Examiner finds that Hurst teaches that “bismuth oxychloride is
the first synthetic pearlescent pigment . . . developed to provide an improved
photosensitivity” and that pearlescent pigments may be used “to provide
‘translucent luster, or frosted effect, to enhance the wearer’s natural
complexion.’” (Id. at 6 (citing Hurst, p. 117).)
FF18 Specifically, Hurst teaches that “pearlescent pigments belong to the
interference category, although some combine interference with absorption.”
(Hurst, p. 116.) Hurst teaches further that the first synthetic pearlescent
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pigment developed was bismuth oxychloride, followed by the micas. (Id. at
117.)
FF19 The Examiner concludes that it would have been obvious to add the
bismuth oxychloride to the composition of Hineno and Kimura in order to
obtain a makeup composition with a luster or frosted effect, enhancing the
natural look of the user. (Ans. 6.)

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

Id. at 417.
It is proper to “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. See also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of applicant’s invention. “A statement that a
particular combination is not a preferred embodiment does not teach away
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absent clear discouragement of that combination.” Syntex (USA) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations deleted).
Moreover, it is well settled that unexpected results must be established
by factual evidence. Mere argument or conclusory statements in the
Specification does not suffice. In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).

ANALYSIS
As to claims 1-7, 9-11, and 35, Appellant only argues claims 6 and 76
separately. Thus, as to claims 1-5, 9-11, and 35, of which we choose claim 1
as representative, as we have already found that claim 1 is anticipated by
Kimura, and as anticipation is the epitome of obviousness, In re McDaniel,
293 F.3d 1379, 1385 (Fed. Cir. 2002), we affirm the obviousness rejection as
to claim 1.
As to claims 6 and 7, Appellant points to the paragraph bridging pages
4 and 5 of the Specification, arguing that they “have discovered that limiting
the compositions of the invention to no greater than 15%, and preferably, to
no greater than 10%, by weight of these inorganic powders, results in a more
translucent, natural appearance to the skin, created by the softening of the
transition angle,” as discussed in the Specification. (App. Br. 10.)
However, Appellant has presented no evidence of unexpected results,
and the conclusory statements in the paragraph bridging pages 4-5 of the
Specification (see FF) are not sufficient to demonstrate unexpected results.

6 Appellant also refers to claim 12 (App. Br. 10), which has been cancelled.
(See App. Br. 2.)
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As to claim 8, Appellant argues that Hurst does not remedy the
deficiencies of Kimura and Hineno as applied to claim 1. (See App. Br. 12.)
That argument is not found to be convincing for the reasons set forth above
with respect to the analysis of the anticipation rejection of claim 1.
Appellant argues further that the ordinary artisan would not have
added bismuth oxychloride to add luster as taught by Hurst, because Kimura
teaches that “after the application to [the] skin of the composition containing
the titanium dioxide coated mica (the interference pigment) a conventional
foundation was applied so that the gloss of the titanium oxide coated mica
was tempered or modulated to result in a natural transparent appearance so
as to yield a finish which was comparable to the normal portion of the skin.”
(App. Br. 12-13 (citing Kimura, col. 17, ll. 19-25; col. 20, ll. 34-39; and col.
22, ll. 18-23).) Appellant asserts that Kimura thus teaches that skin to which
the composition containing the interference pigment “appeared undesirably
glossy or lustrous,” and was “insufficiently natural-looking without covering
the compositions further with a conventional foundation.” (App. Br. 13.)
Appellant’s arguments are not convincing. As noted by the Examiner,
Hurst teaches that bismuth oxychloride is the first synthetic pearlescent
pigment, and may be used to enhance the wearer’s natural complexion.
(FF17.) Thus, we agree with the Examiner it would have been obvious to
combine it with the makeup composition containing the titanium dioxide
coated mica interference pigment as taught by Kimura in order to enhance
the wearer’s complexion. The fact that Kimura teaches adding another
foundation does not reach the level of a teaching away because Kimura
teaches that the composition containing the titanium dioxide coated mica
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interference pigment yielded transparent feel and natural finishing before the
addition of another foundation. (FF15.)

CONCLUSIONS OF LAW
We conclude that Appellant has not presented evidence of unexpected
results, such that when weighed with the evidence of obviousness, is
sufficient to demonstrate the unobviousness of claims 6 and 7. We thus
affirm the obviousness rejection over the combination of Hineno and
Kimura as to all of the claims.
We conclude further that the Examiner has demonstrated by a
preponderance of the evidence that claim 8 is rendered obvious by the
combination of Hineno, Kimura, and Hurst. We thus affirm the obviousness
rejection as to claim 8 over that combination as well.

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TIME PERIOD FOR RESPONSE
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)(iv)(2006).

AFFIRMED

alw

THE ESTEE LAUDER COS, INC
155 PINELAWN ROAD
STE 345 S
MELVILLE, NY 11747