Ex Parte Dreher et al

Board of Patent Appeals and Interferences

Nov 15, 2010

11137060 (B.P.A.I. Nov. 15, 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.
11/137,060 05/25/2005 John D. Dreher 99.49C2 6824
23487 7590 11/15/2010
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
11/15/2010 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 and GEORGE J. STEPNIEWSKI
__________

Appeal 2010-007104
Application 11/137,060
Technology Center 1600
__________

Before LORA M. GREEN, MELANIE L. McCOLLUM, 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 1-5, 7, 8, 10-17, 19-23, and 25-42. We have
jurisdiction under 35 U.S.C. § 6(b).

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.
Appeal 2010-007104
Application 11/137,060

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STATEMENT OF THE CASE
Claims 1 and 21 are representative of the claims on appeal, and read
as follows:
1. A method of reducing the appearance of age-associated lines and
wrinkles on 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 in an amount in the
range of from about 1 to about 9%, at least one metal oxide pigment and at
least one inorganic, non-matte, non-spherical powder in an amount in the
range of from about 2 to about 15%, each by total weight of the
composition.

21. A skin-colored makeup composition comprising an interference
pigment having a blue or violet reflectance in an amount of from about 1 to
about 9%, at least one metal oxide pigment and at least one inorganic, non-
spherical, non-matte powder in an amount of from about 2 to about 15%,
each by total weight of the composition.

The following grounds of rejection are before us for review:
I. Claims 1-5, 7, 10-14, 19, 21-23, 25, 26, 29, and 35-42 stand
rejected under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Hineno2 and Kimura.3
II. Claims 8, 15-17, 20, 27, 28, and 30-34 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination of
Hineno and Kimura, as further combined with Hurst.4
We affirm.

2 Hineno, US 6,207,174 B1, issued Mar. 27, 2001.
3 Kimura, US 5,690,916, issued Nov. 25, 1997.
4 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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ISSUES
Has the Examiner established by a preponderance of the evidence that
the combination of Hineno and Kimura renders the method of claim 1
obvious?
And if yes, has the Examiner further established that the combination
of Hineno and Kimura as further combined with Hurst renders the method of
claim 8 obvious?

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 that
the use of “soft focus”- types of powders . . . . [which] are
spherical powders that are known in the cosmetic industry for
their light-scattering properties on the skin . . . . Such powders,
for example, spherical silicas, polyethylene, or
polymethylmethacrylate, operate on the principle of diffusing
light reaching the face in such a way that the overall appearance
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of the skin is somewhat blurred in the viewer’s eye, thereby
minimizing the viewer’s opportunity to detect lines and
wrinkles on the skin. Although foundations containing these
powders are quite effective and very attractive on the skin of
older women, on younger skin they can confer somewhat of an
opacity, so that the natural translucence of the young skin does
not show through as effectively as would be desired.

(Id. at 1-2.)
FF4 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
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.)
FF5 The Examiner’s statement of the obviousness rejection over the
combination of Hineno and Kimura may be found at pages 3-5 of the
Answer. As Appellants do not argue the claims separately, we focus our
analysis on claim 1, and claims 2-5, 7, 10-14, 19, 21-23, 25, 26, 29, and 35-
42 stand or fall with that claim. C.F.R. § 41.37(c)(1)(vii).
FF6 Specifically, the Examiner cites Hineno for its teaching “a composite
powder composition comprising interference or reflective pigments which is
effective in covering wrinkle[s] and improving skin color.” (Ans. 3.)
FF7 The Examiner notes that while Hineno exemplifies makeup
compositions comprising a red interference pigment, Hineno also discloses
the use of blue interference pigments. (Id. at 4.)
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FF8 Hineno is drawn to a powder coloring composition which contains the
interference pigments as a coloring component, wherein light interference is
caused by the powder layer on a coated surface. (Hineno, col. 2, ll. 17-28.)
FF9 Hineno teaches with respect to the use of the coloring composition in
makeup, wherein the “pigment component includes a component which
gives a specific color to a makeup product by absorption and scattering of
light, and a ‘light interference powder component’ that gives further various
colors by interference.” (Id. at col. 7, ll. 6-9.) Hineno gives the example of
using a pearlescent pigment, such as mica titanium, that can give
“pearlescence, iris or a metallic feeling by the interference color.” (Id. at
col. 7, ll. 9-13.)
FF10 Hineno teaches further that the composite powder, i.e., the powder
coloring composition, is usually incorporated by weight into the composition
in the range of 0.1 to 90.0%. (Id. at col. 7, ll. 36-43.)
FF11 Hineno specifically exemplifies makeup compositions containing a
light red interference color (composite powder I), and the compositions were
tested by 10 expert panelists. (See, e.g., id. at col. 14, Example 1.) Thus, in
Example 1, the composition of the Hineno (Example 1 in the Table) was
rated a 3.5 to 4.5 in effect of covering wrinkles, Comparative Example 1 was
rated 2.5 to 3.5, and Comparative Example 2 was rated 1.5 to 2.5. (Id. at
col. 15, Table 2.) The makeup composition of Hineno was also rated a 4.5
to 5.0 in its effect of improving skin color. (Id.)
FF12 The Examiner relies on Kimura for teaching “a foundation comprising
9 % blue interference pigment and iron oxides, 11.0 % by weight of titanium
dioxide, and sericite, other non-interference inorganic pigments.” (Ans. 4.)
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FF13 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.)
FF14 Specifically, Kimura teaches:
Namely, since a base having a high hiding ability, thick
application, or a cosmetic preparation having a large amount of
pigments is used with respect to wide and abnormal
hyperchromic portions of the skin caused by Ota’s nevus,
angioma, and the like, a natural skin color with a transparent
feel cannot be obtained.
Namely, the skin not only reflects light on its surface but
also acts as a semitransparent film with respect to the light. The
light passes through several millimeters of the skin, while the
appearance of the skin is determined by the light reflected on
each skin layer. Accordingly, the skin exhibits a particular
appearance with a transparent feel. However, when a large
mount of a pigment having a high hiding ability is used,
substantially whole the light is reflected on the pigment layer,
thus yielding an unnatural appearance without any transparent
feel.

(Id. at col. 1, ll. 48-63.)
FF15 Kimura thus teaches a “material having a low hiding power and a
transmitted light component which is in a complementary relationship with
the color tone of the abnormal hyperchromic portion of the skin.” (Id. at col.
3, ll. 13-16.) When the material of is used, Kimura teaches that
both the normal skin-color portion . . . and abnormal blue
hyperchromic portion . . . can be observed as substantially the
same color tone. Also, since the hiding power of the layer of
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the composition . . . itself is low, a considerable amount of light
impinges on the skin . . . so that a natural transparent feel
inherent in the skin itself can sufficiently be exhibited.

(Id. at col. 3, ll. 35-41.)
FF16 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.

(Id. at col. 20, ll. 31-39.)
FF17 The Examiner concludes that it would have been obvious to use the
blue interference pigment in the makeup compositions of Hineno because
Kimura specifically teaches the use of a blue interference pigment in a
makeup foundation, and have a reasonable expectation of success of
reducing the appearance of wrinkles on the skin as taught by Hineno. (Ans.
4.)
FF18 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. As Appellants do not argue the claims separately, we focus our
analysis on claim 8, and claims 15-17, 20, 27, 28, and 30-34 stand or fall
with that claim.
FF19 The Examiner notes that Hineno and Kimura fail to specifically teach
the use of bismuth oxychloride in the makeup composition. (Ans. 5.)
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FF20 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. (citing Hurst, p. 117).)
FF21 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
pigment developed was bismuth oxychloride, followed by the micas. (Id. at
117.)
FF22 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.
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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 absent clear
discouragement of that combination.” Syntex (USA) LLC v. Apotex, Inc.,
407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations deleted).

ANALYSIS
Appellants argue that a careful reading of Hineno shows “that there is
nothing in the patent which would lead one skilled in the art to believe that
any composition can be utilized for any purpose.” (App. Br. 5.) Appellants
argue that while Hineno teaches composite powders having a wide variety of
interference colors, and discloses compositions comprising red, blue, green,
and yellow interference pigments, the patent only discloses make-up
compositions comprising red interference pigments, and only associates
wrinkle coverage with makeup compositions comprising a red interference
pigment. (Id. at 5-6.) Appellants assert that Hineno “does not teach
expressly or implicitly that all interference pigments can be used to
camouflage wrinkles.” (Id. at 6.)
Appellants argue further that Kimura does not remedy the deficiencies
of Hineno as Kimura does not teach the use of a blue interference pigment to
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cover wrinkles. (Id.) In fact, Appellants assert, Kineno does not teach the
use of a blue interference pigment to hide defects generally, as asserted by
the Examiner, but teaches the use of an interference pigment to adjust skin
color so that a hyperchromic portion of the skin becomes inconspicuous.
(Id.) Appellants further assert that Kineno teaches that the skin color
adjusting compositions have a low hiding ability, which the ordinary artisan
would interpret as “transparency or low ability to camouflage skin defects.”
(Id. at 7-8.) Thus, Appellants argue “there is absolutely no disclosure in the
patent, either explicit or implicit, that the application to skin of a
composition containing either the red or blue interference pigment could
change the appearance of the topography of the skin surface and somehow
make age-furrowed skin appear smooth.” (Id. at 8.) According to
Appellants, the Examiner has relied upon impermissible hindsight to
combine the references, and thus has failed to establish a prima facie case of
obviousness. (Id. at 9.)
Appellants’ arguments have been considered, but are not deemed to
be persuasive. Claim 1 requires “reducing the appearance of age-associated
lines and wrinkles on the skin,” and thus any reasonable level of reduction
would read on the claim. A thorough reading of Hineno, as urged by
Appellants, demonstrates that makeup compositions that do not contain the
red interference pigment also have a discernable effect in reducing the
appearance of age-associated lines and wrinkles on the skin, which is
improved by adding the red interference pigment. As the red interference
pigment and the blue interference pigment both have the effect of light
interference, the ordinary artisan would reasonably expect that the use of
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either the red or blue interference pigment would reduce the appearance of
age-associated lines and wrinkles on the skin. See, e.g. In re O’Farrell, 853
F.2d 894, 903 (Fed. Cir. 1988) (noting that all that is required is a reasonable
expectation of success, not absolute predictability of success).
As to Appellants’ argument that in view of the teachings of Kimura
that the compositions have a low hiding ability, and thus would not
camouflage skin defects, such as wrinkles, Kimura exemplifies foundations
having both red and blue interference pigments. (See, e.g., FF15 and
Kimura, col. 20, Example 6.) As taught by Hineno, and acknowledged by
Appellants, makeup compositions containing the red interference pigments
have been shown to reduce the appearance of wrinkles, and while Hineno
only exemplifies makeup compositions containing a red interference
pigment, the teachings are not so limited. Thus, in view of the teachings of
Hineno and Kimura, we agree with the Examiner that it would have been
obvious to use the blue interference pigment, which Kimura specifically
provides an example of its use in foundation, in the foundation of Hineno, as
Hineno teaches the use of interference pigments generally in makeup
compositions such as foundation, with a reasonable expectation of success of
obtaining a composition that reduces the appearance of age-associated lines
and wrinkles on the skin.
As to the rejection over the combination of Hineno and Kimura, as
further combined with Hurst, Appellants reiterate the arguments made with
respect to the combination of Hineno and Kinura. (App. Br. 10-11.) Those
arguments are not found to be persuasive for the reasons set forth above.
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Appellants argue 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. 11 (citing Kimura, col. 17, ll. 19-25; col. 20, ll. 34-39; and col. 22,
ll. 18-23).) Appellants assert 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. 11.)
Appellants’ 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.
(FF21.) 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 Hineno and 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 interference pigment yielded transparent feel and natural finishing
before the addition of another foundation. (FF16.) Finally, we note that
Hineno specifically contemplates adding a pearlescent pigment to the
makeup composition. (FF9.)
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CONCLUSIONS OF LAW
We conclude that the Examiner has established by a preponderance of
the evidence that the combination of Hineno and Kimura renders the method
of claim 1 obvious. We thus affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) over Hineno and Kimura. As claims 2-5, 7, 10-14, 19, 21-23, 25,
26, 29, and 35-42 stand or fall with claim 1, we affirm the rejection as to
those claims as well.
We further conclude that the Examiner has further established that the
combination of Hineno and Kimura as further combined with Hurst renders
the method of claim 8 obvious. We thus affirm the rejection of claim 8
under 35 U.S.C. § 103(a) over Hineno and Kimura as further combined with
Hurst. As claims 15-17, 20, 27, 28, and 30-34 stand or fall with claim 8, we
affirm the rejection as to those claims as well.

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

cdc

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