11085820 (P.T.A.B. Dec. 28, 2015)

Ex Parte Kroepke et al

Patent Trial and Appeal BoardDec 28, 2015

11085820 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111085,820 03/21/2005 13897 7590 12/30/2015 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 FIRST NAMED INVENTOR Rainer Kroepke 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3321-P30856 9591 EXAMINER JUSTICE, GINA CHIEUN YU ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 12/30/2015 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): mail@Abel-IP.com hmuensterer@abel-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAINER KROEPKE, JENS NEILSEN, BORIS SYSKOWSKI, WIEBKE LINDEMANN, ANDREAS SCHAEFER, and SILKE HEINECKE 1 Appeal2013-000922 Application 11/085,820 Technology Center 1600 Before DONALD E. ADAMS, CHRISTOPHER G. PAULRAJ, and JACQUELINE T. HARLOW, Administrative Patent Judges. HARLOW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) involving claims to tapioca-containing cosmetic preparations. The Examiner rejected the claims as indefinite, anticipated, and/or obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is Beiersdorf AG (App. Br. 3). Appeal2013-000922 Application 11/085,820 STATEMENT OF THE CASE "The present invention relates to the use of tapioca in cosmetic preparations" (Spec. 1:6). Claims 74--98 are on appeal. Claim 74 is illustrative and reads as follows (emphasis added): 7 4. A cosmetic or dermatological emulsion, wherein the emulsion is a [water-in-oil (W/O)] emulsion, an [oil-in-water (O/W)] emulsion, a[ silicone-in-water (S/W)] emulsion or a [water-in-silicone (W /S)] emulsion and comprises one or more polyols, from 10 % to 35 % by weight of one or more lipids, and from 0.1 % to 25 % by weight of tapioca, each based on a total weight of the emulsion, and wherein the tapioca is present in an amount that is sufficient to reduce skin shine while preserving skin moisture when the emulsion is applied to shiny skin, thereby not resulting in a dry skin sensation. The claims stand rejected as follows: I. Claims 74--98 stand rejected under 35 U.S.C. Â§ 112, second paragraph as being indefinite. II. Claims 74, 75, 77, 82, 84, 85, and 88 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Bleckmann. 2 III. Claims 83-94 and 98 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Bleckmann. IV. Claims 79-81 and 95-97 stand rejected under 35 U.S.C. Â§ 103 (a) as being unpatentable over Bleckmann and Deserable. 3 V. Claims 74--98 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Rabe, 4 Natrasorb Bath, 5 and Martino. 6 2 Bleckmann et al., DE 101 57 542 Al, published Nov. 23, 2001. Citations to English equivalent, US 2005/0002888 Al, published Jan. 6, 2005. 3 Deserable et al., US 5,674,508, issued Oct. 7, 1997. 4 Rabe et al., US 2004/0086474 Al, published May 6, 2004. 5 NatrasorbÂ® Bath (28-1828) Tapioca Starch Technical Bulletin, National Starch and Chemical Co., (2001). 2 Appeal2013-000922 Application 11/085,820 Issue I. The Examiner has rejected claims 74--98 under 35 U.S.C. Â§ 112, second paragraph as being indefinite. We focus our discussion on independent claims 74, 84, and 89. The Examiner concludes that claims 74, 84, and 89 are indefinite because they each recite that tapioca must be present in an amount, by weight, falling within a quantitative range, while simultaneously requiring that tapioca be present in an amount sufficient to impart qualitative characteristics of skin shine reduction and skin moisture preservation (Ans. 3--4; 11-12). Appellants contend that a skilled artisan would "understand the instant claims to mean that tapioca is present in the claimed preparation in a concentration within the range recited in the corresponding claim and additionally in an amount (within the recited concentration range) which is sufficient to reduce skin shine while preserving skin moisture" (App. Br. 5). The issue presented is whether claims 7 4, 84, and 89 are indefinite. Analysis We agree with Appellants that the claims on appeal are not indefinite because a skilled artisan would readily appreciate that the claimed preparation requires an amount of tapioca that is both within a quantitative range (from 0.1%to25% by weight for claims 74 and 84, and at least 1 % for claim 89), and is also sufficient to reduce skin shine while preserving skin moisture (see Reply Br. 2-3). 6 Martino et al, US 5,288,493, issued Feb. 22, 1994. 3 Appeal2013-000922 Application 11/085,820 The Examiner does not provide evidence or reasoning to show that these conditions are mutually exclusive, or that a skilled artisan would be unable to determine whether a particular composition falls within the scope of the claims (see Ans. 3--4, 11-12). Instead, the Examiner states that if the amount of tapioca required to reduce skin shine while preserving skin moisture "depends on the presence of undefined components in a prior art emulsion, as appellant argues, the effect of the limitation is that those skill[ ed] in the art would not be able to determine the scope of the limitation on its face" (id. at 11-12). We note, however, that "[t]he test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1340-41 (Fed. Cir. 2005). Accordingly, because we conclude that a skilled artisan would understand claims 74, 84, and 89 as requiring an amount of tapioca that falls within a quantitative range (from 0.1 % to 25% by weight for claims 74 and 84, and at least 1 % for claim 89), and that is sufficient to reduce skin shine while preserving skin moisture, we reverse the indefiniteness rejection as to those claims. Because they depend from claims 74, 84, and 89, the rejection of claims 75-83, 85-88, and 90-98 is also reversed. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). 4 Appeal2013-000922 Application 11/085,820 Issue II. The Examiner has rejected claims 74, 75, 77, 82, 84, 85, and 88 35 U.S.C. Â§ 102(b) as being anticipated by Bleckmann. Because claims 74, 77, 82, 84, 85, and 88 are not separately argued, we focus our discussion on claim 7 4, which is representative. Claim 7 5 is separately argued, and therefore also addressed. The Examiner finds that Bleckmann teaches each and every aspect of claim 7 4, including "wherein the tapioca is present in an amount that is sufficient to reduce skin shine while preserving skin moisture when the emulsion is applied to shiny skin, thereby not resulting in a dry skin sensation" (Ans. 5---6, 12-13). In particular, the Examiner finds that the "present claims are anticipated by the Bleckmann emulsions which are in the same types of the claimed invention, and contain the same components in the same concentration, along with the amount of tapioca which falls within 0.1-25 % by weight [range]" (id. at 12-13). Regarding claim 75, the Examiner finds that the water-in-silicone oil emulsions of Bleckmann read on the water-in-oil emulsion recited in claim 75 because "the prior art silicone oils are conventional cosmetic oils. See Bleckmann, English equivalent (US 20050002888 Al), par.[0004]" (id. at 13). Appellants contend that "the Examiner has not explained why, let alone provided any evidence that in the compositions of Examples 2 and 5 of BLECKMANN tapioca is necessarily present in an amount that is sufficient to reduce skin shine while preserving skin moisture when the emulsion is applied to shiny skin" (App. Br. 11 ). 5 Appeal2013-000922 Application 11/085,820 With respect to claim 75, Appellants argue that water-in-silicone and water-in-oil emulsions are distinct, as illustrated by the recitation of both types of emulsion in the same claim (Reply Br. 6). The issue presented is whether Bleckmann anticipates the "wherein the tapioca is present in an amount that is sufficient to reduce skin shine while preserving skin moisture when the emulsion is applied to shiny skin, thereby not resulting in a dry skin sensation" aspect of claim 74, and the "wherein the emulsion is a W/O emulsion" aspect of claim 75. Findings of Fact We adopt the Examiner's findings concerning the scope and content of the prior art (Ans. 5-17), and repeat the following findings for emphasis. FF 1. The Specification states that Bleckmann "describes water-in- silicone oil emulsions comprising tapioca" (Spec. 2:29-30). FF 2. The Specification states that "[ u ]ses advantageous according to the invention are characterized in that tapioca is present in the preparation in a total amount of 0.1-25% by weight, based on the total weight of the preparation" (Spec. 3:6-8). The Specification exemplifies a preferred embodiment of the claimed water-in-silicone composition including 0.5% by weight tapioca (id. at 15, Example 12). FF 3. The Specification states that it was the object of the present invention to overcome the shortcomings of the prior art and to develop preparations which on the one hand result in an effective and long-lasting reduction of the skin shine, particularly of greasy skin, without removing excessively large amounts of water from the skin, and thus lead to a (subjectively) dry skin sensation. (Id. at 2: 12-15.) 6 Appeal2013-000922 Application 11/085,820 FF 4. Rleckmann teaches that "[t]he water-in-silicone emulsions according to the invention contain starch and/or starch derivatives in an amount of from 0.1 to 20% by weight and particularly preferably from 0.5 to 10% by weight, based on the total weight of the emulsion" (Bleckmann. at i-f 15). Bleckmann further discloses that "[t]he starches and/or starch derivatives preferred according to the invention are ... tapioca [ =manihot starch, e.g. Tapioca Pure/Tapioca Starch from National Starch]" (id. at i-f 16). FF 5. Bleckmann teaches water-in-silicone compositions comprising 0.5% by weight tapioca in Examples 2 and 5, depicted in the table below. "'' ,< 4 Laury I irxÂ·~hicÂ·:Â·ne -:: ~).~ .;:~-,~~(1~Â·r,,:~11 C\:;~~Â·~ Wi:(~.~.:;-.~ ~n~~Â·:.>1-::1:: ..?. !:5 t_;,;J}'>(Â·~~:,;J: (\',J'i'J n."!i.:..~$(1:1.'.:(' 'lo'~t:(~ l~_iJJ ;J !5 !5 ~:.~ Pr:;.)~Y:-]a: L-m ;:,). (\'.::' }.:)JJ5{.'.~ h~Â·:.:{'~~(.;:;: J5. ~s ~5 J$ ,;(1 Di: lt~ . .::,~-~i::..~{~ :-:::;:~ 25 2 2. .. 5 _. Ph~~--.:~ y; ~r;r.":i::~-~~! \X~r! e {:,5 ::. .. 5 Di. n.~.:.:~-3"!.i.:..x~ :-:::..~ ~ l_:5 l: .. 5 Ph n_:;Â·-<'"-~ y c::~Â·[;:;~.--~ :-.. ~ o __ i;; {:_5 C.5 c:.5 P~1.r; .... bÂ·~1-.":! {:_::: (; .â€¢. (I :L FÂ·~:-:1K,J{ 1Â·~ li yi:;t;--â€¢.:kÂ·~~ .... ; :1g o .:; (:_.:, (I :L !')gJ::1t:::. ic_.oq_,_, op ym,.Â·_< .,_. __ .:. cu U.:L b~l~"} ! ('~1.~b::: :11.;,~~ J\tÂ·:~-.;c....:.J"\l~"'!.1 ;:\.'I.!] fr:~'-: {~_I 1.: (J5 S1-:-lfi1_;_,5J ( h~.:_;si . .:_k ~ â€¢ _i;; ' (J ~ Pr"\..1FJli:::~~ ~Jy-:.--.:_i~ , -~ H:..â€¢~y~t)u..;: gl}'\.':"'.1~ ~~ ' (rly\.-.Â£1.:.â€¢l lC: J2 ~{J ..-'\.l~'f)~(.i":, """"~Â· [H n-â€¢1:i ~~: i IJJ ~d;...J:r~ l~.:.fo!}.fv i"l.5 $l_i::tÂ·Â· ':.i:l-.:.:~ Alu-.::_:;f!~l'-'-1 ~~~l'-. .'l! (1.5 ~:n~ :w L.:. w:~~~;:â€¢~! :Â·~, ]ii.~F).:.:-.\.1 X.t.\.â€¢S\:~~ Â·:).:' (1,5 Pc.:ri.l~c::-h: f~ . .$. q.~. q.~. l~.~. q.:,;.. \\';\~'' j"(!' 1(:-0:) 1.-, ~ ~ 1(~ ):) 1,:;o .:n l~1:) i!~ ~~il) (Id. at i-f 66.) The table discloses that Example 2 includes 18 % by weight cyclomethicone silicone oil and 19 % by weight polyols (propylene glycol, butylene glycol and glycerol), based on the total weight of the emulsion. The table also discloses that Example 5 includes 20% by weight cyclomethicone, and 20 % by weight polyols (id.). FF 6. Bleckmann teaches emulsions that "produce a silky light skin sensation in combination with a pleasantly dry, powdery residue on the skin" 7 Appeal2013-000922 Application 11/085,820 (id. at i-f 13). Rleclcmann fhrther discloses emulsions for use "as a lotion or cream for skincare, moisturizing the skin and/or smoothing the skin" (id. at ,-: 65). FF 7. Bleckmann teaches that water-in-silicone oil formulations "impart an elegant, silky skin sensation to the preparations. Relatively large amounts of humectants (moisturizers), in particular glycerol, can furthermore be incorporated in these emulsions without the preparation having a sticky sensory function" (id. at i-f 4 ). FF 8. The Examiner finds that the "present claims are anticipated by the Bleckmann emulsions which are in the same types of the claimed invention, and contain the same components in the same concentration, along with the amount of tapioca which falls within 0.1-25 % by weight" (Ans. 12-13). Analysis Claim 74 We agree with the Examiner that claim 7 4 is anticipated by Bleckmann (see id. at 5-6, 12-13; FF 1-8). In particular, we find that Bleckmann discloses water-in-silicone compositions comprising 0.5% by weight tapioca, 18o/o-20% cyclomethicone silicone oil, and 19o/o-20% polyols (FF 5). We find that Bleckmann also teaches emulsions that moisturize the skin and "produce a silky light skin sensation in combination with a pleasantly dry, powdery residue on the skin" (FF 6; see also FF 7). We further find that that Bleckmann inherently discloses the properties of reducing skin shine and preserving skin moisture recited in claim 7 4 (FF 8). Accordingly, we find that the Examiner has set forth a prima facie case of anticipation. 8 Appeal2013-000922 Application 11/085,820 We recognize, but do not find persuasive, Appellants' argument that skin shine reduction and moisture preservation are not inherent characteristics of the tapioca range recited in claim 74 (see Reply Br. 3-5). We agree with the Examiner that Bleckmann teaches "emulsions which are in the same types of the claimed invention, and contain the same components in the same concentration," and thus necessarily discloses the shine reduction and moisture preservation properties recited in claim 7 4. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) ("When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art."). We further find that Appellants have not adduced evidence or argument sufficient to defeat the Examiner's prima facie case of anticipation. [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Best, 562 F.2d 1252, 1254-1255 (CCPA 1977). Because Appellants present only hypothetical examples, and do not offer evidence to support a finding that the compositions disclosed by Bleckman do not possess the shine reduction and moisture preservation characteristics of the claimed product, we affirm the rejection of claim 7 4 as anticipated. Claim 75 Regarding claim 75, which recites, in relevant part, "wherein the emulsion is a W/O emulsion," we agree with Appellants that the Examiner 9 Appeal2013-000922 Application 11/085,820 erred in finding that the water-in-silicone emulsions of Rleckmann anticipate the water-in-oil emulsions recited in claim 75 (Reply Br. 5-6), because Bleckmann exclusively describes water-in-silicone emulsions (Bleckmann i-f 1 ), and because the instant claims use the terms water-in-silicone and water-in-oil to describe different types of emulsions (see claims 74, 75). Accordingly, we reverse the rejection of claim 75 as being anticipated by Bleckmann. III. Issue The Examiner has rejected claims 83-94 and 98 under 35 U.S.C. Â§ 103(a) as being unpatentable over Bleckmann. Because claims 83-87, 89, 91-93, and 98 are not separately argued, we focus our discussion on representative claim 83. We also address claims 88, 90, and 94, which are separately argued. The Examiner concludes that Bleckmann renders claims 83, 88, 90, and 94 obvious. The Examiner reiterates the findings described above concerning Bleckmann, and further finds that although claim 83 requires at least 1 % by weight of tapioca starch, "optimization of the weight amount of the starch in prior art example to arrive at this limitation would have only required ordinary skill in the art" (Ans. 9). The Examiner also finds that Bleckmann discloses that "the weight amounts of the starch derivatives other than tapioca starch may be varied so as to maintain 1.5 wt % of the total amount of starch component in an emulsion" (id.). The Examiner therefore concludes that "discovering a suitable amount of tapioca starch within the provided parameters of the reference, i.e., stabilization of the emulsion and 10 Appeal2013-000922 Application 11/085,820 obtaining pleasant, dry powdery sensation from the composition, would have been an obvious modification to a skilled artisan" (id.). Regarding claims 88 and 94, the Examiner finds that Bleckmann discloses emulsions that "do not result in greasiness and stickiness" (id. at 15). Regarding claim 90, the Examiner finds that "the prior art silicone oils are conventional cosmetic oils" (id.). Appellants advance arguments similar to those described above in relation to the anticipation rejection over Bleckmann. In particular, Appellants contend that "BLECKMANN neither teaches nor suggests that the starch or starch derivatives which are present in the water-in-silicone emulsions taught therein reduce, let alone are intended to reduce, skin shine" (App. Br. 12). Similarly, Appellants contend that Bleckmann fails to disclose an amount of tapioca sufficient to reduce the stickiness imparted by the recited polyols as required by claims 88 and 94 (id. at 16). With respect to claim 90, Appellants assert that the water-in-silicone compositions of Bleckmann do not satisfy the requirement for a water-in-oil emulsion set for the in claim 90 (id. at 17). The issue presented is whether Bleckmann renders obvious claims 83, 88, 90, and 94. Analysis Claim 83 We agree with the Examiner that Bleckmann renders claim 83 obvious (Ans. 9, 14; FF 1-8). As explained above, we conclude that the Examiner has set forth a prima facie case, unrebutted by Appellants, that Bleckmann teaches the shine reduction and moisture preservation aspects of 11 Appeal2013-000922 Application 11/085,820 claim 7 4, from which claim 83 depends. Furthermore, we do not find persuasive Appellants' assertion that "BLECKMANN makes it clear that the starch or starch derivatives mentioned therein serve a purpose which has nothing at all to do with reducing skin shine, i.e., are employed for the sole purpose of stabilizing water-in-silicone emulsions" (App. Br. 14). We are similarly unpersuaded by Appellants' argument, offered for the first time on reply, that the Examiner improperly relied on hindsight in finding that Bleckmann renders claim 83 obvious because "BLECKMANN neither teaches nor suggests that these properties are to be attributed to an amount of tapioca which not only is sufficient to stabilize the emulsions described therein but also is sufficient to reduce skin shine while preserving skin moisture when these emulsions are applied to shiny skin" (Reply Br. 7). As explained above, we find that that Bleckmann inherently discloses the functions of reducing skin shine and preserving skin moisture recited in claim 7 4 (FF 8). Moreover, even assuming, arguendo, that Appellants are correct that Bleckmann only teaches tapioca as a stabilizer for water-in- silicone emulsions, as explained above, "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Claims 88 and 94 We also agree with the Examiner that Bleckmann renders claims 88 and 94 obvious (Ans. 9, 15; FF 1-8). Claims 88 and 94 recite "wherein the tapioca is present in an amount which also is sufficient to reduce a stickiness imparted by the one or more polyols." We agree with the Examiner that 12 Appeal2013-000922 Application 11/085,820 these "claim limitations are met by the teachings of Rleckmann that the prior art emulsions do not result in greasiness and stickiness" (Ans. 15; see also FF 7, FF 6). In particular, we find that Bleckmann discloses a cosmetic preparation without "a sticky sensory function" (FF 7). We further find, for the reasons discussed above with respect to the shine reduction and moisture preservation properties of Bleckmann, that Bleckmann' s disclosure of emulsions of the same type as the claimed invention, and containing the same components in the same concentration, necessarily discloses an amount of tapioca sufficient to reduce a stickiness imparted by the one or more polyols as required by claims 88 and 94 (see FF 8). See In re Spada, 911 F.2d at 709. Claim 90 We agree with Appellants that the Examiner erred in concluding that Bleckmann renders claim 90 obvious (App. Br. 17; Reply Br. 8). Claim 90 recites "wherein the emulsion is a W /0 emulsion or an O/W emulsion." As explained above with regard to the anticipation rejection of claim 75, Bleckmann exclusively describes water-in-silicone emulsions (Bleckmann i-f 1 ), and the instant claims use the terms water-in-silicone, water-in-oil, and oil-in-water to describe different types of emulsions (see claims 89, 90). Accordingly, we reverse the rejection of claim 90 as being obvious under Bleckmann. IV. The Examiner has rejected claims 79--81 and 95-97 under 35 U.S.C. Â§ 103(a) as being unpatentable over Bleckmann and Deserable (Ans. 10-11). Claims 79-81 and 95-97 depend from claims 74 and 89, respectively. 13 Appeal2013-000922 Application 11/085,820 Appellants present no additional argument based on the teachings of Deserable, and rely on the same arguments addressed in Parts II. and III. above with regard to Bleckmann (see App. Br. 18). For the reasons discussed above, therefore, we affirm the rejection of claims 79--81 and 95- 97. v Issue The Examiner has rejected claims 74--98 under 35 U.S.C. Â§ 103(a) as being unpatentable over Rabe, Natrosorb Bath, and Martino. Because claims 74--87, 89-93, and 95-98 are not separately argued, we focus our discussion on claim 74, which is representative. Claims 88 and 94 are also addressed because they are separately argued. The Examiner finds that the cited combination discloses every aspect of claim 7 4. Of particular relevance to this appeal, the Examiner finds that Rabe discloses a cosmetic composition including 0.1 %-25% tapioca by weight, and wherein the tapioca is present in an amount sufficient to reduce skin shine while preserving skin moisture (Ans. 6-8, 15-16). Regarding claims 88 and 94, the Examiner finds that "Rabe teaches and suggests the suitable amount of starch as a grease absorbent agent. The burden is on appellant to show the prior art amount does not reduce stickiness produced by the polyols present in the prior art preparation, which appellant has not met" (Ans. 16). Appellants contend that the Examiner improperly relied on hindsight in finding that the cited combination renders claim 7 4 obvious, because "the invention of RABE is intended to solve a problem that is not related at all to 14 Appeal2013-000922 Application 11/085,820 a reduction of skin shine (let alone with a concomitant preservation of skin moisture)" (App. Br. 19). In this regard, Appellants point out that Rabe teaches a cosmetic kit including "a second composition which is to be applied after the first [tapioca-containing] composition" (App. Br. 20). Appellants assert that Rabe does not disclose that cosmetic preparations "should contain tapioca in a concentration that is sufficient to reduce skin shine while preserving skin moisture" (App. Br. 21 ). Appellants also argue that Rabe discloses tapioca only "as one of several examples of materials which may be used as the 'Absorbent Particles"' in the water-in-oil cosmetic compositions taught by Rabe (id. at 20). Appellants further note that "it also is true that absorbent starches are the only materials which are not also mentioned as examples of the 'Absorbent particles' which are present in the (water-in-silicone) compositions of Examples 6 to 8 of RABE" (id.). The issue presented is whether the cited prior art renders claim 74, 88, and 94 obvious. Findings of Fact FF 9. Rabe discloses: The compositions of the present invention may comprise as a cosmetic benefit agent one or more absorbents. These absorbents are useful for achieving the uptake of various fluids that are commonly present on the skin, e.g., perspiration, oil, and/or sebum. Suitable absorbents include, but are not limited to, ... tapioca starch[.]" (Id. at if 29.) FF 10. Rabe discloses: The methods of use for the cosmetic kit that is disclosed and claimed herein include, but are not limited to: ... methods of 15 Appeal2013-000922 Application 11/085,820 moisturizing skin; ... methods of preventing, retarding, and/or controlling the appearance of oil; ... methods of modifying the feel and texture of skin. (Id. at ii 115.) FF 11. Rabe discloses "Oil-In-Water First Compositions Including ... Shine Control Absorbents" (id. at ii 117). Rabe discloses an oil-in-water emulsion comprising 4% by weight of shine control "Absorbent Particles," 5% by weight of polyols (glycerin), and at least 17.2% by weight of lipids (isohexadecane, isopropyl isostearate, cetyl alcohol, stearic acid, dimethicone & dimethiconol) (id., Example 2). Rabe also discloses cosmetic oil-in-water emulsions comprising 2% by weight of shine control "Absorbent Particles," 5% by weight of polyol and 0.5% by weight of panthenol in Examples 4 and 5 (id., Examples 4, 5). Rabe further discloses that the "Absorbent Particles" are "for absorbing sebum and sweat[, and] include[e], but not limited to, ... Natrasorb Bath or Natrasorb HFB from National Starch" (id. at ii 117, FN 2). FF 12. Natrasorb discloses that Natrasorb Bath is a tapioca starch (N atrasorb 1). FF 13. Martino discloses steric acid is a "polar fatty material" (Martino 4:62---63). Analysis Claim 74 We agree with the Examiner that the combination of Rabe, Natrasorb, and Martino renders claim 74 obvious (Ans. 6-8, 15-17; FF 9-13). We find that Rabe discloses cosmetic oil-in-water emulsions comprising 4% by weight of tapioca, 5% by weight of pol yo ls, and at least 17 .2% by weight of 16 Appeal2013-000922 Application 11/085,820 lipids (FF 11-13). We fhrther find that Rabe discloses using such emulsions to moisturize the skin, to prevent, retard, or control the appearance of oil, and to modify skin feel and texture (FF 10). We also find that that Rabe inherently discloses the properties of reducing skin shine and preserving skin moisture recited in claim 74 (id.). Accordingly, we conclude that the Examiner has set forth a prima facie case of obviousness. We do not find persuasive Appellants' contentions that the Examiner improperly relied upon hindsight, or erred in finding that Rabe discloses cosmetic compositions including an amount of tapioca sufficient to reduce skin shine while preserving skin moisture. Rabe describes cosmetic compositions including the same components, in the same amounts, and having the same properties as recited in claim 74 (FF 9-13). Furthermore, we agree with the Examiner that Rabe discloses that "tapioca had been used in cosmetic emulsions as absorbents powders which improve the tactile property of the skin before the time of the present invention" (Ans. 16; see FF 9, 10). Rabe expressly teaches that absorbents such as tapioca starch are "useful for achieving the uptake of various fluids that are commonly present on the skin, e.g., perspiration, oil, and/or sebum" (FF 9). Rabe likewise discloses compositions useful for "preventing, retarding, and/or controlling the appearance of oil" (FF 10). Rabe's disclosure of additional features not described in the instant Specification does not negate the fact that Rabe teaches the presently claimed emulsions (see Ans. 16; compare App. Br. 18- 19). Similarly, we agree with the Examiner that in view of Rabe's disclosure of tapioca as one of only seven preferred species for oil-in-water cosmetic formulations, a skilled artisan "would have found it obvious that 17 Appeal2013-000922 Application 11/085,820 any sebum absorbent particles among the seven would be useful in formulating a shine reduction cosmetic composition" (Ans. 16; compare App. Br. 19--20). Rabe's exemplification of additional cosmetic compositions does not support a contrary result (see App. Br. 20). Claims 88 and 94 We agree with the Examiner that Rabe discloses "the suitable amount of starch as a grease absorbent agent," sufficient to reduce the stickiness imparted by the polyols as required by claims 88 and 94 (Ans. 16-17; see FF 9, 10). We also find that that Rabe inherently discloses the property of reducing stickiness imparted by polyols recited in claims 88 and 94 (FF 9-- 11 ). Accordingly, we conclude that the Examiner has set forth a prima facie case of obviousness. Moreover, we find that Appellants have not adduced evidence or argument sufficient to defeat that prima facie case. See In re Spada, 911 F.2d at 708. SUMMARY We reverse the rejection of claims 74-98under 35 U.S.C. Â§ 112, second paragraph as being indefinite. We affirm the rejection of claim 74 under 35 U.S.C. Â§ 102(b) as being anticipated by Bleckmann. Claims 77, 82, 84, 85, and 88 fall with claim 74. We reverse the rejection of claim 75 under 35 U.S.C. Â§ 102(b) as being anticipated by Bleckmann. We affirm the rejection of claims 83, 88, and 94 under 35 U.S.C. Â§ 103(a) as being unpatentable over Bleckmann. Claims 84--87, 89, 91-93, and 98 fall with claim 83. We reverse the rejection of claim 90 under 35 U.S.C. Â§ 103(a) as being unpatentable over Bleckmann. 18 Appeal2013-000922 Application 11/085,820 We affirm the rejection of claims 79--81 and 95-97 under 35 U.S.C. Â§ 103(a) as being unpatentable over Bleckmann and Deserable. We affirm the rejection of claim 74 under 35 U.S.C. Â§ 103(a) as being unpatentable over Rabe, Natrasorb Bath, and Martino. Claims 75-98 fall with claim 7 4. 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. Â§ 1.136(a)(l )(iv). AFFIRMED cdc 19