BEIERSDORF AG

Patent Trials and Appeals Board

Apr 1, 2021

2020001727 (P.T.A.B. Apr. 1, 2021)

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.
15/521,787 04/25/2017 Horst ARGEMBEAUX 3321-P50375 8022
13897 7590 04/01/2021
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
PALLAY, MICHAEL B
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/01/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST ARGEMBEAUX and ANKE HOFF

Appeal 2020-001727
Application 15/521,787
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JOHN G. NEW, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–39 and 41. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as BEIERSDORF
AG of Hamburg, Germany. Appeal Br. 3.
Appeal 2020-001727
Application 15/521,787
2
CLAIMED SUBJECT MATTER
The claims are directed to skin cleansing preparations. Claim 21 is
illustrative and reads as follows:
21. A skin cleansing preparation, wherein the preparation has
an abrasive effect, comprises less than 5 % of water and
comprises
(a) one or more lipids,
(b) one or more polyols,
(c) one or more oil-soluble surfactants,
(d) one or more kinds of abrasive particles, and
(e) one or more polymeric structurants.
Appeal Br. 18 (emphasis added to show limitation at issue).
REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Jutta Franklin et al.
(“Franklin”)
US 2016/0067152 A1 Mar. 10, 2016
Denis Alfred Gonzales et
al. (“Gonzales”)
US 2013/0039961 A1 Feb. 14, 2013
REJECTION(S)
The following rejections are before us for review:
(1) Claims 21, 24–26, 33, 34, and 39, under 35 U.S.C. § 102(a)(2) as
being anticipated by Franklin (Final Act. 3);2
(2) Claims 21–34, 39, and 41, under 35 U.S.C. § 103 as being
unpatentable over Franklin (Final Act. 4–7); and
(3) Claims 21–39 and 41, under 35 U.S.C. § 103 as being
unpatentable over Franklin and Gonzales (Final Act. 7–8).

2 Final Office Action entered December 31, 2018.
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ANTICIPATION
In rejecting Appellant’s claims 21, 24–26, 33, 34, and 39 as
anticipated, the Examiner cites only to claims 1, 12, and 13 of Franklin. See
Final Act. 3. In explaining the anticipation rejection, the Examiner does not
address the limitation in Appellant’s claim 21 requiring Appellant’s claimed
composition to comprise less than 5% of water. See id.
Appellant argues, for a number of reasons, that Franklin does not
describe a composition that comprises less than 5% water, as recited in
Appellant’s claim 21. Appeal Br. 8–11.
The Examiner responds that “claim 13 of Franklin et al., cited in
support of the anticipation rejection, does not recite water. Although the
specification of Franklin et al. discloses that an aqueous carrier is preferred
(paragraphs [0063], [0076]), this means that water is an optional constituent
and is not required therein.” Ans. 3.
Therefore, the Examiner finds,
[t]he omission of water from claim 13 of Franklin would lead a
person of ordinary skill in the art to immediately envisage a
composition likewise omitting water, and disclosure of an
optional constituent such as water in the specification of
Franklin et al. does not mandate inclusion of water therein.
Ans. 3 (citing Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412 F.3d 1319,
1322 (Fed. Cir. 2005).
We agree with Appellant that the Examiner has not shown sufficiently
that Franklin describes a composition that has less than 5% water, as recited
in Appellant’s claim 21.
It is well settled that, “[t]o anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
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Application 15/521,787
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In the present case, it is undisputed that Franklin’s claims 1, 12, and
13 do not include any explicit recitations regarding water in the recited
compositions. Claims 1, 12, and 13 of Franklin therefore do not include an
explicit disclosure of a composition that has less than 5% water, as recited in
Appellant’s claim 21, in combination with the other ingredients recited in
Appellant’s claim 21. The Examiner, moreover, does not advance a
persuasive rationale or evidence explaining specifically why the
compositions disclosed in Franklin’s claims 1, 12, and 13 would have been
viewed by a skilled artisan as being inherently water-free.
We are not persuaded that, by itself, the absence of any mention of
water in Franklin’s claims 1, 12, and 13 amounts to an affirmative disclosure
that the compositions described in Franklin’s claims 1, 12, and 13 are
necessarily water-free, as the Examiner contends. In the Upsher case cited
by the Examiner, the anticipating reference included an express disclosure
affirmatively stating that the ingredients excluded by the claims under
consideration were merely optional. See Upsher-Smith Labs. v. Pamlab, 412
F.3d at 1322. Here, in contrast, the Examiner does not identify in Franklin’s
claims 1, 12, and 13, or anywhere else in the reference, any explicit
disclosure affirmatively stating that water is merely an optional ingredient
that may be omitted from the described compositions.
Although not cited by the Examiner as support for the prima facie
case of anticipation, we acknowledge Franklin’s disclosure that “[a] suitable
cosmetic carrier is preferably understood to be an aqueous or aqueous-
alcoholic carrier.” Franklin ¶ 76. As Appellant argues, however, all of the
examples in Franklin contain significantly more than 5% water. See id.
¶¶ 210–220. We are not persuaded that an expressly described preference
for an aqueous or aqueous-alcoholic carrier equates to an affirmative
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teaching that water is merely an optional ingredient, which may be omitted,
particularly when the expressly described preference is viewed alongside
Franklin’s examples, all of which contain significantly more than 5% water.
Because the Examiner does not identify (nor can we discern), any express
disclosure affirmatively stating that water is merely an optional ingredient
which may be excluded from Franklin’s compositions, the Examiner does
not persuade us that a skilled artisan would have immediately envisaged the
compositions disclosed in Franklin’s claims 1, 12, and 13 as being water-
free.
In sum, for the reasons discussed, we are not persuaded that the
Examiner has shown that Franklin describes a composition having all of the
ingredients recited in Appellant’s claim 21, and in which the composition
has less than 5% of water, as recited in claim 21. We therefore reverse the
Examiner’s rejection of claim 21 and its dependent claims 24–26, 33, 34,
and 39, as being anticipated by Franklin.
OBVIOUSNESS
In rejecting claims 21–34, 39, and 41 under § 103 as being
unpatentable over Franklin by itself, the Examiner did not explain why
Franklin would have made it obvious to prepare a composition having less
than 5% water, as recited in claim 21 discussed above. See Final Act. 4–7.
Nor did the Examiner explain why Franklin would have made it obvious to
prepare a composition having all of the ingredients recited in claim 41, the
other independent claim on appeal, said composition having less than 1.5%
water, as recited in claim 41. See id.
Rather, in rejecting Appellant’s claims for obviousness over Franklin
by itself, the Examiner explained why, based on teachings in Franklin, a
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skilled artisan would have considered the additional ingredients and features
recited in Appellant’s claims 22–34, 39, and 41 to be obvious variations of
the composition described in claims 1, 12, and 13 of Franklin. See Final
Act. 4–7. In rejecting claims 21–39 and 41 for obviousness over Franklin
and Gonzales, the Examiner explained only why it would have been obvious
to include sucrose and sodium chloride as abrasive components in Franklin’s
compositions. See id. at 7–8.
Because the Examiner’s rejections for obviousness do not advance
any reasoning or evidence explaining specifically why a skilled artisan
would have considered it obvious to include, in Franklin’s composition’s,
less than 5% water as recited in Appellant’s claim 21, or less than 1.5%
water as recited in Appellant’s claim 41, we are not persuaded that the
Examiner has shown that compositions having all of the features recited in
Appellant’s claims would have been obvious. We therefore also reverse the
Examiner’s rejections under § 103.
CONCLUSION
For the reasons discussed, we reverse all of the Examiner’s rejections.

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Application 15/521,787
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21, 24–26,
33, 34, 39
102(a)(2) Franklin 21, 24–26,
33, 34, 39
21–34, 39,
41
103 Franklin 21–34, 39,
41
21–39, 41 103 Franklin, Gonzales 21–39, 41
Overall
Outcome
21–39, 41
REVERSED