Ex Parte Dreher

Board of Patent Appeals and Interferences

Mar 22, 2007

09482773 (B.P.A.I. Mar. 22, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN D. DREHER
__________

Appeal No. 2007-0627
Application No. 09/482,773
Technology Center 1600
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ON BRIEF
__________

Before ADAMS, MILLS, and GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

VACATUR and REMAND TO THE EXAMINER

On consideration of the record we find this case is not in condition for
a decision on appeal. For the reasons that follow, we vacate1 the pending
rejections and remand the application to the examiner to consider the
following issues and to take appropriate action.

1 Lest there be any misunderstanding, the term “vacate” in this context
means to set aside or to void. When the Board vacates an examiner’s
rejection, the rejection is set aside and no longer exists.
Appeal No. 2007-0627
Application No. 09/482,773

Appellant appeals under 35 U.S.C. § 134 the examiner’s final
rejection of claims 1-11.2 Claim 1 is representative of the claims on appeal,
and reads 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 lines
and wrinkles a makeup composition comprising an interference pigment
having a blue or violet reflectance, combined with at least one metal oxide
pigment.
Claims 1-7 and 9-11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Kimura and Hineno. In addition, claim 8
stands rejected under 35 U.S.C. § 103(a) as being obvious over the previous
combination as further combined with Hurst.
For the following reasons, we vacate the rejections of record and
remand the application to the examiner for further consideration.
DISCUSSION
Claims 1-7 and 9-11 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Kimura and Hineno.
Kimura is cited for teaching a foundation comprising 9.0% by weight
of blue interference pigment and iron oxides, and 11% by weight of titanium
dioxide (Answer 4). Thus, Kimura teaches the composition of claim 1, as
well as a method of applying it to the skin. The examiner contends that “the
prior art composition, when used by the users with aged skin, obviously
renders the wrinkle minimizing effect which applicants claim.” Id.

2 Claims 1-34 are pending in the application, and all claims have been
rejected. Appellant is appealing only the rejection of claims 1-11.
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Application No. 09/482,773

The examiner notes that Kimura “fails to explicitly teach using the
composition to visibly reduce wrinkles or lines of the skin.” Id. Hineno is
cited for its teaching of a “composite powder comprising interference or
reflective pigment useful in covering wrinkle[s, sic] and improving skin
color.” Id. The examiner cites Example 6, which teaches a foundation
comprising serecite, iron oxides, and a composite powder. Id. The
examiner thus asserts that Hineno would motivate one of ordinary skill in
the art to use the composition taught by Kimura to enhance wrinkle-
coverage and improve skin color tone.
Appellant argues that if the Examiner is asserting that one practicing
the method of Kimura is inherently practicing the method of the claimed
method, “that is, that the method in the patent will function in the claimed
beneficial manner when topically applied to the skin, then the Examiner is
confusing an obviousness analysis with anticipation based on inherency”
(Br. 7). 3
We agree. The Examiner’s statement that “the prior art composition,
when used by the users with aged skin, obviously renders the wrinkle
minimizing effect which applicants claim,” makes it unclear if the statutory
basis of the rejection is 35 U.S.C. § 102 or 35 U.S.C. § 103. Because we are
of the opinion that the teachings of Kimura are pertinent to the patentability
of the claims, we vacate the pending rejections and remand the application
back to the examiner to further reconsider the patentability of the claims in
view of the following statements.

3 All references to the Brief are to the Supplemental Brief, dated February 21,
2006.
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Application No. 09/482,773

“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.
Thus, a prior art reference without express reference to a claim limitation
may nonetheless anticipate by inherency. ‘Under the principles of
inherency, if the prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.’ Moreover, ‘[i]nherency is
not necessarily coterminous with knowledge of those ordinary skill in the
art. Artisans of ordinary skill may not recognize the inherent characteristics
or functioning of the prior art.’” Nicholas V. Perricone, M.D. v. Medics
Pharmaceutical Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26
(Fed. Cir. 2005) (citations omitted).
Claim 1 is drawn to a method of reducing the appearance of lines and
wrinkles associated with aging of the skin, which comprises applying to the
skin exhibiting lines and wrinkles a makeup composition comprising an
interference pigment having a blue or violet reflectance, combined with at
least one metal oxide pigment. The statement in the preamble of “a method
of reducing the appearance of lines and wrinkles associated with aging of the
skin” is a statement of intended use and not a patentable limitation.
See Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305,
51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999) (“If . . . the body of the claim
fully and intrinsically sets forth the complete invention, including all of its
limitations, and the preamble offers no distinct definition of any of the
claimed invention’s limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of no
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Application No. 09/482,773

significance to claim construction because it cannot be said to constitute or
explain a claim limitation.”).
Thus, what is required by the claim is applying to skin exhibiting 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, 13 USPQ2d 1320, 1322 (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 lines and wrinkles” would be any
noticeable level of lines and wrinkles.
Both the examiner and appellant appear to agree that Kimura teaches
all of the limitations of claim 1 except for applying the makeup composition
containing the interference pigment having a blue or violet reflectance,
combined with at least one metal oxide pigment to skin exhibiting lines and
wrinkles.
As taught by Wrinkles and Wrinkle Treatments,4 “certain inevitable
problems happen,” one of which is wrinkles. Factors that can cause skin to
wrinkle are sunlight and UV radiation from the sun. Id. 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. Between 35-50, deeper
wrinkles occur, and laughter lines and crow’s feet also deepen. Thus, this
reference teaches that the appearance of wrinkles and lines is an inevitable

4 www.Skin-Care-reviews.com, printed February 15, 2007.
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Application No. 09/482,773

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. Thus, anytime the makeup
composition of Kimura is applied to the skin of a person 25 to 35 years of
age and older, it is inherently applied to skin exhibiting lines and wrinkles.
And even though the result, reducing the appearance of those lines of
wrinkles, is not a patentable limitation, it would inherently be achieved by
the makeup composition and its method of use taught by Kimura.
Appellant argues, citing Eibel Process Co. v. Minnesota & Ontario
Paper Co., 261 U.S. 45, 66 (1923), that “accidental occurrences of the
claimed subject matter, not intended and not appreciated, do not constitute
anticipation” (Br. 7). Appellant asserts that “[o]ne simply cannot ignore that
the [Kimura] reference does not teach applying the composition to skin
exhibiting lines and wrinkles for the specific purpose of reducing the
appearance of lines and wrinkles associated with aging of the skin.” Id.
Appellant’s arguments are not found to be convincing. As set forth in
Perricone, the ordinary artisan need not recognize the inherent
characteristics or functioning of the prior art. As set forth above, wrinkles
and lines are inevitable, inherent results of aging of the skin. Thus,
application of the makeup composition to the skin of a person 25 to 35 years
of age and older is inherent application to skin exhibiting lines and wrinkles.
Se, e.g., Perricone, 432 F.3d at 1379-80, 77 USPQ2d at 1328-29 (finding
claims inherently anticipated when all that was required was applying a
known composition to skin, wherein the skin suffered from damage that was
a natural result of the aging process of skin).
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Application No. 09/482,773

FUTURE PROCEEDINGS
The case is being returned to the jurisdiction of the examiner for
further action not inconsistent with this opinion.
If prosecution is resumed, we state that we are not authorizing a
Supplemental Examiner’s Answer.
VACATED and REMANDED

Donald E. Adams )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Demetra J. Mills )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )

LMG/lbg

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