Ex Parte Gross

Board of Patent Appeals and Interferences

Jul 31, 2006

09338729 (B.P.A.I. Jul. 31, 2006)

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for publication and is not binding precedent of the Board.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 DENNIS GROSS
__________

Appeal No. 2006-2306
Application No. 09/338,729
__________

ON BRIEF
__________

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

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims to methods of treating skin. The examiner has
rejected the claims as obvious over prior art. We have jurisdiction under 35 U.S.C. §
134. We reverse.
Background
Skin renewal treatments are widely used for improving the condition of aging skin
and treating dermatological conditions, such as acne. Specification, page 1. Generally,
skin renewal treatments involve the application of chemicals to the skin which remove
(“peel”) its outer keratinous layer, exposing underlying layers that are smoother and
appear younger. Id. In typical chemical treatments, the skin is contacted with an acid
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Application No. 09/338,729

(e.g., alpha-hydroxy acids) for a time duration which is effective for the outer layer of
skin to be “peeled” off. Id., pages 1-2. Chemical peels, however, are invasive and
irritating to the skin, requiring high concentrations of acid or other harsh peeling agents,
and long time periods in which the agent is in direct contact with the skin. Id., page 2.
As a consequence, they typically cause “pain and inflammation to the skin.” Id.
The claimed subject matter is directed to a skin treatment technology that is
described as being gentler to the skin than prior art methods which use high acid
concentrations. Id., page 3. The methods are directed to “a two-step acid peel” in
which a first acid composition is applied to the skin, and then a second alkaline
composition is applied over the acid in an amount to neutralize it. Id.

Discussion
Claims
Claims 11-15, 28, 29, 33-36, 40, 43, 44, 47, 49, 50, 70, 72, 73, 76-78, 85, 88,
and 90-117 are on appeal. Claim 90 is the broadest claim. It reads as follows:
90. A method for treating skin, comprising the sequential steps of:

a) applying to the skin a first dermatological liquid composition comprising
an effective amount of a skin renewal stimulating acid and a cosmetically
acceptable vehicle, wherein the pH of the first dermatological liquid
composition is between about 2.5 and about 4;

b) neutralizing the first dermatological liquid composition by applying to
the skin a second dermatological liquid composition comprising an alkaline
agent suitable for use in a skin care composition, about 0.1% to about
10% by weight of at least one surfactant/emulsifying agent and a
cosmetically acceptable vehicle, wherein the pH of the second
dermatological liquid composition ranges from greater than about 7 to
about 12;

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Application No. 09/338,729

c) allowing the second dermatological liquid compositions to dry on the
skin; and

d) applying to the skin a moisturizer, sun screen and/or makeup when
the first and second dermatological liquid compositions remain on the skin.

Claim 90 has four main steps. First, a first composition containing a “skin
renewal stimulating acid” having a pH that is “between about 2.5 and about 4” is applied
to the skin. Second, the acid is neutralized by a second composition that contains an
“alkaline agent” and “about 0.1% to about 10% by weight of at least one
surfactant/emulsifying agent.” The pH of the second composition is “greater than about
7 to about 12.” The second composition is allowed to dry on the skin in the third step.
Finally, in a fourth step, “a moisturizer, sun screen and/or makeup” is applied “when the
first and second dermatological liquid compositions remain on the skin.”
There are three additional independent claims on appeal, claims 40, 44, and 117.
Independent claims 40 and 44 are constructed like claim 90, but have further limitations,
inter alia, that the first and second dermatological liquids comprise a list of recited
components. Claim 117 is similar to claim 90, but rather than stating that the first and
second dermatological liquids remain on the face ((step d) in claim 90), it requires that
the liquids are not rinsed off before applying “moisturizer, sun screen and/or makeup.”

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Application No. 09/338,729

Obviousness under 35 U.S.C. § 103
Claims 11-15, 28, 29, 33-36, 40, 43, 44, 47, 49, 50, 70, 72, 73, 77, 78, 85, 88,
90-99, 101-106, and 109-117 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Davis1 in view of Rapaport2.
Davis describes a foamable cosmetic mask product for application to the skin.
Davis, column 1, lines 4-18; column 2, 65-column 3, line 10. The product comprises
two compositions which are separately applied to the face. Id. The first composition is
characterized as a “cream” and contains an effervescent agent, such as bicarbonate or
carbonate salts. Id., column 3, lines 10-40; column 7, lines 39-44. The second
composition contains an acid component. Id., column 3, lines 40-60. Any cosmetically
effective acid can be used, including alpha-hydroxy acids. Id., column 8, line 65-column
9, line 14. The second composition is also referred to as a “gel” or “gel activator.” Id.,
column 3, lines 60-65; column 4, lines 5-8. Both compositions are thickened to prevent
them from appreciably flowing after application to the face. Id., column 3, lines 11-13,
35-38, 41-43, and 61-65. When the compositions are applied sequentially to the face,
the reaction of the effervescent agent (first composition) with the acid (second
composition) liberates a gas that produces a “foaming action.” Id., column 1, lines 40-
47; column 2, 42-52. The resulting “residue is removed from the skin of the user by
means of a scraper or cloth.” Id., column 1, lines 47-49. In a preferred embodiment,

1 Davis, U.S. Pat. No. 5,720,949, issued Feb. 24, 1998
2 Rapaport, U.S. Pat. No. 5,505,948, issued Apr. 9, 1996

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the skin can be pretreated with moisturizers, prior to application of the cosmetic mask.
Id., column 2, lines 53-62.
Rapaport provides a skin peeling/exfoliation system that contains low
concentrations of peeling agents that allow them “to be left on the skin of the user for a
relatively extensive duration.” Rapaport, column 8, lines 35-37. According to Rapport,
their “invention … does not need to remove or neutralize the active skin peeling agent
because the reduced concentrations thereof can be left upon the skin.” Id., column 9,
lines 52-55. The peeling agents include acetone and acids, such as alpha-hydroxy
acids. Id., column 8, lines 59-62; column 14, Table 1-column 15, Table 2.1. After
application of the peeling agent, Rapaport states that a moisturizer or sunscreen can be
applied. Id., column 13, lines 15-20; 54-58; column 14, line 4.
The examiner argued that the combination of Davis and Rapaport renders the
claimed subject matter unpatentable. The reasoning was summarized as follows:
It would have been obvious to one of ordinary skill in the art
at the time the invention was made to have modified the skin
treatment method of Davis by substituting the Rapaport acid
peel/exfoliation composition for the acidic composition, as
motivated by Rapaport, because 1) Davis teaches that it
may be desirable to maintain an acidic composition on the
skin for a gentle peel; 2) and the skilled artisan would have
had a reasonable expectation of successfully achieving a
gentle acid-peeling effects while the composition remains on
the skin, as taught by Rapaport.

Answer, page 8.
Appellant traversed the examiner’s rejection, arguing that there was a lack of
motivation to have modified Davis by replacing the acid composition with Rapaport’s
composition.

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Application No. 09/338,729

This is because Rapaport specifically states that the skin-
peeling composition of Rapaport “is intended to be left upon
the skin of the user without the neutralization or removal
required in the prior art” (column 8, lines 46-48; emphasis
added). However, the effervescent composition of Davis
would neutralize any acid previously applied because the
effervescent composition contains an effervescent agent
such as the sodium, potassium or ammonium salt of
bicarbonate or carbonate, which is a base that reacts with
the acid (column 7, lines 32-35; column 10, line 66 to column
11, lines 19-20).

Brief, paragraph spanning pages 7-8.
The examiner bears the initial burden of showing unpatentability. See, e.g., In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie
case of obviousness requires evidence that the prior art disclosed or suggested all of
the elements of the claimed invention, and that those skilled in the art would have been
motivated to combine those elements with a reasonable expectation of success. See In
re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970); In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir. 1991).
We agree with Appellant that the examiner has not established motivation to
have modified Davis by the addition of a step of applying “moisturizer, sun screen
and/or makeup,” when the cosmetic mask remains on (claims 40, 44, and 99) or has not
been rinsed from (claim 117) the face. Brief, page 10, (A)(I)(iii).
According to the examiner, the motivation to have substituted Rapaport’s acid
composition in Davis’s facial mask was for the reason that “Davis teaches that it may be
desirable to maintain an acidic composition on the skin for a gentle peel.” Answer, page
8. The problem with this reasoning is that it does not provide a rationale for allowing the

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Application No. 09/338,729

acidic composition to remain on the skin while additional treatments to it are applied as
required in step d) of claim 90.
The examiner believed that “washing off or the removal” of Davis’s facial mask is
“an optional step.” Answer, page 12. However, Davis expressly states that the
“residue” which remains after the effervescent agent reacts with the acid “is removed
from the skin of the user by means of a scraper or cloth.” Davis, column 1, lines 47-49;
column 12, lines 2-4. Thus, we do not see how Davis’s removal step can be
characterized as optional.
The examiner further argued:
While Davis is directed to a [sic] using cream mask and gel
composition, the reference also teaches that lotion or cream
formulation that are massaged into the skin had been widely
used in the art. See Davis See col. 1, lines 27 - 32. The
reference also teaches that these compositions are not
removed. Thus whether the composition is in the form of
viscous cream mask or liquid, these conventional forms are
merely viewed as different means of carriers for the active
ingredients to the skin so that the reaction of the
effervescent agent and acid component can take place
thereon.

Answer, page 12.
In other words, the examiner concludes that when Rapaport’s acid composition is
substituted for Davis’s acid component, it would have been rubbed into the skin, and
remain there, because that’s the way lotions are ordinarily used.
However, we do not find support for the examiner’s characterization of Davis. In
the “Background” section, Davis clearly defines two different kinds of skin treatment
products: 1) those which are massaged into the skin, and 2) those (“face masks”) which
are applied to the skin and then removed.

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Application No. 09/338,729

The prior art products of the lotion or cream type are generally
massaged into the skin of the consumer. Accordingly they are not
removed. Face masks are also available, generally referred to as
“mud packs,” that once applied to the surface of the skin harden to
form a crustlike film, removable by soap and water.

Davis, column 1, lines 27-32.
Thus, lotion/creams which are designed to be massaged into the skin, and not
removed, are not interchangeable with the components of a facial mask, which is
intended to be removed from the skin. Davis describes its own invention as a
“cosmetic mask product” that is “removed from the skin,” consistent with the definition of
a facial mask in the patent’s “Background” section. Id., column 1, lines 35-37, 47-49.
The examiner’s suggested modification to Davis – putting a massagable cream into a
facial mask, and then leaving the entire concoction on the skin – would eliminate the
normal function of a facial mask that requires its removal from the face when the
treatment is complete. In our view, the proposed modification would render the prior art
facial mask “inoperable for its intended purpose,” and therefore there is no suggestion
or motivation to make it. In re Gordon, 733 F.2d 900, 901, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). In particular, the examiner’s suggestion to apply moisturizer on top of the
facial mask, without stripping it from the face, would make Davis’s cosmetic mask
product inoperable as a facial mask3.
The examiner also argued that “Rapaport does not in any way teach against
[using a] neutralization step in the skin peeling process. The reference merely teaches
that the neutralization is optional … See Rapaport, col. 11, lines 23-29.” Answer, page

3 This is especially the case since Davis describes its product as a “relatively viscous cream-gel mixture”
that apparently requires friction to remove it. Davis, column 11, lines 21-22.

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Application No. 09/338,729

13. This argument is misplaced. Rapaport describes its own acid composition as being
left in contact with the facial skin without removing or neutralizing it. Rapaport contrasts
this composition with the prior art, which requires application of the acid composition
“followed by the relatively quick neutralization or removal of peeling agents.” Rapaport,
column 11, lines 23-25. Thus, Rapaport distinguishes its skin treatment from the prior
art on the basis that it does not require that the acid component be neutralized or
otherwise removed from the skin.
In sum, the evidence of record fails to support a prima facie case of obviousness.
This rejection is reversed.

Claims 76, 100, 107, and 108
Claims 76, 100, 107, and 108 stand rejection as being obvious over Davis in view
Rapaport as applied to claims 11-15, 28, 29, 33-36, 40, 43, 44, 47, 49, 50, 70, 72, 73,
77, 78, 85, 88, 90-99, 101-106, and 109-117, and further in view of Linn4, Hahn5, and
McAtee6.
Claims 76, 100, 107, and 108 are dependent claims that require the
dermatological liquids to have specific components. The additionally cited references
are relied upon by the examiner for teaching these claimed components. Answer,
pages 9-10. We do not find that these additional references to overcome the
deficiencies as described above, nor to provide the requisite motivation to have
combined Davis and Rapaport. Thus, this rejection is also reversed.

4 Linn et al. (Linn), U.S. Pat. No. 4,797,273, issued Jan. 10, 1989
5 Hahn et al. (Hahn), U.S. Pat. No. 5,804,203, issued Sept. 8, 1998
6 McAtee et al. (McAtee), U.S. Pat. No. 5,811,111, issued Sept. 22, 1998

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Application No. 09/338,729

Summary
The rejections of claims 11-15, 28, 29, 33-36, 40, 43, 44, 47, 49, 50, 70, 72, 73,
76-78, 85, 88, 90-117 over prior art are reversed.

REVERSED

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

RMJ/jlb

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Application No. 09/338,729

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