Ex Parte Rhoades

Board of Patent Appeals and Interferences

May 28, 2008

09802425 (B.P.A.I. May. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DEAN RHOADES
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Appeal 2007-1611
Application 09/802,425
Technology Center 1600
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Decided: May 28, 2008
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Before TONI R. SCHEINER, DONALD E. ADAMS, and LORA M. GREEN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests reconsideration (rehearing) of the Board’s
Decision entered February 26, 2008 affirming the Examiner’s rejection of
appealed claims 5 and 7 as anticipated by or, in the alternative, as obvious
over the prior art.
The request for rehearing is granted.
Appeal 2007-1611
Application 09/802,425

DISCUSSION
In our Decision, we affirmed the rejection of claims 1-3, 5, 7, and 21-
23 under 35 U.S.C. §102(e) as anticipated by or, in the alternative, under
35 U.S.C. § 103 as obvious over Messenger (U.S. Patent 6,290,976 B1, filed
April 6, 2000, issued September 18, 2001). Appellant maintains that the
affirmance was “a misapprehension with respect to claims 5 and 7” (Req. 1).
During prosecution of the present application, the Affidavit of
inventor Dean Rhoades (“Affidavit”) was submitted under the provisions of
37 C.F.R. § 1.131 “to overcome the rejection [over] Messenger” (App. Br.
19). In our Decision, we found that the Affidavit “does not establish
reduction to practice of the invention of claim 1 prior to Messenger’s
effective filing date, and Messenger is available as prior art” (Decision 17-
18). In particular, we found that the Affidavit does not establish reduction to
practice of a composition comprising a base comprising at least about twenty
three percent moisturizer by weight (as required by claim 1), prior to
Messenger’s effective filing date (Decision 16-17).
Claim 5 is an independent claim directed to “[a] composition
comprising: a base in the form of a cream . . . and a plurality of particles of
corundum suspended in the base having an average particle size from 34 to
124 microns, . . . wherein the plurality of particles of corundum are at least
thirty five percent by weight of the composition.” Claim 7 depends from
claim 5 and further requires that the composition contain at least one of a
vitamin, a mineral, an antioxidant, a cleanser, and an emulsifier.
In his Appeal Brief, Appellant argued “[w]ith respect to the amount of
abrasive particles, the Affidavit sets forth a composition including 50 percent
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Appeal 2007-1611
Application 09/802,425

particles, which is at least 35 percent of a composition as set forth in Claims
5, 7 and 23” (App. Br. 21). In the present Request, Appellant argues that the
Affidavit “shows claim 5 enjoys an earlier priority date than that of
Messenger” (Req. 2), inasmuch as claim 5 does not “suffer the claim 1
limitations ‘a base comprising at least about twenty-three percent by weight in
moisturizer’ found not to have been reduced to practice in the Rhoades
Declaration” (Req. 2).
Having previously found that the formulation of Exhibit B of the
Affidavit “has a cream base and contains 50% aluminum oxide by weight,
with a particle size of 120 microns . . . and further contains vitamins and
emulsifiers” (Decision 22), we agree with Appellant that “Messenger may be
eliminated as prior art to claims 5 and 7 in view of the [Affidavit]” (Req. 2).
Appellant’s request for rehearing is granted and the Examiner’s
rejection of claims 5 and 7 under 35 U.S.C. § 102(e) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Messenger is
reversed.

REHEARING GRANTED

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