Ex Parte Taneri et al

Board of Patent Appeals and Interferences

Apr 13, 2011

11260697 (B.P.A.I. Apr. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JIM TANERI, YI HSIN CHANG,
RAFAEL AKYUZ, and SUSAN GOLDSBERRY
__________

Appeal 2010-012041
Application 11/260,697
Technology Center 1600
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of preparing a body surface for epilation. The Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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Statement of the Case
Background
According to the Specification, it “has surprisingly been discovered
that, prior to epilation, by applying a composition that includes a fluid
vehicle and is adapted to leave a powder residue on the skin and hair, one or
more of hair removal, pain mitigation, and convenience of cleanup are
improved” (Spec. 1, ll. 29-32).
The Claims
Claims 1-6 and 9-23 are on appeal. Independent claims 1 and 21 are
representative and read as follows:

1. A method of preparing a body surface for
epilation, said method comprising prior to said
epilation, applying to said body surface a
composition that is adapted to leave a powder
residue on said body surface, wherein said
composition comprises from about 3% by weight
to about 60% by weight of a powder residue
generating material and a fluid vehicle.

21. A method of epilating a body surface, said
method comprising:
applying to said body surface a composition
that is adapted to leave a powder residue on said
body surface, wherein said composition comprises
a water-insoluble solid and a fluid vehicle; and
epilating said body surface after said
composition is allowed to dry.

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The issue
The Examiner rejected claims 1-6 and 9-23 under 35 U.S.C. § 103(a)
as obvious over Marron
1
and Kaleta
2
(Ans. 3-6).
The Examiner finds that “Marron discloses a numbing gel
composition used in preparation for a body hair removal procedure, such as
the hot wax method (abstract, lines 1-2), and the composition taught is a pain
blocker composition that comprises lidocaine to reduce the pain associated
with the body hair removal” (id. at 4).
The Examiner finds that Kaleta “discloses oil-in-water compositions
useful for topical application to the human skin that have an aesthetically
pleasing skin feel and are also useful for delivering a wide variety of active
ingredients . . . Kaleta et al. also teaches the formulation for the delivery of
anesthetic agents such as lidocaine” (id.).
The Examiner finds that Kaleta “is silent as to whether the ingredients
present in the taught composition will generate a powder residue, and
whether the composition is adapted to generate a powder residue on the
body” (id.). The Examiner finds that “one of ordinary skill in the art would
expect that a powder residue would necessarily form from the use of the
formulation taught by Kaleta” (id. at 4-5).
Appellants contend that “one skilled in the art could not expect to
preserve the low viscosity that appears to be required in Marron‟s gel, while
somehow incorporating Kaleta‟s emulsion (which appears to have, at
minimum a viscosity that is ten times as much)” (App. Br. 4-5). Appellants

1
Marron, US 2004/0077593 A1, published Apr. 22, 2004.
2
Kaleta et al., US 5,618,522, issued Apr. 8, 1997.
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contend that one “skilled in the art would reasonably conclude that these
two systems would not be compatible with one another. Alternatively, one
skilled in the art would reasonably conclude that in order to somehow force
them to be compatible, one would expect to lose the pleasant skin feel
advantages of Kaleta” (App. Br. 5).
Appellants contend that
if one were to somehow combine these dissimilar
compositions, that one would still not have a composition
that includes from about 3% by weight to about 60% by
weight of a powder residue generating material as required
in independent claim 1. Furthermore, there is no teaching or
suggestion within either of these references to adjust the
amount of powder generating residue to within Applicant's
claimed range.

(Id.)
Appellants contend that the “Office has failed to show a reason for
one skilled in the art, faced with countless possible skin care formulations,
each with various benefits as well as tradeoffs, to substitute the emulsions of
Kaleta for the numbing gels of Marron” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Marron and Kaleta render claims 1
and 21 obvious?
Findings of Fact
1. The Specification teaches that in “order to ensure that the
composition is adapted to leave a residue, the composition includes a
powder residue-generating material. Suitable powder residue-generating
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materials include water-insoluble solids, water-soluble salts, and
combinations thereof” (Spec. 3, ll. 6-8).
2. The Specification teaches that one “example of a suitable
water-insoluble solid includes inorganic particulates, such as . . . silicates . . .
Particularly preferred examples of inorganic particles include silicon oxides”
(Spec. 3, ll. 19-25).
3. The Specification teaches that “the powder residue-generating
material is present in the composition in a weight percentage relative to the
total composition of at least about 1%” (Spec. 3, ll. 11-13).
4. Marron teaches that there “is a need for an effective,
economical, topical, anesthetic composition for assisting in the field of
human body hair removal” (Marron 1 ¶ 0004).
5. Marron teaches “a topical anesthetic gel composition
comprising lidocaine, tetracaine, methylcellulose, and normal saline solution
for reducing pain associated with human body hair removal” (Marron 1 ¶
0002).
6. Kaleta teaches an “oil-in-water emulsion compositions useful
for topical application to human skin. These compositions have an
aesthetically pleasing skin feel and are also useful for delivering a wide
variety of active ingredients to the skin” (Kaleta, col. 1, ll. 6-10).
7. Kaleta teaches an “an oil-in-water emulsion composition useful
for topical application to human skin comprising: (a) from about 5% to
about 60% by weight of the total composition of an oil phase . . . (i) from
about 0.1% to about 10% by weight of the total composition of a particulate
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thickener selected from the group consisting of silica, treated silica” (Kaleta,
col. 2, l. 55 to col. 3, l. 1).
8. Kaleta teaches that the composition may comprise “from 0% to
about 10% by weight of the total composition of an aqueous phase
emulsifier” (Kaleta, col. 3, ll. 14-15).
9. Kaleta teaches that the “oil phase comprises from about 0.1% to
about 10% by weight of the total composition of a particulate thickener
selected from the group consisting silica, treated silica . . . Silica is also
known as silicon dioxide” (Kaleta, col. 5, ll. 38-55).
10. Kaleta teaches that “[a]nesthetic actives preferred for inclusion
in compositions of the present invention include pharmaceutically-
acceptable salts of lidocaine” (Kaleta, col. 11, ll. 13-15).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Where … the claimed and prior art products are
identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of
his claimed product. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain
and compare prior art products.
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In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
Marron teaches that hair removal may be painful, and suggests
application of an anesthetic composition to skin prior to human body hair
removal (FF 4-5).
Kaleta teaches a topical composition with “an aesthetically pleasing
skin feel and are also useful for delivering a wide variety of active
ingredients to the skin” (Kaleta, col. 1, ll. 6-10; FF 6). Kaleta teaches that
the composition may comprise up to 10% of silica as well as lidocaine (FF
7-10).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that it would have been obvious to apply the topical
composition of Kaleta prior to human body hair removal as suggested by
Marron, in order to minimize pain with an aesthetically pleasing skin feel
(FF 4-10). Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that “one skilled in the art could not expect to
preserve the low viscosity that appears to be required in Marron‟s gel, while
somehow incorporating Kaleta‟s emulsion (which appears to have, at
minimum a viscosity that is ten times as much)” (App. Br. 4-5). Appellants
contend that one “skilled in the art would reasonably conclude that these two
systems would not be compatible with one another. Alternatively, one
skilled in the art would reasonably conclude that in order to somehow force
them to be compatible, one would expect to lose the pleasant skin feel
advantages of Kaleta” (id. at 5).
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We are not persuaded. This argument of Appellants‟ mischaracterizes
the rejection. The Examiner‟s rejection does not suggest mixing or
combining the compositions of Kaleta and Marron. Instead, the Examiner
suggests that “it would have been prima facie obvious to one of ordinary
skill in the art at the time the invention was made to have used the emulsion
formulation taught by Kaleta et al. to deliver lidocaine” (Ans. 5). The
Examiner relies upon Marron to suggest a reason to deliver the lidocaine
comprising composition of Kaleta to a person about to undergo hair removal
(FF 5).
Appellants contend that
if one were to somehow combine these dissimilar
compositions, that one would still not have a composition
that includes from about 3% by weight to about 60% by
weight of a powder residue generating material as required
in independent claim 1. Furthermore, there is no teaching or
suggestion within either of these references to adjust the
amount of powder generating residue to within Applicant's
claimed range.

(App. Br. 5.)
We are not persuaded. Appellants‟ Specification teaches that powder
generating materials may include silicates and silicon oxides (FF 1-3).
Kaleta teaches that the composition may comprise “from about 0.1% to
about 10% by weight of the total composition of a particulate thickener
selected from the group consisting of silica, treated silica” (Kaleta, col. 2, l.
55 to col. 3, l. 1; FF 7). So Kaleta teaches incorporation of silica, which
Appellants own Specification acknowledges is a powder generating material
(FF 1-3, 7-9). With regard to the range, Kaleta‟s range of 0.1% to about
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10% for silica significantly overlaps the claimed range of “3% by weight to
about 60% by weight of a powder generating material” of claim 1. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of obviousness.)
Appellants contend that the “Office has failed to show a reason for
one skilled in the art, faced with countless possible skin care formulations,
each with various benefits as well as tradeoffs, to substitute the emulsions of
Kaleta for the numbing gels of Marron” (App. Br. 5).
We are not persuaded. The Examiner provided a very specific reason
why “the skilled artisan would use the emulsion formulation disclosed by
Kaleta et al. (the aesthetically pleasing skin feel)” (Ans. 8).
Appellants contend that the “Examiner has not however shown after
use thereof there would be a reasonable expectation of successfully epilating
the skin” (App. Br. 5).
We are not persuaded by the reasonable expectation of success
argument. Marron demonstrates successful use of a lidocaine containing
composition prior to epilation to anesthetize the skin (FF 4-5). Kaleta
teaches skin treating compositions which are aesthetically pleasing and
which contain lidocaine as an active ingredient (FF 6-10). Kubin stated that
“[r]esponding to concerns about uncertainty in the prior art influencing the
purported success of the claimed combination, this court [in O’Farrell]
stated: „[o]bviousness does not require absolute predictability of success …
all that is required is a reasonable expectation of success.”‟ In re Kubin, 561
F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903-
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904 (Fed. Cir. 1988)). Appellants have provided no evidence that Kaleta‟s
lidocaine containing composition would not have been reasonably expected
to function to anesthetize skin prior to epilation, and we agree with the
Examiner that “the skilled artisan would expect both formulations to have
the same effect (anesthetizing the skin) as both formulations contain the
same active ingredient” (Ans. 8).
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Marron and Kaleta render claims 1 and 21 obvious.
SUMMARY
In summary, we affirm the rejection of claims 1 and 21 under 35
U.S.C. § 103(a) as obvious over Marron and Kaleta. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-6, 9-20, 22,
and 23, as these claims were not argued separately

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

JNF

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