Ex Parte Tazberik et al

Board of Patent Appeals and Interferences

Jan 15, 2010

10166455 (B.P.A.I. Jan. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERIKA TAZBERIK and SNEHAL SHAH
__________

Appeal 2009-0062891
Application 10/166,455
Technology Center 1600
__________

Decided: January 15, 2010
__________

Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a product for
cleansing the skin, and methods of using and promoting the product. The
Examiner rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The real party in interest is Neutrogena Corporation. (App. Br. 1 (filed
February 12, 2008)).
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STATEMENT OF THE CASE
Claims 1, 3, 5-15, 17, and 19-45 are pending and on appeal (App. Br.
1).2 Claims 1, 15, and 29, the independent claims, are representative and
read as follows:
1. A product comprising a composition wherein said
composition comprises at least one clay, at least one foaming
surfactant, and water and wherein said product comprises
instructions directing the user to apply said composition to wet
skin and then to remove said composition from the skin and
wherein said product further comprises alternative instructions
directing the user to apply said composition to dry skin, to
retain the composition on said skin, and to remove said
composition from said skin.

15. A method of promoting a product comprising a
composition where said composition comprises at least one
clay, at least one foaming surfactant and water, wherein said
method comprises directing the user to apply said composition
to wet skin and then removing said composition from said skin
and further comprises alternative instructions directing the user
to apply said composition to dry skin, to retain the composition
on said skin, and to remove said composition from said skin.

29. A method of cleansing the skin, said method
comprising:
(i) wetting the skin;
(ii) applying a composition comprising at least one
clay, at least one foaming surfactant, and water;
(iii) retaining said composition on the skin for at
least about one minute and less than about ten minutes; and
(iv) removing said composition from said skin;
wherein said composition comprises about 10 to about 50
percent, by weight, of said at least one clay.

2 Appeal Brief filed February 12, 2008.
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The Examiner cites the following documents as evidence of
unpatentability:
Glenn, Jr. US 6,080,707 Jun. 27, 2000
Zabotto neé Arribau US 4,637,933 Jan. 20, 1987

The following rejections are before us for review:
(1) Claims 1, 3, 5, 6, 9, 10, 13, 29-31, 33, 34, 41, and 45, rejected
under 35 U.S.C. § 102(b) as being anticipated by Glenn (Ans. 3-4);
(2) Claims 7, 8, 11, 12, 14-28, 32, and 42-44, rejected under 35
U.S.C. § 103(a) as being obvious in view of Glenn (Ans. 4-5);
(3) Claims 35-40, rejected under 35 U.S.C. § 103(a) as being obvious
in view of Glenn and Zabotto (Ans. 5-6).
ANTICIPATION
ISSUE
Appellants argue that the Examiner erred in finding that Glenn
anticipates the products recited in claim 1 and its dependent claims because
Glenn does not disclose “the inclusion of alternative instructions directing
the user to apply and retain the composition on dry skin. In order for a
reference to anticipate, it must disclose each and every feature of the claimed
invention” (App. Br. 4).
The Examiner responds that, “in In re Ngai, [367 F.3d 1336, 1339
(Fed. Cir. 2004),] the court held that where the only difference between a
prior art product and a claimed product is printed matter that is not
functionally related to the product, the content of the printed matter will not
distinguish the claimed product from the prior art” (Ans. 6).
Appellants argue that the Examiner erred in finding that Glenn
anticipates the methods recited in claim 29 and its dependent claims because
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Glenn’s product “contains 0.5 to 10 weight percent of stabilizer (that may be
clay), whereas the recited composition contains[]10 to about 50 percent, by
weight, of at least one clay” (App. Br. 4).
Moreover, Appellants argue, “step (iv) of the claimed method calls for
removing the composition from the skin. However, the Glenn, Jr. et al.
composition is a depositing cleanser and a portion of it is designed to be left
on the skin” (id.). Specifically, Appellants urge, Glenn’s compositions
contain stabilizers which “‘provide improved shelf and stress stability, but
allow the oil-in-water emulsion to separate upon lathering, and thereby
provide for increased lipid deposition onto the skin’” (id. at 5 (quoting
Glenn, col. 4, ll. 43-45)).
The Examiner responds that Glenn “in fact teaches rinsing the skin
after application of the composition. Therefore, the composition will be
removed from the skin after rinsing. Moreover, the ‘comprising’ language
of the claimed invention does not limit the composition to only components
that are wash-off” (Ans. 7(citing Glenn, col. 14, ll. 10-21)).
In view of the positions advanced by Appellants and the Examiner,
the issues with respect to this rejection are:
(a) whether Appellants have shown that the Examiner erred in
concluding that the alternative instructions recited in claim 1 do not render
that claim patentable over a prior art product that differs from the claim only
in failing to include those instructions,
(b) whether Appellants have shown that the Examiner erred in finding
that Glenn describes, within the meaning of 35 U.S.C. § 102(b), a method of
cleansing skin that uses a composition that contains “about 10 to about 50
percent, by weight, of said at least one clay,” as recited in claim 29, and
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(c) whether Appellants have shown that the Examiner erred in finding
that step (iv) of claim 29, which requires removing the cleansing
composition from the skin, encompasses Glenn’s process, in which the
cleansing composition is rinsed from the skin, but also in which the
cleansing composition contains a lipid moisturizer that is deposited onto the
skin.
FINDINGS OF FACT (“FF”)
1. Glenn discloses
a dual cleansing and lipid moisturizing liquid composition: 1)
which produces an abundant, stable, high quality lather, 2)
which is an effective skin cleanser, 3) which is very mild to the
skin and ocular mucosae, 4) which actually delivers an effective
amount of a lipid moisturizing agent to the skin of the user
during the wash; 5) which is non-sticky after use, 6) which is
stress stable; and 7) improved skin conditioning.

(Glenn, col. 2, ll. 49-56).
2. Glenn’s composition contains
(a) from about 0.5 parts to 10 parts of a stabilizer;
(b) from about 1 part to about 80 parts of lipid skin
moisturizing
agent; . . .
(c) from about 5 part to about 30 parts of surfactant . . .; and
(d) water . . . .

(Id. at col. 2, l. 60 through col. 3, l. 1.)
3. Glenn discloses that the “stabilizer is used to form a crystalline
stabilizing network in the emulsion that prevents the lipophilic skin
moisturizer agent droplets from coalescing and phase splitting in the
product. The network exhibits time dependent recovery of viscosity after
shearing (e.g., thixotropy)” (id. at col. 4, ll. 36-40).
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4. Glenn discloses that the “stabilizers used herein are not surfactants.
The stabilizers provide improved shelf and stress stability, but allow the oil-
in-water emulsion to separate upon lathering, and thereby provide for
increased lipid deposition onto the skin” (id. at col. 4, ll. 42-45.)
5. Glenn discloses that one “class of stabilizer which can be employed in
the personal cleansing compositions of the present invention comprises
dispersed smectite clay selected from the group consisting of bentonite and
hectorite and mixtures thereof” (id. at col. 6, ll. 42-45).
6. Glenn discloses that when “smectite clay is employed as the stabilizer
in the personal cleansing compositions of the present invention, it is
typically included in amounts ranging from about 0.1% to about 10%,
preferably from about 0.25% to about 8%, more preferably from about 0.5%
to about 5%” (id. at col. 6, ll. 52-56).
7. Glenn also discloses “a dispensing container containing the stress
stable lathering skin cleansing liquid composition. . . . [P]referred is an
article of manufacture wherein the dispensing container is a pump
dispenser” (id. at col. 13, ll. 53-58).
The dispensing container of the present invention
preferably contains instructions for moisturizing the skin during
the cleansing process, wherein the instructions instruct the user
to apply the compositions of the present invention to the skin
(e.g., the hands) and then rub or massage the skin cleansing
liquid composition on and around the skin for more than about
3 seconds, preferably at least about 15 seconds, more preferably
at least about 30 seconds, still more preferably at least about 60
seconds, and most preferably at least about 180 seconds.
Preferably the skin is pre-wetted before application of the skin
cleansing composition. Preferably, the instructions additionally
or alternatively instruct the user to wash the skin using the
compositions of the present invention at least 3 times a day,
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more preferably 5 times a day, most preferably at least 10 times
a day.

(Id. at col. 13, l. 59, through col. 14, l. 7.)
8. Glenn discloses that the “lipid skin moisturizing agent provides the
skin of the user with a moisturization benefit via deposition of the lipid on
skin during use” (id. at col. 10, ll. 49-51).
9. Glenn discloses that the amount of lipid deposited onto the skin can be
measured by a protocol that “is modeled after how skin cleansing products
are typically used by consumers” (id. at col. 13, ll. 43-44). A subject
prepares for the lipid deposition protocol as follows:
The subject wets the entire surface of the inner forearm
with 95-100 F. tap water for five seconds. The subject then
saturates a puff, such as that described in Campagnoli; U.S.
Pat. No. 5,144,744; Issued Sep. 8, 1992, and allows the puff to
drain for 10 seconds. One milliliter of product is applied to the
forearm of the subject and then the product is rubbed with the
puff for 10 seconds to generate lather. The lather is allowed to
remain on the forearm for fifteen seconds, followed by a
thorough rinse for fifteen seconds with the water flowing from
inner elbow to wrist. The subject arm is then pat dried with a
paper towel. The subject then allows the arm to “air” dry for 30
seconds.

(Id. at col. 14, ll. 10-21.)
10. The Specification states that Appellants’ packaged products should
contain instructions explaining how to use the cleansing compositions,
including directing the user to “remove the composition from the skin (e.g.,
to rinse the composition from the face with water)” (Spec. 3, ll. 12-13).
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PRINCIPLES OF LAW
“To 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).
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Regarding claim limitations directed to printed matter, in In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004), our reviewing court held that
combining, in kit form, a known product and printed instructions for using
the product did not render the product patentable, despite the fact that the
instructions recited a novel and unobvious process. The court explicitly
reaffirmed the principle that, when “printed matter is not functionally related
to the substrate, the printed matter will not distinguish the invention from the
prior art in terms of patentability.” Id. (quoting In re Gulack, 703 F.2d 1381,
1387 (Fed. Cir. 1983)).
With respect to ranges, “when a patent claims a chemical composition
in terms of ranges of elements, any single prior art reference that falls within
each of the ranges anticipates the claim.” Atlas Powder Co. v. IRECO Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999). Thus, “if granting patent protection
on the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” Id.
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ANALYSIS
We are not persuaded that the Examiner erred in finding that Glenn
anticipates claim 1, despite the fact that Glenn does not disclose the
alternative directions recited in claim 1. As pointed out by the Examiner,
and undisputed by Appellants, Glenn discloses a product that includes a
composition having all of the claimed ingredients -- clay, foaming
surfactant, and water.
Appellants do not point to any functional relationship between the
directions recited in claim 1 and the composition recited in the claim. We
therefore agree with the Examiner that the rejection of claim 1 is governed
by the holding in Ngai.
Accordingly, we affirm the Examiner’s rejection of claim 1 as
anticipated by Glenn, and the rejection of claim 1’s dependents, which were
not argued separately. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to the method recited in claim 29, we are not persuaded
that Glenn fails to meet the limitation requiring the composition recited in
that claim to “comprise[] about 10 to about 50 percent, by weight, of said at
least one clay.”
As noted above, Glenn discloses that its composition can contain
“from about 0.1% to about 10%” smectite clay (FF 6). Thus, Glenn
describes compositions that have about 10 percent clay by weight, an
amount of clay expressly encompassed by claim 29.
We are also not persuaded that Glenn fails to disclose a method of
cleansing the skin that includes the step of “removing said composition from
said skin” as recited in claim 29. We acknowledge, as Appellants argue, that
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Glenn specifically intends for a portion of the lipid component of its
composition to remain on the skin after cleansing (FF 4, 8).
As the Examiner points out, however, Glenn discloses a skin
cleansing method in which its compositions are applied to the inner forearm
of a subject, rubbed on the skin for 10 seconds, “followed by a thorough
rinse for fifteen seconds with the water flowing from inner elbow to wrist.
The subject arm is then pat dried with a paper towel” (FF 9 (emphasis
added)).
Appellants point to no evidence suggesting that an ordinary
practitioner in the skin cleansing art would interpret the term “removing [a
cleansing] composition from [the] skin” in claim 29 to require anything
beyond the “thorough rinse” described by Glenn (FF 6). To the contrary, the
Specification discloses that rinsing with water is a suitable method of
removing the composition (FF 10).
Moreover, given the fact that rinsing with water is a suitable method
of removing surfactants and clay from the skin (FF 10), we find it reasonable
to conclude that Glenn’s thorough rinsing would remove the surfactant and
clay components of Glenn’s composition from the skin. Once those
components were rinsed away, the skin would no longer have a composition
comprising clay and a foaming surfactant applied to it.
Thus, because the initially applied composition comprising clay and a
foaming surfactant would not be present on the skin after Glenn’s thorough
rinsing, we agree with the Examiner that Glenn describes a process that
includes a step which removes that composition from the skin.
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Accordingly, we affirm the Examiner’s rejection of claim 29 as
anticipated by Glenn, as well as its dependent claims, which were not argued
separately. See 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS -- GLENN
ISSUE
Claims 7, 8, 11, 12, 14-28, 32, and 42-44 stand rejected under 35
U.S.C. § 103(a) as being obvious in view of Glenn (Ans. 4-5).
Appellants urge that the Examiner erred in concluding that product
claims 7, 8, 11, 12, 14, and 42 would have been obvious in view of Glenn
(App. Br. 5). Specifically, Appellants reiterate their argument that Glenn
describes “a depositing cleanser that splits into two parts” (id. at 6). Thus,
Appellants urge, the “surfactant portion rinses off and the lipid portion
remains on the skin. This is different from a composition that remains in
tact [sic, intact] and rinses off, either after a short time (as a cleanser) or a
long time (as a mask). One does not suggest the other” (id.).
Moreover, Appellants argue, a “dual use, wet/dry product can only be
found in applicant’s disclosure” (id.). Therefore, Appellants urge, the
Examiner’s rejection is “based on improper hindsight” (id.).
Regarding method claims 15, 17, 19-28, 43, and 44, Appellants again
argue that Glenn is “solely concerned with a depositing cleanser” (id.).
Therefore, Appellants urge, Glenn “cannot, and does not, suggest to one
skilled in the art a method of promoting, i.e., advertising and the like, a
product for dual use as a cleanser and a mask, whether that product is the
same or different. This would require Glenn, Jr. et al. to abandon the intent
of their invention” (id.).
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Regarding method claims 32 and 44, Appellants again argue that
Glenn’s method, in which a lipid moisturizer is left on the skin, “cannot
suggest a method of cleansing in which the composition is removed, which
is required by step (iv) of the claimed invention. The composition of Glenn,
Jr. et al. would have to be changed so that none of it is left behind” (id.).
In view of these arguments, the issue with respect to this rejection is
whether the Examiner failed to make a prima facie case that an ordinary
artisan would have considered the claimed products and processes obvious
in view of Glenn.
FINDINGS OF FACT
11. Glenn discloses examples in which its cleansing compositions
produce a lather volume of 400 milliliters (Glenn, col. 19, ll. 5-30 (Examples
8 and 10)).
PRINCIPLES OF LAW
In KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court advised that, in determining whether the prior art supplied a reason for
practicing the claimed subject matter, the analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418; see also id. at 421 (“A
person of ordinary skill is . . . a person of ordinary creativity, not an
automaton.”).
The Court reasoned that “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill. Id. at 417.
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ANALYSIS
Appellants’ arguments do not persuade us that the Examiner failed to
make a prima facie case of obviousness. Claim 7 is representative of the
rejected product claims, and recites “[a] product of claim 1, wherein said
composition has a foam volume of at least 200 ml.”
As the Examiner points out, Glenn discloses the desirability of
abundant lather production for its compositions (FF 1), and also discloses
compositions that produce a foam volume of 400 milliliters (FF 11). In view
of these disclosures, we agree with the Examiner that an ordinary artisan
practicing Glenn’s disclosure would have been prompted to produce
clay-containing compositions with foam volumes of at least 200 ml, as
recited in claim 7.
As this conclusion is based only on the explicit teachings in the
reference, we are not persuaded that the Examiner improperly relied on
hindsight in making the rejection. Moreover, while Appellants urge that the
claimed “dual use, wet/dry” compositions are different than those suggested
by Glenn (App. Br. 6), Appellants point to no specific ingredients in the
claimed product that Glenn fails to teach or suggest. As noted above, the
instructions recited in claim 1 do not impart patentability to that claim, or its
dependents.
Accordingly, we affirm the Examiner’s rejection of claim 7 as
obvious in view of Glenn, and also affirm the rejection of claims 8, 11, 12,
14, and 42, which were argued with claim 7. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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With respect to claims 15, 17, 19-28, 43, and 44, which were argued
as a group, we select claim 15 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
As noted above, in addition to disclosing cleansing compositions that
contain clay and a foaming surfactant, Glenn discloses that its compositions’
packaging should direct a user to apply the compositions to the skin and then
“rub or massage the skin cleansing liquid composition on and around the
skin” for a period of time (FF 7).
It may be true, as Appellants appear to argue (App. Br. 6), that Glenn
does not explicitly disclose promoting its compositions for application
directly to dry, as opposed to pre-wetted, skin. However, Glenn does not
state that pre-wetting the skin is a requirement for the use of its cleanser, but
rather only discloses that pre-wetting is preferred (FF 7), reasonably
suggesting that that an ordinary artisan would have considered that Glenn’s
compositions useful for cleansing the skin even without pre-wetting.
As an ordinary artisan would have thus recognized the usefulness of
applying Glenn’s liquid cleanser to dry skin, we further agree with the
Examiner that the artisan would have been prompted to advise the user, on
the product’s packaging, that Glenn’s compositions were suitable for
application to dry skin. We are therefore not persuaded that Glenn fails to
suggest practicing the process recited in claim 15, and accordingly affirm the
Examiner’s obviousness rejection of that claim in view of Glenn, as well as
claims 17, 19-28, 43, and 44, which were argued in the same grouping as
claim 15.
With respect to claims 32 and 44, Appellants only argue, for the
previously stated reasons, that Glenn fails to teach the claimed step of
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removing the cleanser after it is applied to the skin (App. Br. 6). However,
for the reasons discussed above, we are not persuaded that Glenn fails to
teach that step. We therefore affirm the Examiner’s obviousness rejection of
those claims as well.
OBVIOUSNESS -- GLENN AND ZABOTTO
ISSUE
Claims 35-40 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Glenn and Zabotto (Ans. 5-6).
Appellants argue that the Examiner’s conclusion of obviousness is in
error because Zabotto “teaches a strictly rinse off cleansing composition. It
does not supply the information needed to arrive at the claimed
cleansing/mask composition. The combination of Glenn, Jr. et al. in view of
Zabotto . . . fails to teach or suggest applicants’ claims” (App. Br. 7).
In view of these arguments, the issue with respect to this rejection is
whether the Examiner failed to make a prima facie case that an ordinary
artisan would have considered the claimed products and processes obvious
in view of Glenn and Zabotto.
FINDINGS OF FACT
12. Zabotto discloses a “cosmetic composition for cleansing the skin, and,
in particular, for removing makeup, which takes the form of an oil-in-water
emulsion containing an oil phase, a water phase, and an emulsifying agent
and a mineral phase, said mineral phase being essentially constituted of a
clay of the kaolinite type” (Zabotto, col. 1, ll. 48-53).
13. Zabotto discloses that “[i]n a cleansing composition, according to the
invention, the clay content of the kaolinite type is from 1% to 30%,
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particularly from 1 to 12%, and preferably from 3 to 8% by weight, of the
total composition” (id. at col. 2, ll. 11-14).
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner failed to
make a prima facie case of obviousness. Claim 35 is representative of the
rejected claims, and recites “[a] product of claim 1, wherein said
composition comprises about 20 to about 40 percent, by weight, of said at
least one clay.”
In view of Zabotto’s disclosure that up to 30% by weight of clay is
useful in skin cleansing compositions (FF 13), for the reasons stated by the
Examiner (Ans. 5-6), we agree that an ordinary artisan would have been
prompted to include that amount of clay in Glenn’s skin cleansing
compositions. We therefore affirm the Examiner’s rejection of claim 35, as
well as claim 36-40, which were argued with claim 35.

SUMMARY
We affirm the Examiner’s rejection of claims 1, 3, 5, 6, 9, 10, 13, 29-
31, 33, 34, 41, and 45 under 35 U.S.C. § 102(b) as being anticipated by
Glenn.
We also affirm the Examiner’s rejection of claims 7, 8, 11, 12, 14-28,
32, and 42-44 under 35 U.S.C. § 103(a) as being obvious in view of Glenn.
We affirm the Examiner’s rejection of claims 35-40 under 35 U.S.C.
§ 103(a) as being obvious in view of Glenn and Zabotto.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

alw

PHILIP S. JOHNSON
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003