Ex Parte Wilke et al

Patent Trial and Appeal Board

Nov 23, 2016

12740504 (P.T.A.B. Nov. 23, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/740,504 12/13/2010 Katrin Wilke 3221-P37991 9079
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
11/28/2016 EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
11/28/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATRIN WILKE,
BJOERNA WINDISCH, PETER MAURER, CLAUDIA MUELLER,
NORMAN LIPINSKI, MICHAEL URBAN, NICOLE MUEHLEN,
SABINE HEINS, and ANNIKA MANNES1
Appeal 2014-009815
Application 12/740,504
Technology Center 1600
Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM and
JOHN E. SCHNEIDER, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to methods of
reducing required shaving frequency, softening hair to be shaved, and
reducing the cutting force required to shave. The Examiner rejected the
claims as anticipated and for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants state that “real party in interest in this appeal is Beiersdorf AG
of Hamburg, Germany.” App. Br. 3.
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STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 30-35, 42, 43, and 46, under 35 U.S.C. § 102(b), as
anticipated by Scavone2 (Final Action 2-4);
(2) Claims 30-38, 43—45, and 47-49, under 35 U.S.C. § 102(b), as
anticipated by Kux3 (Final Action 7);
(3) Claims 30-35, 40, 42, 43, and 46, under 35 U.S.C. § 102(b), as
anticipated by Kealey4 (Final Action 8—9);
(4) Claims 30-35, 39, and 46, under 35 U.S.C. § 102(b), as
anticipated by Ohmori5 (Final Action 8—9); and
(5) Claims 30-49, under 35 U.S.C. 103(a), for obviousness over
Scavone, Kux, Kealey, Ohmori, and Banowski6 (Final Action 10-12).
Claims 30, 32, and 43 are representative, and read as follows (App.
Br. 32, 34):
30. A method of at least one of reducing a required shaving
frequency, softening hair to be shaved, and reducing a required
shaving cutting force provided by a topical composition for shaving
human skin, wherein the method comprises incorporating in the
composition at least one acidic aluminum compound in an amount
which is effective for at least one of reducing the required shaving
frequency, softening hair to be shaved, and reducing the required
shaving cutting force provided by the composition.
32. The method of claim 30, wherein the required shaving cutting
force provided by the composition is reduced.
2 U.S. Patent No. 6,495,149 B1 (issued Dec. 17, 2002).
3 U.S. Patent No. 7,282,196 B2 (issued Oct. 16, 2007).
4 U.S. Patent No. 5,378,455 (issued Jan.3, 1995).
5 U.S. Patent App. Pub. No. 2003/0180335 A1 (published Sep. 25, 2003).
6 WO 2006/136330 A1 (published Dec. 28, 2006).
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43. The method of claim 30, wherein the composition is alcohol-
free, surfactant-free, and soap-free.
ANTICIPATION—SCAVONE
The Examiner found that Scavone describes a process, encompassed
by claims 30-35, 42, 43, and 46, of preparing a composition for application
to the underarms, the composition including an acidic aluminum compound
(e.g. aluminum chlorohydrate), wherein application of the compound results
in softened underarm hair, and makes shaving the underarm hair easier.
Final Action 2-4.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We select claim 30 as representative of the claims subject to this
rejection. 37 C.F.R. § 41.37(c)(l)(iv). Appellants’ arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner’s prima facie case of anticipation as to representative claim 30.
Scavone discloses “topical leave-on compositions, including
antiperspirant and deodorant compositions, that contain selected acid-stable
pantothenic acid derivatives.” Scavone 1:7—10.
As required by the sole step recited in Appellants’ claim 30, Scavone
discloses incorporating into those compositions from about 0.1 to about 30%
by weight of an antiperspirant active, which may be an acidic aluminum
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compound, aluminum chlorohydrate being among the preferred compounds.
Scavone 3:58—5:16.
As to claim 30’s requirement that the composition be “a topical
composition for shaving human skin” (App. Br. 32), as the Examiner points
out, Scavone discloses on a number of occasions that its compositions are to
be applied to the underarms (axilla), resulting in the softening of the
underarm hair, thereby making shaving easier. See, e.g., Scavone 10:17—22:
The antiperspirant and deodorant embodiments of the
present invention can also be applied topically to the axilla as
noted above, with the additional purpose or intention of
providing a method of softening or conditioning the underarm
hair, and thus also providing a method of enhancing the ease of
shaving such underarm hair.
Given the discussed teachings, we agree with the Examiner that
Scavone describes a process that includes all of the steps and features
required by claim 30.
Appellants’ arguments do not persuade us to the contrary.
In particular, Appellants do not persuade us that Scavone fails to
describe a process of incorporating an acidic aluminum compound into “a
topical composition for shaving human skin” as claim 30 requires. App. Br.
32. To the contrary, as discussed above, Scavone discloses that its
compositions are applied to the skin with the express purpose of enhancing
the ease of shaving underarm hair. Scavone 10:17—22. Because Scavone’s
compositions are compositions that enhance shaving, and because claim 30
broadly requires only that the recited composition be “for shaving human
skin” (App. Br. 32), we agree with the Examiner (Ans. 4) that Scavone’s
compositions meet the requirements of the composition recited in claim 30.
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That Scavone discloses that its compositions are “leave-on”
compositions, which Scavone expressly distinguishes from “rinse-off’
applications (see Scavone 3:37—32), does not persuade us that claim 30
excludes Scavone’s compositions. See App. Br. 9-10, 14—16; Reply Br. 2—
3.
Claim 30 does not limit the recited composition to a particular
structure, such as a shaving foam or gel. Rather, as noted above, the only
requirement in claim 30 regarding the recited topical composition is that it is
“for shaving human skin” (App. Br. 32). As noted above, Scavone’s
compositions are for that express purpose.
It is well settled, moreover, that 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).
As stated in In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989), the reason
for this rule of interpretation is that “during patent prosecution when claims
can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.”
In addition, “[ajbsent claim language carrying a narrow meaning, the
PTO should only limit the claim based on the specification or prosecution
history when those sources expressly disclaim the broader definition.” In re
Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004).
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In the instant case, Appellants do not direct us to a definition in the
Specification that expressly, or even implicitly, excludes Scavone’s topical
“leave-on” composition from being a composition for shaving human skin.
To the contrary, the Specification suggests that any topically applied
composition that prepares the skin for shaving by softening the hair, and
thereby eases shaving effort, is a composition for shaving human skin, as
required by claim 30. See Spec. 117 (“The object of the present invention is
therefore to provide cosmetic shaving preparations, which prepare the skin
in the armpits for shaving and which improve the sliding and cutting
properties during shaving.”).
Indeed, as the Examiner points out, Appellants’ claim 46 (which
depends from claim 30) expressly recites that the composition may be an
aerosol, a roll-on, or a stick (App. Br. 46), which are formulations expressly
described in Scavone. See, e.g., Scavone 10:35—38.
Accordingly, for the reasons discussed, Appellants do not persuade us
that, when claim 30 is given its broadest reasonable interpretation consistent
with Appellants’ Specification, the composition recited in claim 30 fails to
encompass Scavone’s compositions.
We acknowledge, but are not persuaded by, Appellants’ contention
that, because Scavone discloses that pantothenic acid derivatives produce the
skin-softening effect of its compositions, Scavone fails to anticipate claim
30. App. Br. 10-12. Regardless of what Scavone discloses about its
pantothenic acid derivatives, Scavone, as discussed above, describes
incorporating the ingredient required by claim 30 into a composition
encompassed by claim 30, and therefore describes a process that includes
every step and feature required by claim 30.
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We acknowledge, but are not persuaded by, Appellants’ contentions
that the holdings in Jansen v. Rexall Sundown Inc., 342 F.3d 1329 (Fed. Cir.
2003) and Rapoportv. Dement, 254 F.3d 1053 (Fed. Cir. 2001) demonstrate
that Scavone fails to anticipate claim 30. App. Br. 12—14; Reply Br. 3.
In both Jansen and Rapoport, the court found a lack of anticipation
because the prior art did not administer the drugs in question to the patient
populations required by the claims at issue. See Jansen, 342 F.3d at 1334
(“[T]he ’083 patent claims are properly interpreted to mean that the
combination of folic acid and vitamin Bi2 must be administered to a human
with a recognized need to treat or prevent macrocytic-megaloblastic
anemia.”); see also Rapoport, 254 F.3d at 1061 (“The Board also correctly
found that the [prior art] FPR Publication does not show administering
buspirone in any specific amounts to patients suffering from sleep apnea.”).
In contrast, in the instant case, Scavone describes incorporating an
ingredient, undisputedly encompassed by claim 30, into a composition
which, as discussed above, is also encompassed by claim 30. Scavone,
therefore, describes performing a process that includes every step and
feature required by claim 30.
In sum, for the reasons discussed, Appellants do not persuade us that a
preponderance of the evidence fails to support the Examiner’s finding that
Scavone anticipates claim 30. We, therefore, affirm the Examiner’s
anticipation rejection of claim 30 over Scavone. Because claims 31, 33—35,
42, and 46 were not argued separately, they fall with claim 30. 37 C.F.R. §
41.37(c)(l)(iv).
Claim 32 recites “[t]he method of claim 30, wherein the required
shaving cutting force provided by the composition is reduced.” App. Br. 32.
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Appellants, however, argue that the Examiner failed to explain why Scavone
describes a process that “necessarily reduces the required shaving
frequency” {id. at 16), which is actually the result required in claim 31,
which also depends from claim 30. See App. Br. 32.
In any event, contrary to Appellants’ arguments, the Examiner
explained that, because Scavone describes applying its aluminum-containing
compositions to the underarm hair, Scavone’s process will “will inherently
result in at least one of reducing a required shaving frequency, softening hair
to be shaved, and reducing a required shaving cutting force.” Final Action
4. Because Scavone discloses incorporating an ingredient encompassed by
claim 30 into a composition also encompassed by claim 30, we find that the
Examiner had sufficient evidence to find that the functional result of claim
30’s process, recited in either claim 31 or 32, would inherently be produced
by Scavone’s process.
Appellants have not advanced persuasive evidence to rebut the
Examiner’s reasonable finding of inherency. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977) (where examiner has reasonable basis to conclude that
functional limitation is inherently present in the prior art, applicants bear the
burden of proof to the contrary). Accordingly, we also affirm the
Examiner’s rejection of claim 32 over Scavone.
Claim 43 recites “[t]he method of claim 30, wherein the composition
is alcohol-free, surfactant-free, and soap-free.” App. Br. 34. The Examiner
found that Scavone describes compositions encompassed by claim 43 in its
Examples 1—5 and 7. Final Action 4.
Appellants’ arguments do not persuade us the Examiner erred in
finding that Examples 1—5 and 7 of Scavone anticipate claim 43. Each of
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Examples 1—5 includes aluminum zirconium tetrachlorohydrex glycinate
(Scavone 11:60-14:17), the same acidic aluminum compound used in
Appellants’ Example 6 (Spec. 1 85 (antiperspirant stick)), and Scavone’s
Example 7 uses aluminum chlorohydrate (Scavone 15:20). Appellants do
not direct us to any disclosure of an alcohol, surfactant, or soap in any of the
embodiments identified by the Examiner. App. Br. 17.
That Scavone might elsewhere describe composition embodiments
that contain alcohol, surfactant, or soap (see id.), does not negate Scavone’s
disclosure of specific embodiments that include all of the ingredients
required by claim 43, and which do not include the ingredients excluded by
claim 43. We, therefore, also affirm the Examiner’s rejection of claim 43
for anticipation over Scavone.
ANTICIPATION—KUX
In rejecting claims 30-38, 43—45, and 47-49 as anticipated by Kux,
the Examiner found that Kux describes topical antiperspirant compositions
that include aluminum chlorohydrate, avocado oil, octyldodecanol, and
dicaprylyl carbonate. Final Action 7 (citing Examples 1—8 of Kux).
We again select claim 30 as representative of the rejected claims. For
reasons similar to those discussed above as to Scavone, Appellants’
arguments (App. Br. 18—20; Reply Br. 3—4) do not persuade us that a
preponderance of the evidence fails to support the Examiner’s finding that
Kux discloses a process having all of the steps and features required by
claim 30.
Kux discloses “a cosmetic deodorant product which is a combination
of packaging and application means and a thin-liquid oil-in-water
microemulsion with a high content of antiperspirant salt, and can be applied
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evenly with the help of an atomizer pump.” Kux 1:14—18. As the Examiner
found, and as required by claim 30, Kux discloses incorporating aluminum
chlorohydrate into its compositions. Kux 13:6—67 (Examples 1—8). In
particular, Kux describes incorporating into its compositions a 50% aqueous
solution of aluminum chlorohydrate in amounts ranging from 16% to 40%
by weight of the total composition. See id. Accordingly, we agree with the
Examiner that Kux discloses incorporating into its compositions an
aluminum compound encompassed by claim 30, in an amount encompassed
by the claim.
Kux, unlike Scavone, does not expressly state that its compositions’
intended use is for improving shaving efficacy. Nonetheless, as discussed
above, claim 30 encompasses adding the aluminum compound to any
composition that is a “topical composition for shaving human skin.” App.
Br. 32. As discussed above, when given its broadest reasonable
interpretation consistent with the Specification, that language encompasses
any topically applied composition that will “prepare the skin in the armpits
for shaving and . . . improve the sliding and cutting properties during
shaving.” Spec. 117. As Appellants’ Specification makes clear, topical
compositions, in the form of an aerosols (like that described in Kux),
inherently prepare the skin in the armpits for shaving and improve the
sliding and cutting properties during shaving, and also inherently possess the
properties, recited in claim 30, of reducing the required shaving frequency,
softening hair to be shaved, and reducing the required shaving cutting force.
See Spec. 1 84 (Example 5).
Thus, we agree with the Examiner that, when Kux incorporates its
aluminum compounds into its compositions, it incorporates those
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compounds into compositions encompassed by claim 30. Moreover, for the
reasons discussed above, we are not persuaded that, when given its broadest
reasonable interpretation consistent with the Specification, claim 30
excludes the leave-on compositions Appellants assert are described by Kux.
Accordingly, because Appellants do not persuade us, for the reasons
discussed, that the Examiner erred in finding that Kux describes a process
having all of the steps and features required by claim 30, we affirm the
Examiner’s rejection of claim 30 as anticipated by Kux. Because they were
not argued separately, claims 31—38, 44, 45, and 47-49 fall with claim 30.
As noted above, claim 43 recites “[t]he method of claim 30, wherein
the composition is alcohol-free, surfactant-free, and soap-free.” App. Br. 34.
The Examiner found that Kux describes compositions encompassed by claim
43 in its Examples 1—8. Final Action 7.
Appellants’ arguments do not persuade us the Examiner erred in
finding that Examples 1—8 of Kux anticipate claim 43. As noted above, each
of Examples 1—8 includes aluminum chlorohydrate. Appellants do not direct
us to any disclosure of an alcohol, surfactant, or soap in any of the
embodiments identified by the Examiner. App. Br. 20—21.
That Kux might elsewhere describe composition embodiments that
contain alcohol, surfactant, or soap (see id.), does not negate Kux’s
disclosure of specific embodiments that include all of the ingredients
required by claim 43, and which do not include the ingredients excluded by
claim 43. We, therefore, also affirm the Examiner’s rejection of claim 43
for anticipation over Kux.
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ANTICIPATION—KEALEY
In rejecting claims 30-35, 40, 42, 43, and 46 as anticipated by Kealey,
the Examiner found that Kealey describes topically applied compositions
that include agents that retard or eliminate hair growth, and which also
include antiperspirant agents such as aluminum chlorohydrate, the
compositions being of particular value when applied to the underarm. Final
Action 8.
We again select claim 30 as representative of the rejected claims. For
reasons similar to those discussed above as to Scavone and Kux, Appellants’
arguments (App. Br. 22—24; Reply Br. 3—4) do not persuade us that a
preponderance of the evidence fails to support the Examiner’s finding that
Kealey discloses a process having all of the steps and features required by
claim 30.
Kealey discloses compositions “suitable for topical application to
mammalian skin for reducing, retarding or eliminating hair growth.”
Kealey, abstract. As the Examiner found, and as required by claim 30,
Kealey discloses incorporating aluminum chlorohydrate into its
compositions {id. at 6:6—9), “which can be of particular value if the
composition is to be used on the underarm (axilla).” Id. at 5:67—6:1. Kealey
discloses that “[sjuch compositions can thus be used regularly, for example
on a daily basis on the underarm, not only to prevent unwanted hair growth,
but also to reduce or eliminate perspiration and/or to reduce or eliminate
body malodour.” Kealey 6:1—5. Kealey includes an example of a roll-on
antiperspirant that contains a 50% aqueous solution of aluminum
chlorohydrate at a concentration of 40% by weight. Id. at 15:44—57
(Example 12).
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While Kealey states that its objective is to reduce the frequency of
required shaving (see id. at 1:23—30), Kealey does not appear to state
expressly state that its compositions improve shaving efficacy. Nonetheless,
as discussed above, claim 30 encompasses adding the aluminum compound
to any composition that is a “topical composition for shaving human skin.”
App. Br. 32.
As discussed above, when given its broadest reasonable interpretation
consistent with the Specification, that language encompasses any topically
applied composition that will “prepare the skin in the armpits for shaving
and . . . improve the sliding and cutting properties during shaving.” Spec.
117. As Appellants’ Specification makes clear, topical compositions, in the
form of roll-on antiperspirants (like that described in Kealey), inherently
prepare the skin in the armpits for shaving and improve the sliding and
cutting properties during shaving, and also inherently possess the properties,
recited in claim 30, of reducing the required shaving frequency, softening
hair to be shaved, and reducing the required shaving cutting force. See Spec.
11 81—83 (Examples 2—4).
Thus, we agree with the Examiner that, when Kealey incorporates its
aluminum compounds in its compositions, it incorporates those compounds
into compositions encompassed by claim 30. Moreover, for the reasons
discussed above, we are not persuaded that, when given its broadest
reasonable interpretation consistent with the Specification, claim 30
excludes the leave-on compositions Appellants assert are expressly
described by Kealey.
Accordingly, because Appellants do not persuade us, for the reasons
discussed, that the Examiner erred in finding that Kealey describes a process
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having all of the steps and features required by claim 30, we affirm the
Examiner’s rejection of claim 30 as anticipated by Kealy. Because they
were not argued separately, claims 31—35, 40, 42, and 46 fall with claim 30.
As to claim 43, the Examiner found that Kealey’s Example 12 is a
compositions that is free of alcohol, surfactant, and soap. Final Action 9.
Appellants’ arguments do not persuade us the Examiner erred in
finding that Example 12 of Kealey anticipates claim 43. As noted above,
Example 12 includes aluminum chlorohydrate. Appellants do not direct us
to any disclosure of an alcohol, surfactant, or soap in Kealey’s Example 12.
App. Br. 24-25.
That Kealey might elsewhere describe embodiments that contain
alcohol, surfactant, or soap (see id.), does not negate Kealey’s disclosure of
specific embodiments that include all of the ingredients required by claim
43, and which do not include the ingredients excluded by claim 43. We,
therefore, also affirm the Examiner’s rejection of claim 43 for anticipation
over Kealey.
ANTICIPATION—OHMORI
In rejecting claims 30-35, 39, and 46 as anticipated by Ohmori, the
Examiner found that Ohmori describes topically applied deodorant
compositions that include aluminum chlorohydrate and liquid paraffin.
Final Action 9.
We again select claim 30 as representative of the rejected claims. For
reasons similar to those discussed above as to the other references,
Appellants’ arguments (App. Br. 26—27; Reply Br. 4—5) do not persuade us
that a preponderance of the evidence fails to support the Examiner’s finding
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that Ohmori discloses a process having all of the steps and features required
by claim 30.
Ohmori discloses “an external composition for skin comprising an
alkylene oxide derivative as an effective ingredient and having a
moisturizing effect, a rough skin improving effect, a favorable feeling of
use, a transdermal absorption promoting effect, a durability of refreshing
effect, and no skin stimulation.” Ohmori, abstract. As the Examiner found,
and as required by claim 30, Ohmori discloses incorporating aluminum
chlorohydrate (23% by weight) into its compositions when the compositions
are in the form of a deodorant wax type stick. Id. 1280.
As discussed above, claim 30 encompasses adding the aluminum
compound to any composition that is a “topical composition for shaving
human skin.” App. Br. 32. As also discussed above, when given its
broadest reasonable interpretation consistent with the Specification, that
language encompasses any topically applied composition that will “prepare
the skin in the armpits for shaving and . . . improve the sliding and cutting
properties during shaving.” Spec. 117.
As Appellants’ Specification makes clear, a topical composition in the
form of an antiperspirant stick (like that described in Ohmori) inherently
prepares the skin in the armpits for shaving and improves the sliding and
cutting properties during shaving, and also inherently possesses the
properties, recited in claim 30, of reducing the required shaving frequency,
softening hair to be shaved, and reducing the required shaving cutting force.
See Spec. H 85 (Example 6).
Thus, we agree with the Examiner that, when Ohmori incorporates its
aluminum compounds in its compositions, it incorporates those compounds
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into compositions encompassed by claim 30. Moreover, for the reasons
discussed above, we are not persuaded that, when given its broadest
reasonable interpretation consistent with the Specification, claim 30
excludes the leave-on compositions Appellants assert are described by
Ohmori.
Accordingly, because Appellants do not persuade us, for the reasons
discussed, that the Examiner erred in finding that Ohmori describes a
process having all of the steps and features required by claim 30, we affirm
the Examiner’s rejection of claim 30 as anticipated by Ohmori. Because
they were not argued separately, claims 31—35, 39, and 46 fall with claim 30.
OBVIOUSNESS
In rejecting claims 30-49 for obviousness over Scavone, Kux, Kealey,
Ohmori, and Banowski, the Examiner found that Scavone describes a
process differing from the claimed process in that Scavone does not disclose
that its compositions include avocado oil, octyldodecanol, caprylyl
carbonate, paraffmum liquidum, papaya extract, carica papaya, celandine
extract, or chelidonium extract. Final Action 11. The Examiner cited Kux,
Kealey, Ohmori, and Banowski as evidence that it would have been obvious
to include those ingredients in Scavone’s compositions. Id. at 11—12.
We again select claim 30 as representative of the rejected claims.
Appellants’ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s prima facie case of obviousness as
to claim 30.
As discussed above, we agree with the Examiner that Scavone
anticipates representative claim 30. As our reviewing court has stated, “[i]t
is well settled that ‘anticipation is the epitome of obviousness.’” In re
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McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
For the reasons discussed above, moreover, we are not persuaded by
Appellants’ contention (App. Br. 28—29) that, because Scavone describes its
skin-softening effect as inhering from the pantothenic acid derivatives
included in its compositions, Scavone fails to anticipate claim 30. For the
reasons discussed above also, we are not persuaded by Appellants’
contention (App. Br. 29—30) that claim 30 excludes the leave-on
compositions allegedly suggested by Scavone, even if combined with Kux,
Kealey, Ohmori, and Banowski.
In sum, because Appellants’ arguments do not persuade us that the
Examiner erred in finding that the cited combination of references suggests a
process having all of the steps and features required by claim 30, we affirm
the Examiner’s obviousness rejection of that claim over the cited references.
Because they were not argued separately, claims 31—49 fall with claim 30.
SUMMARY
We affirm each of the Examiner’s rejections.
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
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