Ex Parte Kroepke et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612258934 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 12/258,934 10/27/2008 Rainer Kroepke 3321-P35318 9986 13897 7590 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 12/22/2016 EXAMINER KOSAR, AARON J ART UNIT PAPER NUMBER 1655 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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 RAINER KROEPKE, SABINE FAENGER, CHRISTOPHER MUMMERT, and JENS SCHULZ1 Appeal 2015-006278 Application 12/258,934 Technology Center 1600 Before TAWEN CHANG, RYAN H. FLAX, and RACHEL H. TOWNSEND, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to a topical cosmetic composition. Claims 49—72 are on appeal as rejected under 35 U.S.C. §§ 103(a) and 112, first and second paragraphs. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We understand the Real Party in Interest to be Beiersdorf AG. App. Br. 3. Appeal 2015-006278 Application 12/258,934 STATEMENT OF THE CASE The Specification explains, “[t]he present invention relates to active substance combinations of an effective amount of anise fruit extract and white tea extract and cosmetic preparations containing such active substance combinations.” Spec. 12. Further, “[cjosmetics can cover all measures that make changes to skin and hair for esthetic reasons or are used for cleansing the skin. Cosmetics therefore mean caring for, improving and beautifying the outward appearance of the body in order to please others as well as oneself in a manner that can be seen, felt and smelled.” Id. 13. The appealed claims can be found in the Claims Appendix of the Appeal Brief. Claims 49 and 62 are the independent claims, are representative, and read as follows: 49. A topical cosmetic preparation, wherein the preparation comprises anise fruit extract, white tea extract, glycerol, and one or more substances selected from perfumes suitable for cosmetic applications, alkylene glycols, and silicones, and wherein the preparation is substantially free of flavoring agents. 62. A topical cosmetic preparation, wherein the preparation comprises anise fruit extract and white tea extract and is present as a W/O emulsion, a hydrodispersion gel, a gel, a skin care oil, an ethanol spray comprising at least 25 % by weight of ethanol, or an O/W emulsion comprising at least one of ethanol and an oil not suitable for oral administration. App. Br. 47 and 49 (Claims App’x). The following rejections are on appeal: Claim 62 stands rejected under 35U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Action 6. 2 Appeal 2015-006278 Application 12/258,934 Claims 49-61 stand rejected under 35U.S.C. § 112, second paragraph, as indefinite.2 Final Action 7. Claims 49-52, 54, 55, and 58—61 stand rejected under 35 U.S.C. § 103(a) over Grace,3 Post-Tribune,4 Iwasaki,5 Petix,6 Thrash,7 and Mori.8 Final Action 10—11. Claims 49-52, 54, 55, and 58—62 stand rejected under 35 U.S.C. § 103(a) over Grace, Post-Tribune, Iwasaki, Suzuki,9 Petix, Thrash, and Mori. Final Action 15. Claims 62 and 63 stand rejected under 35 U.S.C. § 103(a) over Grace, Petix, and Suzuki. Final Action 16. 2 The indefmiteness rejection was withdrawn as to claims 62—72. Ans. 2. 3 Organic White Tea by Grace, Catalog — White Tea & Anise Seed, June 4, 2005, accessed at http://organicwhiteteabygrace.com/product_mfo.php?cPath=22&products_id =167, visited on May 17, 2010 (hereinafter “Grace”). 4 The Post-Tribune, New on the Table, accessed at http://search.proquest.eom/doeview/343971377/13EA41F4DF9682EB83A/l 7?accountid= ..., visited on June 13, 2013 (full domain cite not available; see document of record) (hereinafter “Post-Tribune”). 5 U.S. Patent Application Pub. No. US 2007/0104851 A1 (published on May 10, 2007) (hereinafter “Iwasaki”). 6 Mark Petix, Steeping Sensation; Tea is the Trend, with Variations of Chai Being Today’s Taste of Choice, The Press-Enterprise, Apr. 9, 2003, accessed at http://proquest.umi.com/pqdweb?did=323367141&sid=2&Fmt=3&clientld= 19649&RQT=309&VName=PQD, visited on May 19, 2010 (hereinafter “Petix”). 7 U.S. Patent Application Pub. No. US 2003/0039709 A1 (published on Feb. 27, 2003) (hereinafter “Thrash”). 8 U.S. Patent No. 4,304,688 (issued to Yasuyuki Mori on Dec. 8, 1981) (hereinafter “Mori”). 9 Japanese Published Application No. JP2002362778 (published on Aug. 26, 2003) (hereinafter “Suzuki”). 3 Appeal 2015-006278 Application 12/258,934 Claims 62, 63, and 65 stand rejected under 35 U.S.C. § 103(a) over Grace, Petix, Suzuki, and Iwasaki. Final Action 18. Claims 49-52, 54, 55, and 58—61 stand rejected under 35 U.S.C. § 103(a) over Grace, Petix, Post-Tribune, Iwasaki, Thrash, and Mori. Final Action 21. Claims 49-72 stand rejected under 35 U.S.C. § 103(a) over Kruse,10 Coventry,* 11 and Haught.12 Final Action 23. Claims 49-65, 70, and 71 stand rejected under 35 U.S.C. § 103(a) over Kruse, Coventry, Haught, and Kupper.13 Final Action 30. Claims 49, 51, 62—65, 67, and 68 stand rejected under 35 U.S.C. § 103(a) over Haze,14 Handjani,15 and Wikipedia.16 Final Action 31. 10 German Patent Application Pub. No. DE 102005026035 A1 (published on July 12, 2006) (English translation of record) (hereinafter “Kruse”). 11 Coventry Evening Telegraph, YourLife: Take Six. . . organic products; The Page Where you put Everyday Items to the Test, first edition, Mar. 13, 2006, accessed at http://search.proquest.eom/doeview/332278007/13EA3E5F9FB45DEF075/5 ?accountid=l..., visited on June 13, 2013 (full domain cite not available, see copy of record) (hereinafter “Coventry”). 12 Nancy Haught, White Tea if a cup of tea is Your, Well, Your cup of tea, The Oregonian, sunrise edition, Feb. 6, 2001, accessed at http://search.proquest.eom/doeview/419250798/13E94B0BlEA50AF9090/l ?accountid=14..., visited on June 14, 2013 (full domain cite not available, see copy of record) (hereinafter “Haught”). 13 U.S. Patent Application Pub. No. US 2005/0070448 A1 (published on Mar. 31, 2005) (hereinafter “Kupper”). 14 U.S. Patent Application Pub. No. US 2003/0054015 A1 (published Mar. 20, 2003) (hereinafter “Haze”). 15 U.S. Patent No. 5,079,227 (issued to Rose-Marie Handjani et al. on Jan. 7, 1992) (hereinafter “Handjani”). 4 Appeal 2015-006278 Application 12/258,934 FINDINGS OF FACT Except where otherwise indicated, we adopt the Examiner’s findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer. Any findings of fact set forth below are provided only to highlight certain evidence of record. FF1. The Specification is clear in its description of the invention as directed to a cosmetic preparation, that is, “measures that make changes to skin and hair for esthetic reasons or are used for cleansing the skin,” and means for “caring for, improving and beautifying the outward appearance of the body ... in a manner that can be seen, felt and smelled.” Spec. 2, 3, see also 15, 21, 28, 30, and 45; see also Reply Br. 3—5 (discussing Spec.). FF2. The Specification is also clear in its description of the invention as preferably not including “ingredients which are not conventional and/or recommended for use in cosmetic preparations,” for example, the invention is “free of components which are typically used only for preparations for non-topical administration such as oral administration [and/or] parenteral administration.” Spec. 149; see also App. Br. 7—8 (discussing Spec.). Furthermore, the Specification is also clear that the invention comprises “one or more substances . . . which will not be comprised in oral, parenteral, etc. preparations.” Spec. 149; see also App. Br. 6 (discussing Spec.). 16 Wikipedia, the free encyclopedia: Estragole, accessed at http://en.wikipedia.org/wiki/Estragole, visited on June 14, 2013 (hereinafter “Wikipedia”). 5 Appeal 2015-006278 Application 12/258,934 FF3. Grace is directed to a drinkable beverage of anise seed and white tea. Grace (first page); see also Final Action 11,12 (conceding same). FF4. Post-Tribune is directed to a drinkable beverage of Chinese white tea and lemongrass or lemon oil. Post-Tribune; see also Final Action 12 (discussing Post-Tribune). FF5. Iwasaki is directed to “beverages . . . with a green tea extract.” Iwasaki 11; see also Final Action 12 (conceding same). FF6. Petix is directed to drinkable tea beverages and how to brew them in view of their flavor. Petix see also Final Action 11 (discussing Petix, conceding same). FF7. Suzuki is directed to “a food and beverage which have excellent properties, palatability, flavor, etc.,” “in which a [water-in oil] WO type emulsion ... is uniformly dispersed.” Final Suzuki Abstract; see also Final Action 15 (conceding same). FF8. Kruse disclosed “cosmetic preparations containing special anise fruit extract and fillers,” where the anise fruit extract can be the product “Bioxilift.” Kruse title, H 1, 9; see also Final Action 23—28 (discussing Kruse). FF9. Kruse disclosed including fillers in an anise-extract comprising cosmetic composition, including silicone elastomers. Kruse 137; see also Final Action 24 (discussing Kruse’s disclosure of fillers). FF10. Kruse disclosed oil-in-water (O/W) emulsions for anise- extract-comprising cosmetic compositions. Kruse 1 66; see also Final Action 24—25 (discussing Kruse’s disclosure of emulsions). 6 Appeal 2015-006278 Application 12/258,934 FF11. Kruse disclosed including polyethylene glycol in an anise- extract-comprising cosmetic composition. Kruse 173; see also Final Action 24—25 (discussing Kruse). FF12. Kruse disclosed W/O emulsions for anise-extract comprising cosmetic compositions. Kruse 178; see also Final Action 24—25 (discussing Kruse’s disclosure of emulsions). FF13. Kruse disclosed anise-extract-comprising cosmetic compositions also including perfumes, oils, silicone derivatives, ethanol, and/or antioxidants. Kruse 90, 91, 93; see also Final Action 25—26 (discussing Kruse). FF14. Kruse disclosed anise-extract-comprising cosmetic compositions also including plant extracts, and specifically “green tea extracts,” as “active ingredients” for “reduc[ing] the formation of wrinkles or also already existing wrinkles.” Kruse 199; see also Final Action 26 (discussing Kruse). FF15. Kruse disclosed “[t]he amount of antioxidants” can be adjusted “between 0.001 to 30% by weight,” which identifies the same to be an optimizable, results-effective variable. Kruse 196; see also Final Action 25 (discussing Kruse’s disclosure of antioxidants). FF16. Kruse disclosed several examples of anise-extract comprising cosmetic compositions, including Example 4, which is an O/W cream and includes, inter alia, 1% jojoba oil (i.e., a plant extract), 2 wt.% Vaseline® (i.e., an inedible oil product), 0.4 wt.% anise fruit extract, 5 wt.% glycerin (i.e., glycerol), and q.s. perfume. 7 Appeal 2015-006278 Application 12/258,934 Kruse 27—28 (Example 4, see also Example 7); see also Final Action 25 (discussing Kruse examples). FF17. Kruse disclosed several examples of anise-extract comprising cosmetic compositions, including Example 5, which is an after sun gel and includes, inter alia, 0.2 wt.% anise fruit extract, 3 wt.% ethanol, 3 wt.% glycerin (i.e., glycerol), and q.s. perfume. Kruse 28 (Example 5, see also Example 6); see also Final Action 25 (discussing Kruse examples). FF18. Coventry disclosed a “Neal’s Yard Remedies Frankincense Nourishing Cream” useful “as a night or day cream,” which includes “WHITE tea treatments for the eyes.” Coventry 1; see also Final Action 26 (discussing Coventry). FF19. Coventry also disclosed a “Neal’s Yard White Tea Eye Gel” product with “[t]he white tea . . . meant to be good for disguising dark circles, as well as toning and firming the old crows’ feet.” Coventry 2; see also Final Action 26 (discussing Coventry). FF20. Haught disclosed white tea comes from leaf buds “of Camellia sinensis, the plant that gives us old, reliable black tea and its cooler cousin, green tea.” Haught 1; see also Final Action 26 (discussing Haught). FF21. Haught also disclosed that white tea has “purported healing properties,” “releases less caffeine and more antioxidants and other beneficial compounds” than other teas, and that it is being investigated by researchers at Oregon State University to “see whether it prevents or fights cancer.” Haught 1; see also Final Action 26 and 8 Appeal 2015-006278 Application 12/258,934 Ans. 49 (discussing Haught, generally, and its antioxidant properties, specifically). FF22. Xanthines and catechols are endogenous to white tea; they are “[ejssential constituents of white tea.” Spec. 141; see also Ans. 51 (discussing same). FF23. Kupper is directed to “the use of an O/W emulsion ... for lubricating conveyor belt systems.” Kupper Abstract; cf. Ans. 53 (discussing Kupper). FF24. Haze is directed to “[sympathetic nerve-stimulating fragrant compositions,” and one example is disclosed as an “[ajerosol” composition containing, inter alia, 60% ethanol, 0.01 caffeine, 1% anise extract, q.s. of a fragrant substance, 0.1% PEG-60 hydrogenated castor oil.” Haze Abstract, 1132; see also Final Action 31—32 (discussing Haze). FF25. Haze also disclosed, in addition to the aerosol, supra, other “external skin applications,” including perfumes flflf 115—17), skin applications flflf 118, 119), cosmetic water flflf 120, 121), emulsions (11 122-26, 140), creams (11127, 128, 141), gel (H 129, 136), and toner (1139). FF26. Haze disclosed its composition can also include “xanthine derivatives such as caffeine and the like, crude drugs such as Chinese tea, green tea extract, [and] anise.” Haze 1 65; see also Final Action 31—32 (discussing Haze). FF27. Haze disclosed including glycerin, i.e., glycerol, in its cosmetic compositions. HazeH 120—22, 124-31, 136, 137, 139-41; see also Final Action 32 (discussing Haze). 9 Appeal 2015-006278 Application 12/258,934 FF28. Handjani disclosed “[a] perfume composition,” and that such “[pjerfume compositions are also known which consist of oil-in water [O/W] or water-in-oil [W/O] emulsions. Handjani Abstract, 1:19-20; see also Final Action 32 (discussing Handjani). DISCUSSION The rejection of claim 62 under 35 U.S.C. § 112, first paragraph The Examiner determined that the claim limitation, “comprising . . . an oil not suitable for oral administration,” was not supported by a written description in the Specification. Final Action 6. While acknowledging that the Specification indicates the invention is intended to be free of components typically used for non-topical administration, specifically, oral administration, and lists such disfavored components as sweeteners and flavoring agents, and further lists components to be included in the invention that would not be in an oral composition, such as perfumes, glycerol, polyols, alkylene glycols and silicones, the Examiner maintained that, because the Specification makes no distinctions between oils in the invention that are suitable or not suitable for oral administration, there is inadequate disclosure of this recited claim element. Id. at 6; see also Spec. 149 (discussing favored and disfavored components for invention composition). While it is true that the mere absence of a positive recitation of a claim element in the Specification is not basis for its express exclusion in the claims, and any claim containing a negative limitation which does not have basis in the original disclosure is correctly rejected under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the 10 Appeal 2015-006278 Application 12/258,934 written description requirement, “[njegative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation,” and describing disadvantages of the excluded part will suffice. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)). See also MPEP § 2173.05(i) (Rev. 9, Aug. 2012). Here, the entirety of the Specification is directed to a cosmetic composition and away from compositions to be taken internally in any way and it provides an express instruction to exclude components that are primarily for oral administration. See FF1, FF2. This is reason enough for the skilled artisan to exclude any and all versions of ingredients that would be conventionally or typically suitable for oral administration. As oils are on the list of disclosed ingredients, omitting oils typically suitable for oral consumption is reasonable and is sufficiently disclosed in the Specification. For these reasons we reverse the Examiner’s rejection of claim 62 under 35 U.S.C. § 112, first paragraph, for lack of written description. The rejection of claims 49—61 under 35 U.S.C. § 112, second paragraph The Examiner determined the claim language, “substantially free of flavoring agents,” cannot be construed and makes the claims internally inconsistent because the claims also recited components that impart flavoring, e.g., white tea extract and anise fruit extract. Final Action 7. The Examiner inquires, “[d]o Applicants mean that the composition is free of any other flavoring agents aside from the ones which reside endogenously in aqueous extracts of anise and white tea and aside from glycerol?” Id. at 7—8. 11 Appeal 2015-006278 Application 12/258,934 Further, the Examiner determined that the term “substantially” is not defined to provide a standard for ascertaining degree. Id. at 8. Also, the Examiner determined that the claimed invention includes perfumes, which “necessarily impart a flavor to a composition due to aroma.” Id. First, terms of degree are not per se indefinite. “Such broadening usages as ‘about’ must be given reasonable scope; they must be viewed by the decisionmaker as they would be understood by persons experienced in the field of the invention. Although it is rarely feasible to attach a precise limit to ‘about,’ the usage can usually be understood in light of the technology embodied in the invention.” Modine Mfg. Co. v. U.S. ITC, 75 F.3d 1545, 1554 (Fed. Cir. 1996). “Substantially” is analogous to “about.” We are persuaded by Appellants’ argument that the skilled artisan would understand “substantially free” to mean “substantially no . . . ,” or, in other words, lacking to any significant extent, flavoring agents. See App. Br. 7-8. Next, turning to the related term, “flavoring agent,” we first look to the Specification to identify whether or not it provides a definition — it does not. The Specification does not expressly define the term “flavoring agents,” but provides context therefor, equating such to sweetening agents and identifying some examples, “e.g., sugar, artificial sweetener, syrup, natural or artificial flavors.” Spec. 149. Because cosmetics and, potentially, edibles (based only upon the Examiner’s cited prior art) are of issue in this case, we look to the U.S. Food and Drug Administration (“FDA”), the agency tasked with regulating such matters, for a better understanding of the terms in dispute. The FDA relies 12 Appeal 2015-006278 Application 12/258,934 upon 21 C.F.R. §170.3(o)(12),17 which provides relevant insight into the term “flavoring agent,” as applied to edibles, as follows: “Flavoring agents and adjuvants : Substances added to impart or help impart a taste or aroma in food.” Further, looking to 21 C.F.R. § 700.3(c), also relied upon by the FDA,18 but in the context of cosmetics, we find it also provides insight into the use of the term “flavor,” as follows: “[t]he term flavor means any natural or synthetic substance or substances used solely to impart a taste to a cosmetic product.” We find the term “flavoring agent,” as used in the claims, reasonably comports with these definitions and would be so understood by the skilled artisan familiar with cosmetics. Relying on these definitions, a person of ordinary skill in the art working or knowledgeable in the field of cosmetics would reasonably understand the claim language “substantially free of flavoring agents” to mean the claimed composition essentially lacks substances used solely for the purpose of imparting a taste to a cosmetic product. Moreover, contrary to the Examiner’s concerns relating to the fact that teas and fruit extracts have flavor, because here the claims are directed to cosmetic applications, the incidental imparting of “flavoring” by such active ingredients is not within the scope of the term “flavoring agent,” and the tea and fruit extract components recited by the claims would be understood by the skilled artisan 17 See U.S. Food and Drug Administration, databases, accessed at https://www.accessdata.fda.gov/scripts/cdrh/cfdocs/cfcff/CFRSearch.cfm7fr =170.3 (visited on Dec. 5, 2016). 18 See id., accessed at https://www.accessdata.fda.gov/scripts/cdrh/cfdocs/cfCFR/CFRSearch.cfm? fr=700.3 (visited on Dec. 5, 2016). 13 Appeal 2015-006278 Application 12/258,934 as provided for cosmetic reasons and not solely for flavor; therefore, there would be no confusion relating to the claim language. For the reasons above, we reverse the Examiner’s rejection of the claims 49-61 under 35 U.S.C. § 112, second paragraph, as indefinite. The rejection of claims 49—52, 54, 55, and 58—61 under 35 U.S.C. § 103(a) over Grace, Post-Tribune, Iwasaki, Petix, Thrash, and Mori, and related obviousness rejections over these references Appellants argue the preamble of the claims, which recites “[a] topical cosmetic preparation,” must be considered a limitation in the context of the Specification (| 49). App. Br. 10. Appellants point out that the FDA regulates cosmetics and argue that the prior art references directed to drinkable teas would not be considered suitable for cosmetic applications. Id. at 15—16. In relation to this obviousness rejection and the other obviousness rejections over the same references, the question to what field the invention is directed must be answered because it determines to what prior art a skilled artisan would reasonably look to overcome the problems addressed by the claimed invention. We find that the evidence shows the invention to be directed to a topical cosmetic composition. See FF1, FF2. The preamble of each appealed claim recites “[a] topical cosmetic preparation.” “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.Cir.1989). Here, upon review of the Specification, we find the entirety of the disclosure directed to cosmetic applications and expressly 14 Appeal 2015-006278 Application 12/258,934 not-inclusive of ingestible compositions. See FF1, FF2. Further, it is not only the language of the preamble that informs us that the claims are directed to cosmetics because the body of claim 49 recites “perfumes suitable for cosmetic applications,” and the body of claim 62 recites “a skin care oil.” Moreover, the Examiner, in the Advisory Action, stated “[i]t must be noted that the Examiner, on the record, had interpreted the preamble of the claim as limiting; i.e., the Examiner has stated on the record that the preamble of Applicants’ claim states that the composition is a cosmetic and therefore although quite broad, the Examiner indicated on the record that the prior art product must not be precluded from being used as a cosmetic.” Advisory Action (Apr. 23, 2014), App’x I at 18. In identifying prior art for an obviousness analysis, “[i]n order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (citation omitted). “[I]t is necessary to consider ‘the reality of the circumstances,’ ... — in other words, common sense—in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” Id. (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.1979)). The Examiner-cited references Grace, Post-Tribune, Iwasaki, and Petix (and later Suzuki) are each directed to a drinkable beverage. FF3—FF7. Arguably, these steeped teas include extracts, but the references are directed to consumables/edibles, not cosmetics. The claims are directed to topical cosmetic preparations and cosmetic components, i.e., perfumes, suitable for 15 Appeal 2015-006278 Application 12/258,934 cosmetic applications, and eschew inclusion of components that are for food-items, i.e., flavoring agents. FF1,FF2. Common sense and consideration of the reality of the circumstances demands that these references not directed to cosmetic applications would not reasonably have been relied upon by a person or ordinary skill in the art to solve the problem(s) addressed by the invention. For the reasons above, we reverse this and the Examiner’s other obvious rejections relying in any way on Grace, Post-Tribune, Iwasaki, and Petix (and Suzuki). The rejection of claims 49—72 under 35 U.S.C. § 103(a) over Kruse, Coventry, and Haught The Examiner established a prima facie case that the claims are obvious over this prior art combination. Appellants do not present persuasive argument or evidence that the Examiner is incorrect. The Examiner determined that Kruse disclosed a cosmetic composition comprising anise fruit extract (provided as Bioxilift®, which is disclosed in the Specification for the same purpose), and, inter alia, fillers and additives (including, e.g., silicone elastomers, polyethylene glycol, perfumes, oils, ethanol, and antioxidants), plant and green tea extracts, and glycerol (glycerin). See FF8, FF9, FF11, FF13, FF14. The Examiner further determined that Kruse informed that the components of its cosmetic composition could be provided in amounts/concentrations that would be optimizable as results-effective. See FF15—FF17. The Examiner also determined that the cosmetic compositions of Kruse were disclosed as 16 Appeal 2015-006278 Application 12/258,934 provided as O/W emulsions, W/O emulsions, gels, and other common forms. See FF10, FF12, FF16, FF17. The Examiner determined that Kruse did not expressly disclose incorporating a white tea extract in its anise-extract-containing cosmetic compositions. Final Action 26. For such a disclosure, the Examiner looked to and combined with the disclosure of Kruse, the disclosure of Coventry, which the Examiner determined taught white tea (extract) in a gel for treating wrinkles and disguising dark circles and firming crow’s feet around the eyes, i.e., a cosmetic use. See FF18, FF19. The Examiner determined the skilled artisan would be motivated to make this combination to add additional antioxidant (white tea being a known source thereof) and/or anti- wrinkle features of Coventry to the similarly-goaled cosmetic compositions of Kruse. Final Action 27. The Examiner also determined that Haught disclosed white tea contains more antioxidants than black or green tea (see FF20, FF21), thus bolstering the rationale for motivation to combine the white tea cosmetic of Coventry with the anise-containing-composition of the Kruse cosmetic. Appellants argue that the green tea extract of Kruse is but one of hundreds of options. App. Br. 30. Appellants further argue that Coventry is not relevant as a short article from regional British newspaper. Id. Appellants also argue Haught does not support an advantage for replacing green tea with white. Id. at 31. We do not find these arguments persuasive. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose. . . . [T]he idea of combining them flows logically from their having been individually 17 Appeal 2015-006278 Application 12/258,934 taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (internal citations omitted). The combination of prior art, here Kruse and Coventry, combined as supported by Haught, satisfies this rule; there was ample motivation to make the combination, and there is no reason to believe that such a combination would not be reasonably successful. Appellants separately argue claims 51, 67, and 68. App. Br. 33. Appellants argue that the limitations to the ratio of anise-to-white tea is a patentable distinction over the prior art combination. Id. Appellants also separately argue claims 58 and 69 as being directed to white tea extract obtained from a 2% fermented source. Id. at 34. Appellants also separately argue claims 59 and 70 as directed to xanthenes and catechols included in the white tea extract of the claimed composition. Id. at 34. Appellants also separately argue claim 63 as directed to W/O emulsion and argue none of Kruse’s examples is a W/O emulsion. Id. at 35. Appellants also separately argue claims 66—69 and 72 because the Examiner did not also rejected them in a subsequent rejection including the Kupper reference. Id. at 36. We do not find these arguments persuasive. As to claims 51, 67, and 68, the concentrations and related ratios of anise extract and white tea extract have been shown by the Examiner to be results-effective, optimizable variables. FF15-FF17. “[Wjhere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456 (CCPA 1955) (citations omitted). As to claims 58 and 69, as determined by the Examiner, the argued limitations of these claims are product-by-process limitations. “The patentability of a product does not depend on its method of production. If 18 Appeal 2015-006278 Application 12/258,934 the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted). As to claims 59 and 70, the Examiner determined that the argued limitations are inherently present in white tea. See FF22. “From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). As to claim 63, Kruse expressly disclosed that its cosmetic compositions could take the form of W/O emulsions. FF12. Whether any of the specific examples of the invention were such is not determinative because the test of obviousness is “whether the teachings of the prior art, taken as a whole, would have made obvious the claimed invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (citation omitted). As to claims 66—69 and 72, whether the Examiner rejected these claims in view of Kupper or not is not relevant to this rejection. For the reasons above we affirm the Examiner’s rejection of the claims 49-72 under 35 U.S.C. § 103(a) as obvious over Kruse, Coventry, and Haught. The rejection of claims 49—65, 70, and 71 under 35 U.S.C. § 103(a) over Kruse, Coventry, Haught, and Kupper The Examiner established a prima facie case that the claims are obvious over the prior art combination. Appellants do not present persuasive argument or evidence that the Examiner is incorrect. 19 Appeal 2015-006278 Application 12/258,934 The Examiner cites Kupper for its disclosure of ethanol improving the flow properties of O/W emulsions for conveyor belt lubrication. Final Action 30—31; see also FF23. Appellants argue Kupper would not be combined with the other cited references because it is “completely unrelated to cosmetic compositions.” App. Br. 37. We agree. Our agreement with Appellants’ argument notwithstanding, combining Kupper with the other cited prior art is unnecessary for the purpose expressed by the Examiner because Kruse disclosed both an O/W cream, which would render an O/W emulsion obvious, and also disclosed ethanol is an advantageous preservative for its cosmetic compositions, which renders use of ethanol obvious. See FF10, FF13, FF16. Therefore, we affirm this rejection for the same reasons set forth above for the preceding obvious rejection over Kruse, Coventry, and Haught. The rejection of claims 49, 51, 62—65, 67, and 68 under 35 U.S.C. § 103(a) over Haze, Handjani, and Wikipedia The Examiner established a prima facie case that the claims are obvious over the prior art combination. Appellants do not present persuasive argument or evidence that the Examiner is incorrect. The Examiner determined Haze disclosed an aerosol with 1% anise extract, 60% ethanol, perfume, castor oil, and 0.01% caffeine. FF24. The Examiner also determined that Haze’s disclosure of caffeine taught a white tea extract; however, the Examiner also determined that Haze expressly disclosed that the cosmetic can have tea extracts, including Chinese tea (which includes white tea). See FF26. The Examiner also determined that 20 Appeal 2015-006278 Application 12/258,934 Haze taught that glycerol was known to be commonly used for cosmetics. See FF27. The Examiner indicated that Haze does not explicitly disclose W/O emulsions, but determined Handjani disclosed O/W and W/O emulsions are known (“routinely made”) in cosmetics. See FF28. Appellants argue that an extract, as recited in the claims, does not mean anything extractable, e.g., caffeine, from white tea. App. Br. 37. Appellants argue extracts are mixtures of substances, not single compounds. Id. at 38. Appellants argue that if caffeine could be considered an extract of white tea, it could also be considered the extract of other teas and, so, the term extract would have no special significance as recited as coming from one source over another, rendering the claim term meaningless. Id. at 41— 42. This argument is not persuasive. Whether or not caffeine should be considered an extract of white tea is not determinative because Haze expressly disclosed that its cosmetic composition can have tea extracts and can include Chinese tea, which includes white tea. See FF26. This renders the disputed claim element obvious. Appellants also separately argue claims 51, 67, and 68 as directed to anise-to-tea ratio. App. Br. 43. Appellants also separately argue claim 63 as directed to W/O emulsions; argue the aerosol of Haze is not such, and argue Haze’s aerosol would not be converted to a W/O emulsion as in Handjani. Id. at 43 44. Claim 64 is also separately argued as directed to an O/W emulsion. Id. at Br. 44-45. The arguments over claim 51, 64, 67, and 68 are not persuasive for the same rationale set forth above regarding the obviousness rejection over Kruse, Coventry, and Haught. As to the argument over claim 63, Haze 21 Appeal 2015-006278 Application 12/258,934 disclosed a wide variety of cosmetic compositions, including emulsions. FF25. It would have been obvious to develop the Haze cosmetics as an O/W emulsion, as Handjani indicates this was well known for cosmetics, such as perfumes. For the reasons above, we affirm the obviousness rejection over Haze Handjani, and Wikipedia. SUMMARY The rejection of claim 62 under 35 U.S.C. § 112, first paragraph, is reversed. The rejection of claims 49-61 under 35 U.S.C. § 112, second paragraph, is reversed. The rejection of claims 49-52, 54, 55, and 58—61 under 35 U.S.C. § 103(a) over Grace, Post-Tribune, Iwasaki, Petix, Thrash, and Mori is reversed. The rejection of claims 49-52, 54, 55, and 58—62 under 35 U.S.C. § 103(a) over Grace, Post-Tribune, Iwasaki, Suzuki, Petix, Thrash, and Mori is reversed. The rejection of claims 62 and 63 under 35 U.S.C. § 103(a) over Grace, Petix, and Suzuki is reversed. The rejection of claims 62, 63, and 65 under 35 U.S.C. § 103(a) over Grace, Petix, Suzuki, and Iwasaki is reversed. The rejection of claims 49-52, 54, 55, and 58—61 under 35 U.S.C. § 103(a) over Grace, Petix, Post-Tribune, Iwasaki, Thrash, and Mori is reversed. 22 Appeal 2015-006278 Application 12/258,934 The rejection of claims 49-72 under 35 U.S.C. § 103(a) over Kruse, Coventry, and Haught is affirmed. The rejection of claims 49-65, 70, and 71 under 35 U.S.C. § 103(a) over Kruse, Coventry, Haught, and Kupper is affirmed. The rejection of claims 49, 51, 62—65, 67, and 68 under 35 U.S.C. § 103(a) over Haze, Handjani, and Wikipedia is affirmed. TIME PERIOD FOR RESPONSE 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 23 Copy with citationCopy as parenthetical citation