SCHERNER, Cathrin et al.

Patent Trials and Appeals Board

Sep 17, 2019

14914838 - (D) (P.T.A.B. Sep. 17, 2019)

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.
14/914,838 02/26/2016 Cathrin SCHERNER 3321-P50271 8259
13897 7590 09/17/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
CHANNAVAJJALA, LAKSHMI SARADA
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CATHERIN SCHERNER, INKEN GROTH, and
MAGDALENA VON WEDEL-PARLOW1
____________________

Appeal 2019-003304
Application 14/914,838
Technology Center 1600
____________________

Before ULRIKE W. JENKS, TAWEN CHANG, and
MICHAEL A. VALEK, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cosmetic or dermatological preparation, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
According to the Specification,
[t]he invention comprises an emulsifier-free, skin
conditioning cosmetic or dermatological preparation with

1 Appellants identify the Real Party in Interest as Beiersdorf AG. (Appeal
Br. 3.)
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active ingredients. The preparation is suitable for
application to wet skin without being completely rinsed
off and thereby allows for rubbing in during showering
and the application of skincare and/or skin-protecting
active ingredients.
(Spec. 1:5–9.)
Claims 38–57 are on appeal. Claim 38 is illustrative and reproduced
below:
38. A cosmetic or dermatological preparation, wherein
the preparation is rinseable and emulsifier-free and
comprises (i) one or more polyacrylic acid polymers,
(ii) one or more C14–22 fatty alcohols, (iii) one or more
waxes and/or a hydrocarbon mixture, and (iv) one or
more active ingredients, and wherein after rinsing the
preparation leaves behind a film on skin to which it has
been applied.
(Appeal Br. 18 (Claims App.).)
The Examiner rejects claims 38–47 and 49–57 under 35 U.S.C. § 103
as being unpatentable over Clapp2 and Patel.3 (Ans. 3.)
The Examiner rejects claim 48 under 35 U.S.C. § 103 as being
unpatentable over Clapp, Patel, and Nguyen4 and/or Robert.5 (Ans. 6.)
DISCUSSION
Issue
The Examiner has rejected claims 38–47 and 49–57 as obvious over
Clapp and Patel. The Examiner has also rejected claim 48 as obvious over

2 Clapp et al., US 2006/0229953 A1, published Oct. 26, 2006.
3 Patel et al., US 7,977,289 B2, issued July 12, 2011.
4 Nguyen et al., US 2010/0322876 A1, published Dec. 23, 2010.
5 Robert et al., US 2007/0025940 A1, published Feb. 1, 2007.
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Clapp, Patel, and Nguyen and/or Robert. The same issues are dispositive for
both rejections; we therefore discuss them together.
The Examiner finds that Clapp suggests personal care compositions
with excellent skin care and moisturization (i.e., “[a] cosmetic or
dermatological preparation) comprising all of the claimed components.”
(Ans. 3–4.) With respect to the limitation that the preparation be
“emulsifier-free,” the Examiner finds that Clapp “equates surfactants to
emulsifiers in their compositions” and “state[s] that their compositions can
comprise 0% surfactant.” (Ans. 4–5.) The Examiner also finds that Patel
teaches “shower gel compositions substantially free of surfactant
(emulsifier) for use in the shower . . . comprising several benefit agents that
deposit with greater substantivity on the skin.” (Id. at 5.) Accordingly, the
Examiner concludes that it would have been obvious to a skilled artisan “to
formulate the compositions of Clapp . . . such that they are emulsifier-free so
[as] to enhance the deposition and benefits associated with the skin benefit
agents in aqueous cosmetic or dermatological compositions to be used in the
shower.” (Id.)
Finally, although the Examiner finds that Clapp does not explicitly
teach that its composition leaves behind a film on skin upon rinsing, as
required by the claims, the Examiner finds that the composition suggested
by the combination of Clapp and Patel would inherently leave behind such a
film because it contains all of the elements of the claimed composition. (Id.
at 5–6.)
Appellants contend that there is no reason to combine the various
optional components taught in Clapp to arrive at the claimed composition.
(Appeal Br. 7–9, 11–12; Reply Br. 3–5.) Appellants contend that Clapp in
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fact “discourages the provision of a preparation according to the instant
invention.” (Appeal Br. 10; see also Reply Br. at 4–6.) Appellants contend
that Clapp does not teach that its composition “leave[s] behind a film on the
skin after they have been rinsed off or disclose which components of the
host of optionally employed components would have to be selected to
achieve this result.” (Appeal Br. 11; Reply Br. 3–4, 6.) Appellants contend
that Clapp does not suggest the additional limitations in independent claim
54 and dependent claims 39, 40, 49, and 55. (Appeal Br. 12–15; Reply Br.
7.) With respect to the rejection of claim 48 as obvious over the
combination of Clapp, Patel, and Nguyen and/or Roberts, Appellants
contend that claim 48 is patentable for at least the same reasons discussed
above. (Appeal Br. 16.)
The issues with respect to these rejections are (1) whether a skilled
artisan would have had a reason to combine Clapp and Patel to arrive at the
claimed composition and (2) whether the combination of Clapp and Patel
suggests compositions that meet the additional limitations in claims 39, 40,
49, 54, and 55.
Findings of Fact
1. Clapp teaches that
there remains the need for compositions that deliver
immediate improvements in appearance and skin feel that
will effectively deposit on all parts of the body. . . . It is
further desirable for the compositions to deliver . . . skin
conditioning and appearance benefits via an application
and removal process, such as in-the-shower or in-the-bath
lotion . . . . Unfortunately for these applications, the
moisturizers contained in the compositions are often
readily rinsed or otherwise removed from the skin; this is
particularly true when surfactant is also present. . . .
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[C]ompositions containing structured lipids have been
taught to provide enhanced deposition of moisturizers to
the skin. It has been recognized that there is increased
tackiness of the coating experienced by users when
compositions contain more structured lipids and/or lipids
with a higher modulus. It is now believed that utilizing a
combination of high modulus lipids and esters in
compositions, that the deposition of moisturizers can be
maintained, while the tackiness of the coating can be
substantially reduced upon rinsing, wiping or otherwise
removing the product from the keratin surface.
(Clapp ¶ 4.)
2. Clapp teaches “[a] rinsable personal care composition
compris[ing] (a) 0 to 75 weight percent of a surfactant; (b) 0.01 to 99 weight
percent of a skin benefit agent comprising a high modulus lipid and an ester;
and (c) 0 to 99 weight percent water.” (Id. at Abstract; see also id. ¶¶ 2, 5–7,
24.)
3. Clapp teaches that “rinsable composition,” as used in the
reference, means “a composition designed to be rinsed off by a liquid such
as water. After the composition is rinsed off, benefit agents remain on the
skin.” (Id. ¶ 18.)
4. Clapp teaches that “personal care composition,” as used in the
reference, “unless otherwise specified, refers to the compositions of the
present invention, wherein the compositions are intended for topical
application to the skin or hair.” (Id. ¶ 17.)
5. Clapp teaches that preferable surfactants include, among others,
emulsifiers. (Id. ¶ 25.)
6. Clapp teaches that
[t]he composition preferably contains no more than about
50 weight percent of a surfactant, more preferably no more
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than about 30 weight percent, still more preferably no
more than about 15 weight percent, and even more
preferably no more than about 5 weight percent of a
surfactant. The composition preferably contains at least
about 5 weight percent of a surfactant, more preferably at
least about 3 weight percent, still more preferably at least
about 1 weight percent, and even more preferably at least
about 0.1 weight percent of a surfactant.
(Id. ¶ 24.)
7. Clapp teaches its compositions optionally comprise an aqueous
phase hydrophobic structuring agent, preferably selected from the group
consisting of, among others, saturated C16 to C30 fatty alcohols. (Id. ¶ 50.)
Clapp teaches that these structuring agents “can be useful to assist in the
formation of the rheological characteristic of the composition[,] which can
contribute to the stability of the composition,” and “tend to assist in the
formation of the liquid crystalline gel network structures in the present
compositions.” (Id. ¶ 50.)
8. Clapp teaches that suitable hydrophobic structuring agents are
selected from the group consisting of, among others, stearyl alcohol, cetearyl
alcohol, and myristyl alcohol. (Id. ¶ 51.)
9. Clapp teaches that the skin benefit agent in its composition
comprises a high modulus lipid and an ester and further teaches that the high
modulus lipid may optionally comprise a structurant for providing desired
rheological properties such as modulus. (Id. ¶¶ 53, 61.)
10. Clapp teaches that the structurant may be a natural or synthetic
crystalline wax, including microcrystalline wax. (Id. ¶¶ 64–65.)
11. Clapp teaches that its compositions may further include one or
more thickeners/aqueous phase stability agents. (Id. ¶ 147.) Clapp teaches
that “[i]t can often be useful to blend different Thickeners/Aqueous Phase
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Stability Agents together to generate an optimal stability and rheology
profile.” (Id.) Clapp teaches that examples of thickening agents useful in
the composition include “acrylates/C10–30 alkyl acrylate crosspolymers that
are commercially available as CARBOPOL® 1342, CARBOPOL® 1382,
CARBOPOL Ultrez 21, PEMULEN TR-1, and PERMULEN TR-2.” (Id.
¶¶ 147–148.)
12. Patel teaches “substantially surfactant free gel compositions
comprising hydrophobic and hydrophilic benefits agents” that may be used
in the shower and that “deposit with greater substantivity from [the] gel
compositions relative to surfactant-containing lotion.” (Patel Abstract, 1:8–
17, 2:19–22.)
13. Patel teaches that compositions of its invention comprise an
aqueous phase that further comprises a stabilizer, wherein the stabilizers can
be “organic, inorganic, or polymeric.” (Id. at 5:55–56, 6:1–4.)
14. Patel teaches organic dispersion stabilizers defined as “organic
molecules that have a molecular weight generally lower than 1000 Daltons
and form a network in the aqueous phase that immobilizes the dispersed oil
phase,” wherein “[the] network is comprised either of amorphous solids,
crystals, or liquid crystalline phase.” (Id. at 6:21–26.)
15. Patel teaches that “[a]n especially preferred type[] of polymeric
dispersion stabilizer agent include acrylate containing homo and
copolymers” such as “crosslinked poly acrylates sold . . . under the
CARBOPOL trade name . . . [and] the PEMULEN trade name.” (Id. at
6:62–67.)
16. Patel teaches that “[t]he above dispersion stabilizers can be
used alone or in mixtures . . . .” (Id. at 7:3–5.)
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17. The Specification teaches that
[e]mulsifier-free also encompasses a minimum content of
additional emulsifiers of less than 1% by weight, based on
the total mass of the preparation, which may be present,
for example, as a result of contaminations or entrainments.
The influence on the product performance in these
quantitative ranges is insignificant if appropriate.
(Spec. 13:30–14:2.)

Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the Examiner’s rejection of claims 38–40, 54 and 55
under 35 U.S.C. § 103 (Final Act. 2–6, 8–11; Ans. 3–6, 8–14; FF1–15) and
agree that these claims are obvious over Clapp and Patel. We provide the
following comments for emphasis. Only those arguments timely made
by Appellants in the briefs have been considered; arguments not so
presented in the briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.”).

Claim 38
Clapp teaches a rinseable personal care composition comprising a skin
benefit agent (i.e., “a cosmetic or dermatological preparation . . .
compris[ing] . . . one or more active ingredients” as recited in claim 38).
(FF2–FF4.) Clapp teaches that preferable surfactants include emulsifiers but
also teach that its composition can comprise 0% surfactant. (FF2, FF5.)
Clapp teaches that its compositions may comprise polyacrylic acid polymers
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such as CARBOPOL® 1342, CARBOPOL® 1382, PEMULEN TR-1, and
PERMULEN TR-2 as thickeners and/or aqueous phase stability agents.
(FF11.) Clapp teaches that its composition may comprise C16 to C30 fatty
alcohols, including stearyl alcohol, cetearyl alcohol, and myristyl alcohol, as
structuring agents. (FF7, FF8.) Clapp teaches that the skin benefit agent in
its composition may comprise a structurant such as wax. (FF9, FF10.)
Clapp teaches that after its composition is rinsed off, the skin benefit agents
remain on the skin. (FF3.) Finally, Clapp suggests that benefit agents in
rinseable compositions may be particularly readily removed from the skin
when surfactants are present, and Patel teaches that surfactant free gel
compositions may achieve superior deposition of benefits agents as
compared to lotions containing surfactants. (FF12.)
Because Clapp teaches that its composition may include all of the
components recited in claim 38 and comprise 0% surfactant (where
“surfactant” is understood to include emulsifiers), and because Clapp and
Patel both teach that surfactants may interfere with deposition of benefit
agents in rinseable compositions, we find that a skilled artisan would have
reason to prepare the emulsifier-free composition recited in claim 38, with a
reasonable expectation of success. We further find that the Examiner has
established a prima facie case that the composition rendered obvious by
Clapp and Patel would “leave[] behind a film on skin” after rinsing, as
recited in claim 38: Clapp teaches that benefit agents in its composition
remain on the skin after the composition is rinsed off; furthermore, the
Examiner has shown that the composition suggested by the combination of
Clapp and Patel are substantially identical to the claimed composition such
that the burden is shifted to Appellants to show that the composition
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suggested by the prior art would not inherently leave behind a film on the
skin. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (explaining that
“[w]here . . . the claimed and prior art products are identical or substantially
identical . . . the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product”) (citation omitted).
Appellants contend that the claimed components are disclosed in
Clapp only as optional components, that Clapp teaches “millions of possible
compositions with different combinations of components,” and that, as
demonstrated by the exemplified compositions of Clapp, “it is possible to
combine the individual elements disclosed by [Clapp] in many different
ways without arriving at a composition that is . . . similar to a preparation
encompassed by the instant claims.” (Appeal Br. 7; see also id. at 8.) Citing
In re Baird, 16 F.3d 380 (Fed. Cir. 1994), Appellants contend that “the fact
that a claimed species or subgenus is encompassed by a prior art genus is not
sufficient by itself to establish a prima facie case of obviousness.” (Appeal
Br. 8.)
We are not persuaded. Appellants’ citation to Baird is inapposite.
The appellants in Baird claimed a flash fusible toner comprising a binder
resin which is a bisphenol A polyester containing one of three recited
dicarboxylic acids. In re Baird, 16 F.3d at 381. The Specification teaches
that toners containing bisphenol A have optimal characteristics for flash
fusing. Id. The prior art disclosed a generic compound formula containing a
large number of variables and encompassing more than 100 million different
species. Id. at 382. Although bisphenol A is one species encompassed by
the generic formula, the Baird court found that there is no disclosure in the
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prior art suggesting that a skilled artisan should select the variables in the
generic formula that would result in bisphenol A. Id.
While we agree with the holding in Baird that “[t]he fact that a
claimed compound may be encompassed by a disclosed generic formula
does not by itself render that compound obvious,” In re Baird, 16 F.3d at
382; a claimed invention is also not non-obvious merely because the prior
art also made obvious products other than what is claimed. In this case, all
of the components recited in claim 38 are known excipients for cosmetic
and/or dermatological preparations, and the cited prior art provides explicitly
reasons why a skilled artisan may optionally include them in such
preparations: That is, skin benefit agents may be included as active
ingredients; fatty alcohols and wax may be included as structuring agents
and/or structurants, and polyacrylic acid polymers may be included as
thickeners and/or aqueous phase stability agents. (FF7–FF11, FF15.)
Thus, this case is closer to Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804 (Fed. Cir. 1989). In that case, the prior art patent disclosed a genus
of over 1200 effective combinations of compounds, including the claimed
combination. Id. at 807. Although Merck argued that neither ingredient of
the claimed combination is highlighted in the prior art, that Federal Circuit
held that “disclos[ing] a multitude of effective combinations does not render
any particular formulation less obvious.” Id.
Appellants contend that there is no reason to combine the various
optional components taught in Clapp to arrive at the claimed composition.
(Appeal Br. 8; see also id. at 8–9, 11–12; Reply Br. 3–4.)
We are not persuaded. As discussed above, Clapp and/or Patel
provides reasons to include each of the recited components of claim 38 in its
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cosmetic or dermatological formulation (i.e., as active ingredients,
structuring agents/structurants, thickeners, and/or stability agents). The fact
that the components are described as optional does not render the
combination of components non-obvious. “[A]ll disclosures of the prior art,
including unpreferred embodiments, must be considered.” In re Lamberti,
545 F.2d 747, 750 (CCPA 1976).
With respect to the “emulsifier-free” limitation, Appellants contend
that Clapp does not suggest this limitation because all of the examples in
Clapp contain surfactants, Clapp teaches that the compositions preferably
contain at least about 0.1% weight percent surfactant, and “no less than
about 2 pages of [Clapp] are devoted to the discussion of suitable
surfactants.” (Appeal Br. 9–10.)
We are not persuaded. Clapp teaches that its composition can have as
little as 0% surfactant (wherein surfactant includes emulsifiers). (FF2.)
Patel, as well as Clapp, also suggests similar reasons why a skilled artisan
may wish to limit and/or eliminate surfactant from a cosmetic or
dermatological composition, namely that benefit agents are more easily
removed from the skin when surfactants are present in the composition
and/or that compositions without surfactants have better benefit agent
deposition. (FF1, FF12.) As discussed above and as pointed out by the
Examiner, “[a] reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art, including
non[-]preferred embodiments.” (Ans. 11 (citation omitted).) Thus,
Appellants’ emphasis on Clapp’s examples and preferred embodiments, to
the exclusion of the remainder of Clapp’s teachings and the teaching of other
cited prior art, is misguided.
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Furthermore, the Specification defines “emulsifier-free” to encompass
“a minimum content of additional emulsifiers of less than 1% by weight.”6
(FF17.) Clapp teaches that its compositions most preferably contains
between 0.1–5 weight percent of a surfactant. (FF6.) Thus, even if we only
considered the most preferred amount of surfactant/emulsifier disclosed in
Clapp, that range overlaps with the claimed range of emulsifiers (i.e., less
than 1% by weight of surfactants). Our reviewing court has explained that,
in such a situation (i.e., where the ranges of a claimed composition overlap
the ranges disclosed in the prior art), a prima facie case of obviously
typically exists.7 In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Appellants contend that, because Clapp teaches that its compositions
preferably comprise a gel network that typically comprises an aqueous phase
hydrophobic structuring agent and a surfactant, and because Clapp teaches
fatty alcohols as hydrophobic structuring agents, Clapp “strongly suggests”
that “if a fatty alcohol is present (as hydrophobic structuring agent), a
surfactant/emulsifier should be present as well, contrary to what is recited in
the instant claims.” (Appeal Br. 10; see also Reply Br. 4–5.)
We are not persuaded. As discussed above, the Specification defines
“emulsifier-free” to include compositions containing additional emulsifiers

6 Additional emulsifiers refer to emulsifiers other than the polyacrylic acid
polymers, which may have an emulsifying effect. (Spec. 13:23–14:2.) The
Specification explains that, “in accordance with the invention, the
polyacrylic acid polymers which may have an emulsifying effect are not
taken to be emulsifiers.” (Id. at 13:23–25.)
7 We note that Clapp teaches examples where the composition contains less
than 1% by weight of a surfactant. Examples 3 and 4, for instance, contains
0.25 wt % and 0.3 wt % of Tween 80. These examples would thus appear to
fall within the definition of “emulsifier-free” for purposes of the claims.
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of less than 1% by weight. (FF17.) Given that Clapp teaches a range of
most preferred surfactant amount (i.e., between 0.1% to 5% by weight
(FF6)) that overlaps the claimed range, Clapp renders the “emulsifier-free”
limitation prima facie obvious, even assuming that Clapp teaches that
surfactants should also be included whenever fatty alcohols are used as
structuring agents in its compositions.
Furthermore, Clapp teaches that it is the aqueous phase hydrophobic
structuring agent that “can be useful to assist in the formation of the
rheological characteristic of the composition[,] which can contribute to the
stability of [Clapp’s] invention” and that “tend to assist in the formation of
the liquid crystalline gel network structures in [Clapp’s] compositions.”
(FF7.) While Clapp also teaches that “[t]he ‘gel network’ of [its] invention
typically comprises an aqueous phase hydrophobic structuring agent and a
surfactant” (Clapp 4:2–4 (emphasis added)), Appellants have not pointed to
any teaching in Clapp that suggests that the inclusion of a surfactant is
necessary for the structuring agent to perform its function. Thus, we do not
agree that Clapp teaches away from an emulsifier-free composition that also
contains a fatty alcohol. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
(explaining that, “in general, a reference will teach away if it suggests that
the line of development flowing from the reference’s disclosure is unlikely
to be productive of the result sought by the applicant”); In re Lamberti, 545
F.2d at 750 (stating that “all disclosures of the prior art, including
unpreferred embodiments, must be considered”).
In this regard, we also note that Patel teaches a surfactant-free gel
composition comprising a stabilizer, wherein the stabilizer may be organic
dispersion stabilizer(s) that form a liquid crystalline network in the aqueous
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phase. (FF14.) Patel’s teaching further suggests that liquid crystalline gel
network structures may be formed without surfactants; thus, a skilled artisan
would have reason to include fatty alcohols in a cosmetic or dermatological
composition without surfactants/emulsifiers in view of the combined
teachings of Clapp and Patel.
In the Reply Brief, Appellants contend that, “while [Patel] discloses
emulsifier-free gel compositions, . . . the (gel) compositions of [Clapp] and
the gel compositions of [Patel] have hardly anything in common, wherefore
[Patel] is unable to ‘neutralize’ the clear statement in [Clapp] regarding the
(typical) use of surfactant in combination with a structurant.” (Reply Br. 5–
6.)
As discussed above, we do not agree that Clapp teaches away from
using fatty alcohols in an emulsifier-free composition, particularly given the
definition of emulsifier-free provided in the Specification. Furthermore,
Appellants do not provide any evidence (or even argument) for their
contention that Clapp’s and Patel’s compositions “have hardly anything in
common.” Both references, for instance, teach using stabilizers and/or
structuring agents that form or help to form liquid crystalline networks to
stabilize their compositions. Thus, we are also unpersuaded by Appellants’
contention that Patel is “unable to ‘neutralize’ the clear statement in [Clapp]
regarding the (typical) use of surfactant in combination with a structurant,”
to the extent any such neutralization is needed.
Finally, Appellants contend that neither Clapp nor Patel teaches or
suggests compositions that “leave behind a film on the skin after they have
been rinsed off,” as recited in claim 38, or “discloses which components of
the host of optionally employed components would have to be selected to
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achieve this result.” (Appeal Br. 11; Reply Br. 3–4, 6.) Appellants contend
that, “even if the compositions of [Clapp] or [Patel] were assumed to leave
behind certain substances on the skin after rinsing, this does not mean that
these substances are present on the skin in the form of a (or in a) film.”
(Appeal Br. 12.)
We are not persuaded. “‘[T]he mere recitation of a newly discovered
function or property, inherently possessed by things in the prior art, does not
cause a claim drawn to those things to distinguish over the prior art.’” In re
Best, 562 F.2d 1252, 1254 (CCPA 1977) (quoting In re Swinehart, 439 F.2d
210, 212–13 (CCPA 1971)). Furthermore,
[w]here . . . the claimed and prior art products are identical or
substantially identical . . . the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the
rejection is based on “inherency” under 35 U.S.C. § 102, on
“prima facie obviousness” under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.
Id. at 1255 (citations and footnote omitted).
In this case, the combination of Clapp and Patel suggests emulsifier-
free compositions that also contains all of the ingredients recited in claim 38.
We therefore find that the burden is shifted to Appellants to show that the
composition suggested by the prior art would not “leave behind a film on the
skin after they have been rinsed off.” Appellants have not met this burden.
Indeed, the evidence of record is to the contrary. Patel, for instance, teaches
that its in-shower compositions result in superior deposition of benefit
agents when compared to in-shower surfactant-containing lotions, and Clapp
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explicitly teaches that benefit agents remain on the skin after its composition
is rinsed off. (FF3, FF12.)
Accordingly, we affirm the Examiner’s rejection of claim 38.

Claim 39
Claim 39 depends from claim 38 and further recites that “the film [left
behind on the skin after rinsing the preparation] is at least 1 μm thick, as
measured by IR-ATR.” (Appeal Br. 18 (Claims App.).)
Appellants contend that,
[e]ven if one were to assume that some of the compositions
encompassed by the disclosure of CLAPP leave behind a film,
the Examiner has not explained why this film would necessarily
be at least 1 μm thick or why one of ordinary skill in the art would
allegedly have found it obvious to combine some of the optional
components mentioned in CLAPP to result in a film which is at
least 1 μm thick.
(Appeal Br. 12.)
We are not persuaded for the reasons already discussed with respect to
claim 38. The Examiner has established a prima facie case that, in view of
Clapp and Patel, it would be obvious for a skilled artisan to arrive at an
emulsifier-free composition having all of the claimed ingredients. This
shifts the burden to Appellants to show that the composition suggested by
the combination of Clapp and Patel would not inherently result in a film on
the skin that is “at least 1 μm thick, as measured by IR-ATR,” after the
composition is rinsed off. In re Best, 562 F.2d at 1255. Appellants have not
met this burden.
Accordingly, we affirm the Examiner’s rejection of claim 39.

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Claims 40, 54, and 55
Claim 40 depend from claim 38 and further recites that the “one or
more polyacrylic acid polymers” of the preparation comprises “at least two
polyacrylic acid polymers which differ in their properties” and the “one or
more C14-22 fatty alcohols” comprises “at least two C14-22 fatty alcohols.”
(Appeal Br. 18 (Claims App.).) Claim 54 is an independent claim that
claims a cosmetic or dermatological preparation comprising, among other
things, “at least two polyacrylic acid polymers which differ in their
properties” and “at least two C14-22 fatty alcohols.” (Id. at 20 (Claims
App.).) Claim 55 depends from claim 54, wherein the “at least two
polyacrylic acid polymers which differ in their properties” comprises “at
least two polyacrylic acid polymers which differ in their properties.”
(Appeal Br. 20 (Claims App.).)
Appellants contend that, while Clapp discloses that “combinations of
thickeners can (optionally) be present in the compositions disclosed therein
and that these thickeners include polyacrylic acid polymers, CLAPP clearly
fails to teach or suggest that if a combination of thickeners is employed at
all, more than one polyacrylic acid polymer should be employed.” (Appeal
Br. 13.) Appellants contend that “each of the 22 exemplified compositions
of CLAPP contains either one polyacrylic acid polymer or no polyacrylic
acid polymer at all,” and that “in the only exemplified compositions of
CLAPP which contain more than one thickener,” including a polyacrylic
acid polymer, the other thickener used is “a thickener which is structurally
completely different from a polyacrylic acid polymer.” (Id.)
With respect to claim 55, Appellants further contend that “none of the
exemplified compositions of CLAPP which contains any (‘classic’)
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thickener at all appear to contain more than two thickeners” and that Clapp
thus does not suggest that its composition should comprise combinations of
“three or more thickeners of any kind,” much less “three or more thickeners
of the same type.” (Id. at 14.)
We are not persuaded by Appellants’ arguments. As mentioned
several times above, all of a prior art reference’s disclosures, not just the
examples or the preferred embodiments, should be considered for purposes
of determining obviousness. In re Lamberti, 545 F.2d at 750. While Clapp
doesn’t exemplify a composition containing at least two or at least three
different polyacrylic acid polymers, Clapp teaches that its composition may
comprise one or more thickeners/aqueous phase stability agents, that it can
often be useful to blend different thickeners/aqueous phase stability agents
together to generate optimal stability and rheology profile, and that examples
of such thickeners/aqueous phase stability agents include different
polyacrylic acid polymers. (FF11.) The use of at least two or at least three
polyacrylic acid polymers in the composition thus appears to be no more
than “[t]he combination of familiar elements according to known methods,”
which is “likely to be obvious when it does no more than yield predictable
results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellants have not suggested that the use of two or more polyacrylic acid
polymers in the claimed composition yield unexpected results.
Furthermore, as the Examiner points out, the rejection also relies on
Patel for the teaching of the limitation relating to the composition
comprising at least two or at least three different polyacrylic acid polymers.
(Ans. 14.) In particular, Patel teaches that its compositions comprise an
aqueous phase that further comprises a stabilizer, wherein the stabilizer can
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be polymeric and wherein especially preferred polymeric stabilizers include
polyacrylic acid polymers. (FF13, FF15.) Patel further teachers that the
dispersion stabilizers taught in its disclosures may be used alone or in
mixtures. (FF16.) Thus, the combination of the teachings of Clapp and
Patel renders obvious a cosmetic or dermatological composition comprising
two or three different polyacrylic acid polymers.
Appellants do not address the teachings of Patel in their arguments.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, we affirm the Examiner’s rejection of claims 40, 54, and
55.

Claim 49
Claim 49 depends from claim 38 and further recites that the
preparation comprises one or more active ingredients selected from warming
substances. (Appeal Br. 19 (Claims App.).)
The Examiner asserts that
instant claim 49 does not recite any specific warming
substance, other than claiming “one or more active
substances selected from warming substances”. Further,
the claim is not limited to the warming substances of page
5 of the instant specification because the specification
does not define “warming substances” in general or in
particular to include those listed on page 5. Accordingly,
the claimed term can include any active substance,
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including iron oxide, calcium carbonate etc., taught by
CLAPP[, which] read on the claimed warming substances.
(Ans. 14; see also id. at 4.)
Appellants contend that “the Examiner has not provided any
explanation why, let alone evidence that the substances mentioned by the
Examiner would be considered to qualify as warming substances by one of
ordinary skill in the art.” (Appeal Br. 49; Reply Br. 7.)
We find that Appellants have the better argument. The Specification
states:
As warming substances, substances that stimulate the
circulation, such as capsaicinoids, are known as active
ingredients. The mode of action of these products is based
firstly on the promotion of circulation in the areas affected
and secondly on an influence on the metabolism. Thus, for
example, capsaicin stimulates the elimination of substance
P, a neuropeptide made of eleven amino acids. This
molecule actively interferes in the pain cycle and
contributes to reducing the perceived pain.
(Spec. 5:8–14.) The Specification further states that “[t]he circulation-
promoting active ingredients used are preferably capsaicinoids, nonivamide,
vanilyl butyl ether, nicotinic acid benzyl ester, nicotinic acid benzyl ester,
rosemary oil, capsiate (vanilli acid ester), and mustard oils. (Id. at 5:16–18.)
While we agree with the Examiner that warming substances are not
limited to the list of preferred circulation-promoting active ingredients listed
on page 5 of the Specification, the Specification does teach that “warming
substances” are “substances that stimulate the circulation.” (Id. at 5:8.) The
Examiner has not provided evidence, or even asserted, that the “particulate
substances such as iron oxide, silica, calcium carbonate, calcium phosphate
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etc.” stimulate the circulation.8 (Ans. 4, 14.) “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
Accordingly, we reverse the Examiner’s rejection of claim 49.

Claim 48
Claim 48 depends from claim 38 and recites that the preparation
further comprises aluminum starch octenyl succinate. (Appeal Br. 19
(Claims App.).) The Examiner rejected claim 48 as obvious over Clapp,
Patel, and Nguyen and/or Robert. Appellants argue that claim 48 is
patentable for at least the reasons set forth above with respect to claim 38.
We are not persuaded for the reasons already discussed.
Accordingly, we affirm the Examiner’s rejection of claim 48.
SUMMARY
For the reasons above, we affirm the Examiner’s rejection of claims
38–40, 54, and 55 as obvious over Clapp and Patel. Claims 41–47, 50–53,
56, and 57, which are not separately argued, fall with claims 38 and 54. 37

8 We do not make any findings as to whether iron oxide, silica, calcium
carbonate, calcium phosphate, or other ingredients disclosed in Clapp or
Patel are, in fact, warming substances within the meaning of the claim. We
also do not make any findings as to whether a skilled artisan would have
found it obvious to incorporate a warming substance into the composition
suggested by Clapp and Patel. We merely find that, on the record before us,
the Examiner has not established a prima facie case that the combination of
Clapp and Patel suggests a preparation comprising warming substances.
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C.F.R. § 41.37(c)(1)(iv). We also affirm the Examiner’s rejection of claim
48 as obvious over Clapp, Patel, and Nguyen and/or Robert. We reverse the
Examiner’s rejection of claim 49 as obvious over Clapp and Patel.
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-IN-PART