Appeal No. 2006-1057
Application No. 10/005,994
hindsight that the surfactant is to simplify the removal of the composition. Brief, page 6.
We are not persuaded by this argument. There is no requirement under the patent law
that the surfactant must be recognized in the prior art as serving the same function. A
prior art reference may anticipate when the claim limitation or limitations not expressly
found in that reference are nonetheless inherent in it. See In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981); Verdegaal Bros., Inc. v. Union Oil Co., 814
F.2d 628, 630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in the art. See In re King, 801
F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). Artisans of ordinary skill may
not recognize the inherent characteristics or functioning of the prior art. See id. In the
present case, Guck includes a cosmetic base and a foaming surfactant in the claimed
amounts. Thus, Guck need not recognize that the surfactant functions to assist in
removal of the composition to be considered prior art. McAtee discloses that lowering a
composition's surface tension with a surfactant leads to better softening and breaking
up of the lipid and silicone base of the skin products, to improve removing of the lipid-
silicone- containing skin products from the skin. McAtee, column 1, lines 59-64;
Answer, page 3.
Moreover, McAtee recognizes that the presence of a surfactant, such as that present in
Guck, assists in removal of the composition, particularly if that composition contains
lipid or silicone ingredients. McAtee, column 9, lines 28-34.
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007