Appeal No. 2007-0627
Application No. 09/482,773
The examiner notes that Kimura “fails to explicitly teach using the
composition to visibly reduce wrinkles or lines of the skin.” Id. Hineno is
cited for its teaching of a “composite powder comprising interference or
reflective pigment useful in covering wrinkle[s, sic] and improving skin
color.” Id. The examiner cites Example 6, which teaches a foundation
comprising serecite, iron oxides, and a composite powder. Id. The
examiner thus asserts that Hineno would motivate one of ordinary skill in
the art to use the composition taught by Kimura to enhance wrinkle-
coverage and improve skin color tone.
Appellant argues that if the Examiner is asserting that one practicing
the method of Kimura is inherently practicing the method of the claimed
method, “that is, that the method in the patent will function in the claimed
beneficial manner when topically applied to the skin, then the Examiner is
confusing an obviousness analysis with anticipation based on inherency”
(Br. 7). 3
We agree. The Examiner’s statement that “the prior art composition,
when used by the users with aged skin, obviously renders the wrinkle
minimizing effect which applicants claim,” makes it unclear if the statutory
basis of the rejection is 35 U.S.C. § 102 or 35 U.S.C. § 103. Because we are
of the opinion that the teachings of Kimura are pertinent to the patentability
of the claims, we vacate the pending rejections and remand the application
back to the examiner to further reconsider the patentability of the claims in
view of the following statements.
3 All references to the Brief are to the Supplemental Brief, dated February 21,
2006.
3
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