Ex Parte Dingley et al

Patent Trial and Appeal Board

Dec 19, 2017

12744061 (P.T.A.B. Dec. 19, 2017)

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.
12/744,061 05/21/2010 Ajay G. Dingley CR99U-US 8989
60723 7590
Avon Products, Inc.
1 Avon Place
Suffern, NY 10901
EXAMINER
FISHER, MELISSA L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/21/2017 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):
PATENT.DEPARTMENT@AVON.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJAY G. DINGLEY, MICHAEL J. FAIR, JOHN R. GLYNN JR.,
and GIOVANA A. SANDSTROM1
Appeal 2016-008374
Application 12/744,061
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
cosmetic composition, which have been rejected as lacking adequate written
description, anticipated, and obvious, and provisionally rejected for
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the provisional double patenting rejection.
1 Appellants identify the Real Party in Interest as Avon Products, Inc.
(Appeal Br. 2.)
Appeal 2016-008374
Application 12/744,061
STATEMENT OF THE CASE
The claimed invention “relates to cosmetic compositions and their use
in improving the appearance of biological surfaces by imparting an efficient
optical blurring of wrinkles, fine lines, pores, skin imperfections, and the
like.” (Spec. 11.) The Specification states that “the intensity of the light
reflected back to the observer’s eye from wrinkles on the skin surface is less
than that from normal skin and, as a result, the eye will perceive the
wrinkled skin regions as darker and thus more noticeable.” {Id. 12.)
The Specification states that “one known method that has been
developed to reduce wrinkles and minimize fine lines employs optically
diffusing pigments ... to minimize the quantity of light lost in a wrinkle,
thus making wrinkles appear less visible. One of the most commonly used
optically diffusing pigments is titanium dioxide.” {Id. 16.)
The Specification discloses a “gel system . . . [that] comprises
translucent macroparticles, titanium dioxide particles and color pigments
within a fractal network of nanoparticles. ... It is believed that
nanoparticles aggregate or otherwise coalesce to form a fractal gel network.”
{Id. 26—27.) The Specification states that “‘nanoparticles’ is synonymous
with ‘fractal particles’ . . . and refer[s] to particles with a size of up to about
900 nm.” (Id. 133.) “When dispersed in a suitable medium, the fractal
particles coalesce to form the fractal network.” {Id. 141.) “A suitable
fractal network forms suitable for use in the present invention when the
cohesive interactions among fractal particles are greater than the adhesive
interactions between the fractal particles and the medium.” {Id. 143.)
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Application 12/744,061
Claims 1—33 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A cosmetic composition comprising
(a) a fractal network of nanoparticles dispersed in a medium
such that cohesive interactions among the nanoparticles are
greater than adhesive interactions between the nanoparticles
and the medium;
(b) elastomeric macroscopic particles that are translucent;
(c) titanium dioxide; and
(d) one or more color pigments other than titanium dioxide,
wherein the titanium dioxide weight percent of the total
composition ranges between about 0.5% and 4.0%, and wherein
the composition produces a diffused transmittance of greater
than 55% when applied onto a biological surface.
Claims 20, 22, 29, and 32 are also independent, and are also directed
to a composition that comprises a fractal network of nanoparticles and
elastomeric macroscopic particles (claims 20, 22, and 29) or a method of
using such a composition (claim 32).
The claims stand rejected as follows:
Claims 1—33 under 35 U.S.C. § 112, first paragraph, for lack of
adequate written description (Non-Final Action2 3);
Claims 1-6, 9-19, 22-26, and 28-33 under 35 U.S.C. § 102(b) as
anticipated by Kosbach3 (Non-Final Action 4);
2 Office Action mailed July 1, 2015.
3 US 2005/0163813 Al, pub. July 28, 2005.
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Application 12/744,061
Claims 1—19, 22—26, and 28—33 under 35 U.S.C. § 103(a) as obvious
based on Kosbach and Wyatt,4 as evidenced by Dow Coming5 (Non-Final
Action 14—15);
Claims 1—6, 9—19, 20, and 22—33 under 35 U.S.C. § 103(a) as obvious
based on Kosbach and Sandewicz6 (Non-Final Action 16);
Claims 1—6 and 9-33 under 35 U.S.C. § 103(a) as obvious based on
Kosbach, Sandewicz, and Oda7 (Non-Final Action 17); and
Claims 1—33, provisionally, for obviousness-type double patenting
based on claims 1—13, 16, 17, 21, 22, 24—29, and 31—34 of application
12/747,469 in view of Kosbach (Non-Final Action 21).
I
The Examiner has rejected all of the claims on appeal on the basis that
they “recite ‘a fractal network of nanoparticles dispersed in a medium such
that cohesive interactions among the nanoparticles are greater than adhesive
interactions between the nanoparticles and the medium’” but “the instant
specification does not teach the conditions required such that the cohesive
interactions among fractal particles are greater than the adhesive interactions
between the fractal particles and the medium.” (Non-Final Action 3.)
Appellants argue that “[t]he Examiner has failed to explain why one
of ordinary skill in the art would not have recognized Applicants as having
4 US 7,632,489 B2, issued Dec. 15, 2009.
5 “HMW 2220 Non-Ionic Emulsion,” www.dowcoming.com/applications/
search/default.aspx?R= 1222EN&DCCSF=2012EN, accessed 11/30/2011.
A copy of this reference was made of record on Dec. 16, 2011.
6 US 2007/0048238 Al, pub. Mar. 1, 2007.
7 JP 2007-302647, pub. Nov. 22, 2007.
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Application 12/744,061
had possession of the claimed fractal network and cohesive interactions in
light of the disclosures of the instant specification.” (Appeal Br. 7.8)
Appellants argue that the Specification “provide[s] extensive disclosure of
the conditions, including teaching the dispersion media and fractal particles
to be employed in making the fractal network” and includes working
examples that “provide [] a method of making the fractal compositions, and
. . . present[] actual tests conducted on the fractal compositions after
application to the skin.” {Id. at 7—8.)
We agree with Appellants that the Examiner has not shown that those
skilled in the art would not have recognized that Appellants were in
possession of the claimed method based on the Specification’s disclosure.
The Specification describes a “fractal network compris[ing] at least one type
of submicron sized fractal particle (i.e., nanoparticles). When dispersed in a
suitable medium, the fractal particles coalesce to form the fractal network.”
(Spec. 141.) The Specification also states that a “suitable fractal network
forms suitable for use in the present invention when the cohesive
interactions among fractal particles are greater than the adhesive interactions
between the fractal particles and the medium.” {Id. 143.)
As Appellants have pointed out, the Specification also describes
suitable fractal particles {id. H 59-62) and suitable dispersion media (id.
1 58), describes the preparation of the claimed composition {id. H 112—114),
and provides a working example (H 119-120) of preparing “a composition
8 The Appeal Brief lacks page numbers. We refer to the pages as if they
were numbered consecutively beginning with the first page of the Appeal
Brief.
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comprising a gel system composed of a fractal network of nanoparticles and
macroparticles.” (Id. 1119.) The Examiner has not persuasively explained
why a person of ordinary skill in the art would not recognize from this
description that Appellants were in possession of the claimed composition at
the time the application was filed. See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.”).
II
The Examiner has rejected claims 1—6, 9-19, 22—26, and 28—33 as
anticipated by Kosbach. The Examiner finds that Kosbach describes a soft-
focus cosmetic composition comprising alumina nanoparticles and nylon
particles. (Non-Final Action 5.) The Examiner concludes that
[njylon particles meet the recited limitation of an elastomeric
macroscopic particle that are translucent as evidenced by instant
claim 4 (i.e. nylon is a polyamide) and the instant specification
(see [0075] which teaches that other preferred macroscopic
particles are polymeric spheres such as nylon, i.e. Nylon 12).
(Id.) The Examiner finds that Kosbach’s composition also comprises
titanium dioxide (id.) and other color pigments (id. at 7).
Appellants argue that the claims require elastomeric macroparticles,
and “Kosbach fails to teach or suggest this limitation of the claims.”
(Appeal Br. 8.) Appellants argue that “nylon is not an ‘elastomeric’
macroparticle” and is not listed among the exemplary elastomeric particles
disclosed as useful for the invention. (Id. at 9.) Appellants argue that the
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passage relied on by the Examiner is not to the contrary, because it refers to
“other preferred macroscopic particles or alternatively soft-focus materials,”
but does not indicate that the recited materials are elastomeric. (Id.) Finally,
Appellants argue that the recitation of polyamides in dependent claim 4 does
not mean that all polyamides are elastomeric: “Indeed, nylon is not
elastomeric, but other polyamides may be.” (Id.)
We agree with Appellants that the evidence of record does not support
the Examiner’s finding that nylon particles are elastomeric. The
Specification states that
the gel system in addition to macroparticles may include other
soft-focus materials that can be generally incorporated within the
fractal network of the forming gel systems. A non-limiting
example is a composition comprising a gel system of elastomeric
macroparticles and soft-focus materials such as for example,
nylon and boron nitride within a fractal network of nanoparticles.
(Spec. 165, emphasis added.) The Specification also states that “[t]he
cosmetic compositions of the present invention in addition to macroparticles
may also contain other polymeric and/or inorganic soft-focus materials or
any mixtures thereof. ... A non-limiting example of the polymeric soft-
focus material such as nylon (e.g., Nylon 12 . . .).” (Id. 1 87.)
As Appellants have pointed out, the Specification’s list of exemplary
elastomeric macroparticles does not include nylon. (See id. 1 68.) While it
does include polyamides, we agree with Appellants that that disclosure is
inadequate evidence to support a conclusion that every polyamide is
elastomeric. The Specification therefore does not support the Examiner’s
finding that the nylon particles disclosed by Kosbach meet the claim
requirement for elastomeric macroparticles.
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The Examiner points to the Specification’s statement that “[o]ther
preferred macroscopic particles or alternatively soft-focus materials are
polymeric spheres such as nylon (e.g., Nylon 12 . . .).” (Id. 174,9 see Ans.
4.) We agree with Appellants, however, that this disclosure does not support
the Examiner’s finding, because “the application makes no mention of such
alternative particles being elastomeric.” (Appeal Br. 9.) We therefore
reverse the rejection of claims 1—6, 9-19, 22—26, and 28—33 as anticipated
by Kosbach.
Ill
The Examiner has rejected claims 1—19, 22—26, and 28—33 as obvious
based on Kosbach and Wyatt, as evidenced by Dow Coming. The Examiner
finds that Kosbach does not describe elastomeric macroscopic particles
made from any of the silicone crosspolymers recited in dependent claims 7
and 8. (Non-Final Action 15.) The Examiner finds that “Wyatt et al.
teaches a cosmetic system, which includes the use of particles,” and the
particles can be made from Dow Coming HMW2220. (Id.) The Examiner
cites Dow Coming as evidence that Dow Coming HMW2220 is “a high
molecular weight divinyldimethicone/dimethicone copolymer.” (Id.) The
Examiner concludes that it would have been obvious “to utilize the
polymeric particles taught by Wyatt et al. in the composition [of] Kosbach et
al. One would be motivated to do so as to allow for a smoother thick coating
of the composition as taught by Wyatt et al.” (Id. at 15—16.)
9 The Examiner cites paragraph 75 but, as Appellants have noted (Appeal
Br. 9), the relevant disclosure is in paragraph 74.
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Application 12/744,061
Appellants argue that “Wyatt is directed to [a] mascara composition
with ‘thickening benefits,’” while Kosbach is directed to a soft-focus
composition. (Appeal Br. 12.) Appellants argue that,
[rjeading Kosbach’s disclosure, there is no indication that it
would be desirable to obtain a “thick coating,” such as would be
desirable for Wyatt’s mascara. Rather, Kosbach discloses that
his compositions are formulated for skin treatment, not hair
thickening, and to avoid cosmetics which create an “unnatural,
caked-on appearance” (Kosbach, || [0003], [0026])[.] Thus, the
Examiner does not explain why thickening would be desired in
Kosbach.
(Id. at 12-13.)
We agree with Appellants’ position. Kosbach discloses “cosmetic
compositions and methods for enhancing the soft-focus effect of cosmetic
compositions and for disguising skin imperfections using soft-focus
cosmetic compositions.” (Kosbach 12.) Wyatt discloses “a system for a
mascara composition for depositing a thicker coating of mascara on the
lashes while minimizing the clumping of lashes together.” (Wyatt 2:42-45.)
Wyatt states that Dow Coming’s HMW2220 dimethicone provides
“malleable particles whose shape may partially deform when applied to the
lashes so as to allow for a smoother thick coating of composition.” (Id. at
11:35-37.)
The Examiner provides no persuasive reason for concluding that a
person of ordinary skill in the art would have considered it obvious to
include a component that allows for a smoother thick coating of mascara on
eyelashes in a skin-care composition for disguising skin imperfections. As
Appellants have pointed out, Kosbach states that a drawback of some
previous approaches to disguising skin wrinkles was that the make-up
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compositions “create[d] an unnatural, caked-on appearance.” (Kosbach 13.)
This disclosure would seem to indicate that a thick coating of Kosbach’s
cosmetic composition would have been considered undesirable to those
skilled in the art.
IV
The Examiner has rejected claims 1—6, 9-19, 20, and 22—33 as
obvious based on Kosbach and Sandewicz. However, the Examiner relies
on Sandewicz only for its disclosure of titanium dioxide particles and
pigment particles in the size range recited in claims 20 and 27. (Non-Final
Action 16.) The Examiner points to no disclosure in Sandewicz that makes
up for Kosbach’s failure to teach elastomeric macroscopic particles, as
discussed above with regard to the anticipation rejection. We therefore
reverse the rejection of claims 1—6, 9-19, 20, and 22—33 under 35 U.S.C.
§ 103(a) based on Kosbach and Sandewicz for the reasons discussed above
with regard to the rejection based on 35 U.S.C. § 102(b).
V
The Examiner has rejected claims 1—6 and 9—33 as obvious based on
Kosbach, Sandewicz, and Oda. The Examiner finds that Kosbach and
Sandewicz do not teach any of the specific types of elastomeric macroscopic
particles recited in claim 21. (Non-Final Action 18.) The Examiner finds
that
Oda teaches a cosmetic for the soft focus effect (see
[0002]). Oda teaches that the composition includes 10-100nm
titanium oxide particles and a spherical powder (see [0006]).
Oda teaches that the spherical powder is from 2pm to 30pm (see
[0020]). Oda teaches that the spherical powder can be selected
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from a group that includes silicone elastomers, acrylic
elastomers, and nylon (see [0020]).
(Id.) The Examiner concludes that it would have been obvious
to substitute a spherical powder of silicone elastomers or acrylic
elastomers as taught by Oda for the nylon powder in the
composition of Kosbach et al.. . . as both are drawn to soft focus
compositions, and Oda teaches that nylon powder, in addition to
the other recited spherical powders can be utilized in a soft focus
composition.
(Id.)
Appellants argue that “Oda appears to relate to a mixture of composite
pigments and powders, not a gel.” (Appeal Br. 13.) Appellants argue that
“[i]t does not make sense that one would have substituted Oda’s elastomeric
particles for non-elastomeric particles of Kosbach, and the Examiner fails to
offer any evidence that the art viewed them as interchangeable or
functionally equivalent.” (Id. at 13—14.)
We agree with Appellants that the Examiner has not persuasively
shown that a person of ordinary skill in the art would have had a reason to
substitute Oda’s silicone elastomer powder or acrylic elastomer powder for
the nylon particles in Kosbach’s composition. Oda states that the spherical
powder in its composition—which can be a silicone elastomer, an acrylic
elastomer, or 12 nylon, among others—is “a component for improving the
extensibility of the coating time [and] to impart a smooth feel.” (Oda 120.)
Thus, it is reasonable to conclude, based on Oda, that powders
composed of silicone elastomers, acrylic elastomers, or 12 nylon are equally
suitable for improving the extensibility of coating time and imparting a
smooth feel to a soft-focus cosmetic composition. Kosbach, however,
describes nylon particles as light diffusing particles that are useful in its
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composition in addition to fumed alumina particles. (Kosbach 125.) Thus,
the nylon particles are described in Oda and Kosbach as serving different
functions, and the Examiner has not provided a sufficient and persuasive
reason for substituting (i.e., replacing) nylon particles in Kosbach’s
compositions in favor of the cited powders in Oda.
The Examiner has not pointed to evidence showing that a person of
ordinary skill in the art would have recognized that particles of a silicone
elastomer or an acrylic elastomer would have been considered to be suitable
light diffusing particles for use in Kosbach’s composition, based on Oda’s
disclosure that they are all suitable for improving the extensibility of coating
time and imparting a smooth feel to Oda’s composition. We therefore
reverse the rejection of claims 1—6 and 9—33 under 35 U.S.C. § 103(a) based
on Kosbach, Sandewicz, and Oda.
VI
The Examiner has provisionally rejected claims 1—33, provisionally,
for obviousness-type double patenting based on claims 1—13, 16, 17, 21, 22,
24—29, and 31—34 of application 12/747,469 in view of Kosbach (Non-Final
Action 21).
Appellants do not dispute the merits of the provisional rejection. (See
Appeal Br. 14.) Rather, they argue that they submitted a terminal disclaimer
(TD), and that the Office’s basis for disapproving the TD was in error
because the attorney who signed the TD is an attorney of record. (Id.)
Appellants filed a new TD with the Reply Brief. (See Reply Br. 8.) That
TD was also disapproved, on the basis that “[a] 3.73(B) certificate
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(PTO/SB/96) is required.” (Terminal Disclaimer review decision, made of
record Sept. 20, 2016.)
Decisions regarding whether a terminal disclaimer meets the Office’s
requirements are not “adverse decisions of examiners upon applications for
patents.” See 35 U.S.C. § 6(b) (“The Patent Trial and Appeal Board shall—
(1) on written appeal of an applicant, review adverse decisions of examiners
upon applications for patents pursuant to section 134(a).”). Indeed, the
MPEP states that “[wjhere a terminal disclaimer is filed in an application
pending in a TC, it will be processed by the paralegal of the Office of the
Special Program Examiner or appropriate Quality Assurance Specialist
(QAS) of the TC having responsibility for the application.” MPEP
1490(IV).
Thus, we lack jurisdiction to review the Office’s decision regarding
the sufficiency of Appellants’ terminal disclaimers. Rather, those decisions
are among the “various kinds of decisions . . . which have not been and are
not now appealable to the board . . . when they are not directly connected
with the merits of issues involving rejections of claims, but traditionally
have been settled by petition to the Commissioner.” In re Hengehold, 440
F.2d 1395, 1403 (CCPA 1971).
Because Appellants have not disputed the merits of the provisional
rejection for obviousness-type double patenting, we affirm it.
SUMMARY
We reverse the rejection of claims 1—33 under 35 U.S.C. § 112, first
paragraph, for lack of adequate written description.
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We reverse the rejection of claims 1—6, 9-19, 22—26, and 28—33 under
35 U.S.C. § 102(b) as anticipated by Kosbach.
We reverse the rejection of claims 1—19, 22—26, and 28—33 under 35
U.S.C. § 103(a) based on Kosbach and Wyatt, as evidenced by Dow
Coming.
We reverse the rejection of claims 1—6, 9-19, 20, and 22—33 under 35
U.S.C. § 103(a) based on Kosbach and Sandewicz.
We reverse the rejection of claims 1—6 and 9—33 under 35 U.S.C.
§ 103(a) based on Kosbach, Sandewicz, and Oda.
We affirm the provisional rejection of all of the claims on appeal for
obviousness-type double patenting based on claims 1—13, 16, 17, 21, 22, 24—
29, and 31—34 of application 12/747,469 in view of Kosbach.
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
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