Ex Parte Dingley et alDownload PDFPatent Trial and Appeal BoardDec 19, 201712744061 (P.T.A.B. Dec. 19, 2017) 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. 12/744,061 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.) 2 Appeal 2016-008374 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. 3 Appeal 2016-008374 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. 4 Appeal 2016-008374 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. 5 Appeal 2016-008374 Application 12/744,061 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 6 Appeal 2016-008374 Application 12/744,061 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. 7 Appeal 2016-008374 Application 12/744,061 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. 8 Appeal 2016-008374 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 9 Appeal 2016-008374 Application 12/744,061 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 10 Appeal 2016-008374 Application 12/744,061 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 11 Appeal 2016-008374 Application 12/744,061 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 12 Appeal 2016-008374 Application 12/744,061 (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. 13 Appeal 2016-008374 Application 12/744,061 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 14 Copy with citationCopy as parenthetical citation