Ex Parte Emig et al

Patent Trial and Appeal Board

Aug 5, 2013

10555040 (P.T.A.B. Aug. 5, 2013)

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.
10/555,040 11/21/2005 Susanne Emig 05-549-CIP 2756
34704 7590 08/05/2013
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
HELM, CARALYNNE E
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
08/05/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SUSANNE EMIG, SONJA ENGELHARDT,
and SABINE HARGRAVE
__________

Appeal 2012-003104
Application 10/555,040
Technology Center 1600
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to cosmetic
preparations, which have been rejected for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 44-50, 58-61, 63-66, 76, 78-86, 90, and 91 are on appeal.1
Claim 44, the only independent claim, reads as follows:
44. A cosmetic preparation suitable in the area of decorative
cosmetics, the cosmetic preparation comprises an emulsion comprising a
lipophilic outer phase and a hydrophilic inner phase, wherein the outer phase
comprises at least one polyvalent ester, at least one volatile silicone and
optionally further lipophilic additives, and the inner phase contains an
aqueous medium and optionally hydrophilic additives, wherein the
preparation further includes at least one emulsifier and a solids phase,
wherein the polyvalent ester is selected from the group consisting of (1)
polyvalent, at least divalent alcohols each with at least two acid residues, (2)
polyvalent, at least divalent acids and at least two respective alcohol
residues, and (3) polyvalent alcohols and polyvalent acids, wherein the chain
length of the residues originating from the alcohol is C2 to C60 and the chain
length of the residues originating from acids is C4 to C60, wherein the ester
has a melting point in the range of 40 to 200°C, wherein the cosmetic
preparation is selected from the group consisting of lip rouge, blusher,
makeup, eyeshadow, camouflage and a concealer.

In response to an election-of-species requirement, Appellants elected
pentaerythritol tetrabehenate as the species of polyvalent ester, decamethyl
cyclopentasiloxane as the volatile silicone, cetyl PEG/PPG-10/1 dimethicone
as the emulsifier, and inorganic pigments as the solids (Office action mailed
Oct. 22, 2010, page 2). Thus, the elected species of claim 44 is directed to a
cosmetic preparation comprising (1) an emulsion comprising a lipophilic
outer phase comprising pentaerythritol tetrabehenate and decamethyl
cyclopentasiloxane, and a hydrophilic inner phase comprising an aqueous
medium; (2) the emulsifier cetyl PEG/PPG-10/1 dimethicone; and (3)

1 Claim 62 has been objected to but not rejected (Answer 4).
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inorganic pigments; wherein the cosmetic preparation is one of the specified
types of cosmetics.
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 44-50, 58-61, 64-66, 76, 78-80, 86, 90, and 91 in view of
Roulier,2 Omura,3 Krzysik,4 and Abil5;
• Claims 44, 61, and 63 in view of Roulier, Omura, Krzysik,
Stepniewski,6 and Abil;
• Claims 44, 76, and 81-83 in view of Roulier, Omura, Krzysik,
Katsuyama,7 and Abil; and
• Claims 44, 76, 81, 84, and 85 in view of Roulier, Omura, Krzysik,
Katsuyama, Wendel,8 and Abil.
I.
Issue
The Examiner has rejected claims 44-50, 58-61, 64-66, 76, 78-80, 86,
90, and 91 as obvious in view of Roulier, Omura, Krzysik, and Abil. The
Examiner finds that Roulier discloses compositions “in the form of water-in-
oil emulsions” (Answer 6) that can be used in skin and lip makeup products
(id. at 7). The Examiner finds that Roulier’s emulsions comprise a lipophilic
outer phase containing a wax and a silicone emulsifier (id. at 6), where one

2 Roulier et al., US 6,391,322 B1, issued May 21, 2002.
3 Omura et al., US 2003/0064046 A1, issued Apr. 3, 2003.
4 Krzysik et al., US 6,503,526 B1, issued Jan. 7, 2003.
5 Abil® EM 90 reference 2003.
6 Stepniewski et al., US 5,599,533, issued Feb. 4, 1997.
7 Katsuyama et al., US 6,171,580 B1, issued Jan. 9, 2001.
8 Wendel et al., US 2004/0258638 A1, issued Dec. 23, 2004.
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preferred emulsifier is Abil® EM 90, which (as shown by the Abil
reference) is the elected species of emulsifier.
The Examiner finds that the waxes in Roulier’s composition “are
envisioned as fatty esters that are solid at 25°C” (id.) and that Roulier
discloses that the oily phase “preferably contain[s] additional fatty
substances where volatile silicone oils are envisioned” (id.). The Examiner
finds that Roulier also discloses “the inclusion of filler materials in the form
of zinc oxide, titanium oxide and titanium dioxide” (id. at 7).
The Examiner finds that Omura discloses water-in-oil emulsions (for
cosmetic compositions) containing silicone oils in the oily phase, and
exemplifies decamethyl cyclopentasiloxane (id.). The Examiner finds that
Krzysik discloses “fatty esters with a melting point above 35°C that are
suitable for use in compositions intended to protect or repair skin as well as
cosmetic applications” (id.), including pentaerythrityl tetrabehenate, which
“also has the preferred melting point of Roulier” (id.).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to select Krzysik’s pentaerythrityl tetrabehenate for
incorporation into Roulier’s composition because Krzysik discloses that it is
a fatty ester having a melting point in the range desired by Roulier (id. at 8).
The Examiner also concludes that it would have been obvious to select the
decamethyl cyclopentasiloxane of Omura for use in Roulier’s composition
because “both Roulier et al. and Omura et al. teach water-in-oil emulsions
that include silicone oils in the oily phase” (id.).
Appellants contend that “[t]here is no teaching about polyvalent esters
in the Roulier reference” (Appeal Br. 9) and that Krzysik contains “no
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teaching about the use of fatty esters” (id. at 11). Appellants also contend
that Krzysik is directed to an absorbent article (id. at 10) and addresses only
cosmetic cleaning (id. at 9), but “[t]here is no teaching in Kryzik [sic] to use
polyvalent esters for cosmetic use in general” (id. at 10).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the cited references would have made it obvious
to include Krzysik’s pentaerythrityl tetrabehenate and Omura’s decamethyl
cyclopentasiloxane in Roulier’s cosmetic compositions?
Findings of Fact
1. Roulier discloses a cream composition “composed of a water-in-oil
(W/O) emulsion having a high content of wax and … its uses in the
cosmetics and dermatological fields” (Roulier, col. 1, ll. 8-11).
2. Roulier discloses that its composition preferably “contains, in the
oily phase, at least 5% by weight of one or more waxes” (id. at col. 2, ll. 51-
52).
3. Roulier discloses that preferred waxes include “fatty esters and
glycerides which are solid at 25° C.” (id. at col. 2, l. 64 to col. 3, l. 5).
4. Roulier discloses that the oily phase also preferably includes “one
or more fatty substances chosen from oils of animal … [or] vegetable origin,
… silicone oils, in particular volatile silicone oils,” etc. (id. at col. 3, ll. 39-
43).
5. Roulier discloses that the compositions can be used “as (skin and
lip) makeup products by incorporating fillers and/or coloring materials
(pigments and/or dyes)” (id. at col. 5, ll. 14-15).
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6. Roulier discloses that its composition “may additionally … include
one or more fillers (pulverulent constituents) which can be … zinc or
titanium oxides,” among other things (id. at col. 4, ll. 17-21).
7. Roulier discloses that the incorporation of a high percentage of
waxes in its composition, while retaining desirable properties, is made
possible “by preparing the emulsion under cold conditions using a silicone
emulsifier and starting from a soft oily phase having a high percentage of
waxes” (id. at col. 1, ll. 47-53).
8. Roulier discloses that “the silicone emulsifier can be introduced as
… a mixture with a volatile or non-volatile silicone oil” (id. at col. 3, ll. 61-
62).
9. Roulier discloses that one of its most preferred silicone emulsifiers
is Abil® EM 90 (id. at col. 3, l. 66 to col. 4, l. 8).
10. The Examiner finds that Abil® EM 90 is the elected species of
emulsifier (Answer 6). Appellants do not dispute this finding.
11. Krzysik discloses “improving skin health by protecting and
enhancing the barrier function of the skin through delivery of hydrophobic
compositions from the bodyfacing materials of disposable absorbent articles
to the skin” (Krzysik, col. 1, ll. 12-16).
12. Krzysik discloses that its compositions provide benefit when
incorporated into, among other things, cosmetic cleansing or buffing pads
(id. at col. 1, ll. 17-21).
13. Krzysik discloses that the compositions include “one or more
solidifying agents … capable of solidifying the composition so that the
composition is solid at room temperature” (id. at col. 5, ll. 45-52).
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14. Krzysik discloses that the solidifying agents can be fatty acid
esters having a melting point of 35° C or greater (id. at col. 5, ll. 60-65).
15. Krzysik discloses that suitable solidifying agents include
pentaerythrityl tetrabehenate (id. at col. 5, l. 66 to col. 6, l. 16).
16. Omura discloses a “water-in-oil type emulsion cosmetic
composition” (Omura 1, ¶0002).
17. Omura discloses that a silicone oil suitable for use in its
composition is decamethyl cyclopentasiloxane (id. at 3, ¶0037).
Analysis
As discussed above, the elected species of claim 44 is directed to a lip
rouge, blusher, makeup, eyeshadow, camouflage or concealer comprising
(1) an emulsion comprising a lipophilic outer phase comprising
pentaerythritol tetrabehenate and decamethyl cyclopentasiloxane, and a
hydrophilic inner phase comprising an aqueous medium; (2) the emulsifier
cetyl PEG/PPG-10/1 dimethicone; and (3) inorganic pigments.
Roulier discloses a cream composition comprising a water-in-oil
emulsion having a high wax content which can be used in cosmetics.
Roulier discloses that suitable waxes include fatty esters which are solid at
25° C and that, in addition to the wax, the oil phase can include fatty
substances such as silicone oils, particularly volatile silicone oils. Roulier
also discloses that its emulsion is made using a silicone emulsifier,
preferably Abil® EM 90, and that its composition can include solid
pigments (e.g., zinc or titanium oxides) as fillers.
Krzysik discloses hydrophobic compositions for improving skin
health, comprising solidifying agents such as fatty acid esters having a
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melting point of 35° C or greater, one example of which is pentaerythrityl
tetrabehenate. In view of these disclosures, it would have been obvious to
incorporate Krzysik’s pentaerythrityl tetrabehenate into Roulier’s
composition because Roulier discloses that fatty esters with a melting
temperature above 25° C are suitable wax components, and Krzysik
discloses that pentaerythrityl tetrabehenate is a fatty ester with a melting
temperature above 35° C that is suitable for application to skin.
In addition, it would have been obvious to incorporate decamethyl
cyclopentasiloxane in Roulier’s composition, because Roulier expressly
suggests including a silicone oil in its oily phase, and Omura discloses that
decamethyl cyclopentasiloxane is a silicone oil suitable for use in a water-in-
oil emulsion cosmetic composition.
Appellants argue that Roulier does not teach polyvalent esters (Appeal
Br. 9), and that Krzysik contains “no teaching about the use of fatty esters”
(id. at 11).
This argument is not persuasive. While Roulier does not expressly
suggest including polyvalent esters in it composition, it does suggest “fatty
esters … which are solid at 25° C” (FF 3). Krzysik discloses that
pentaerythrityl tetrabehenate is a fatty ester having a melting temperature in
the range desired by Roulier (FFs 14, 15). Pentaerythrityl tetrabehenate is
the elected species of polyvalent ester (Office action mailed Oct. 22, 2010,
page 2), and therefore the references would have made it obvious to include
a polyvalent ester – specifically, pentaerythrityl tetrabehenate – in Roulier’s
composition.
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Appellants also argue that “Roulier is directed to a ‘W/O-Emulsion’.
Krzysik is directed to an ‘Absorbent Article’…. [T]hese documents are not
useful for the same purpose. Thus, the combination is not obvious.”
(Appeal Br. 10.) Similarly, Appellants argue that “Krzysik et al. does not
deal with a cosmetic composition. Therefore, Krzysik et al. is not analogous
art and not appropriate for combination with the primary reference.” (Id. at
11.)
This argument is not persuasive. Although Krzysik does not disclose
make-up compositions, it discloses that its compositions are suitable for
application to skin and improve skin health. Thus, a skilled artisan would
have recognized that the components of Krzysik’s compositions would be
suitable for use in other compositions to be applied to skin, such as
Roulier’s.
Thus, we affirm the rejection of claim 44 as obvious in view of
Roulier, Omura, Krzysik, and Abil. Dependent claims 45-50, 58-61, 64-66,
76, 78-80, 86, 90, and 91 have not been argued separately and therefore fall
with claim 44. 37 C.F.R. § 41.37(c)(1)(vii).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
cited references would have made it obvious to include Krzysik’s
pentaerythrityl tetrabehenate and Omura’s decamethyl cyclopentasiloxane in
Roulier’s cosmetic compositions.
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II.
The Examiner has rejected claims 44, 61, and 63 as obvious in view
of Roulier, Omura, Krzysik, Stepniewski, and Abil. Claim 61 depends from
claim 44 and further requires that the cosmetic preparation includes “a non-
volatile silicone oil in an amount of less than 5 percent by weight.”
The Examiner relies on Roulier, Omura, Krzysik, and Abil as
discussed above. The Examiner finds that Stepniewski discloses “stable
water-in-oil emulsions for personal care preparations.… They go on to teach
the inclusion of non-volatile silicone oils in the compositions.” (Answer 9.)
The Examiner finds that Stepniewski also discloses that “[p]articular non-
volatile silicone oils include cetyl dimethicone” (id.). The Examiner
concludes that it “would have been obvious to one of ordinary skill in the art
to select cetyl dimethicone as the non-volatile silicone oil in the invention of
Roulier et al. in view of Omura et al. and Krzysik et al. … since it was a
known particular variety of the non-volatile silicone oil utilized in water-in-
oil emulsions as taught by Roulier” (id. at 9-10).
Appellants argue that they do “not claim to be the first to use a non-
volatile silicone oil in a cosmetic preparation; however, the combination of
elements set forth in dependent claims 61 and 63 result in benefits which are
not appreciated in the prior art” (Appeal Br. 12). Appellants argue that the
cited prior art “does not teach that the non-volatile silicone oils claimed in
combination with the volatile silicone oils and other components allow for
the solid phases to be integrally incorporated into a stable preparation” (id.).
We will affirm the rejection of claim 61. Appellants do not dispute the
Examiner’s conclusion that it would have been prima facie case obvious to
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include cetyl dimethicone in Roulier’s composition. Appellants argue only
that doing so allows the solid phases to be incorporated into a stable
composition, a property that was not appreciated in the prior art. However,
Appellants have not asserted, or provided any evidence, that this result was
unexpected. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007) (“[B]y definition, any superior property must be unexpected to be
considered evidence of non-obviousness.”). Claim 63 has not been argued
separately and therefore falls with claim 61.
We also affirm the rejection with respect to claim 44 because, as
discussed above, we conclude that claim 44 would have been obvious based
on Roulier, Omura, Krzysik, and Abil.
III.
The Examiner has rejected claims 44, 76, and 81-83 as obvious in
view of Roulier, Omura, Krzysik, Katsuyama, and Abil. Claim 76 depends
from claim 44 and further requires that “the solid phase comprises fillers,
effect substances, inorganic pigments, organic pigments and mixtures
thereof.” Claim 81 depends from claim 76 and further requires that the
inorganic pigment, e.g., zinc oxide, has a particle size of 5 to 50 nm.
The Examiner relies on Roulier, Omura, Krzysik, and Abil as
discussed above. The Examiner finds that Katsuyama discloses “ultraviolet-
screening zinc oxide particles” (Answer 10), having a size of 50 nm to 100
nm (id.). The Examiner concludes that “[s]ince Roulier … teaches the
incorporation of zinc oxide as well as sunscreen agents, it would have been
obvious to one of ordinary skill in the art … to use the zinc oxide particles of
Katsuyama et al. as the zinc oxide particles” in the composition made
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obvious by Roulier, Omura, and Krzysik (id.). We agree with the
Examiner’s findings and conclusions as set forth in the Examiner’s Answer
at pages 10-11.
Appellants argue that “[i]t is not seen that there is an adequate
teaching of the nanopigment material claimed in combination with the other
elements” (Appeal Br. 12). This argument is not persuasive because, for the
reasons discussed above, it would have been obvious to include
Katsuyama’s nanometer-sized zinc oxide particles as a sunscreen agent in
Roulier’s composition.
Thus, we affirm the rejection of claims 76 and 81 in view of Roulier,
Omura, Krzysik, Katsuyama, and Abil. Claims 82 and 83 have not been
argued separately and therefore fall with claim 81. 37 C.F.R.
§ 41.37(c)(1)(vii). We also affirm the rejection with respect to claim 44
because, as discussed above, we conclude that claim 44 would have been
obvious based on Roulier, Omura, Krzysik, and Abil.
IV.
The Examiner has rejected claims 44, 76, 81, 84, and 85 in view of
Roulier, Omura, Krzysik, Katsuyama, Wendel, and Abil. Claim 84 depends
from claim 81 and further requires that the “nanopigment is combined with
oil-soluble UV-A and UV-B light filter substances.”
The Examiner relies on Roulier, Omura, Krzysik, Katsuyama, and
Abil as discussed above. The Examiner finds that Wendel discloses
“compositions with combinations of ultraviolet light filters where zinc oxide
particulates less than 300 nm are envisioned.… Additional UV filters are
also taught that include 3-(4-methylbenzydiene) camphor and isoamyl
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p-methoxy-cinnamate” (Answer 11). The Examiner concludes that “since
zinc oxide nanopigment, 3-(4-methylbenzydiene) camphor, and isoamyl
p-methoxycinnamate are all known as UV filters, it would have been
obvious to one of ordinary skill … [to] include all three of them as the
sunscreen agents in the composition of Roulier” (id. at 11-12). We agree
with the Examiner’s findings and conclusions as set forth in the Examiner’s
Answer at pages 11-12.
Appellants argue that “nanopigment combined with the light filtering
substances is taught only by” the instant Specification (Appeal Br. 12). This
argument is not persuasive. Even if none of the prior art references
expressly teaches the combination recited in claim 84, for the reasons set
forth by the Examiner (Answer 11), the combination would have been
obvious based on the combined teachings of the references.
Thus, we affirm the rejection of claim 84 as obvious in view of
Roulier, Omura, Krzysik, Katsuyama, Wendel, and Abil. Claim 85 has not
been argued separately and therefore falls with claim 84. 37 C.F.R.
§ 41.37(c)(1)(vii). We also affirm the rejection with respect to claims 44,
76, and 81 because, as discussed above, we conclude that these claims would
have been obvious based on Roulier, Omura, Krzysik, Katsuyama, and Abil.
SUMMARY
We affirm all of the rejections on appeal.
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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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