Ex Parte Loyen

Patent Trial and Appeal Board

Mar 28, 2019

12595672 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/595,672 02/23/2010
23599 7590 04/01/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Karine Loyen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ATOCM-0372 5287
EXAMINER
HOLLOMAN, NANNETTE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARINE LOYEN 1
Appeal2018-007213
Application 12/595,672
Technology Center 1600
Before ERIC B. GRIMES, TA WEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an oil-
in-water emulsion comprising copolymers of caprolactam and lauryl lactam
(PA-6/12), which have been rejected as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
1 Appellant identifies the Real Party in Interest as ARKEMA FRANCE.
(Appeal Br. 1.)
Appeal2018-007213
Application 12/595,672
STATEMENT OF THE CASE
The Specification states:
Compositions of continuous aqueous phase type have
many advantages from the cosmetic and galenic
viewpoint. They are especially low-cost and comfortable
to use as they do not have a greasy feel. However, their
drawback is that they have a consistency that is too close
to the consistency of water to be attractive for consumers
and they have application difficulties. In addition, after
the feeling of moisture on the skin has disappeared, they
improve neither the comfort, nor the care, nor the visual
appearance of the skin (for example, no powdered
appearance).
(Spec. 1 :31-2:3.) According to the Specification, "[i]t has now been
discovered that by using copolyamide powders, it is possible to prepare
compositions having continuous aqueous phases that give a feeling of
richness to said composition, expected by the users, and leave, after
application, a soft powdered feel." (Id. at 3:3-6.) Further according to the
Specification, the present invention relates to "creamy, liquid or gelled"
cosmetic compositions "mainly comprising a continuous aqueous phase, a
fatty phase and a fine and porous pulverulent copolyamide powder phase."
(Spec. 1:4--7.)
Claims 1, 10, 11, 15-19, and 22 are on appeal. Claim 1 is illustrative
and reproduced below:
1. A composition comprising in % by weight relative to total
composition, (i) 69 to 95% of an aqueous phase, (ii) 40 to 1 % of a
fatty phase and (iii) 0.1 to 30% of a pulverulent phase comprising
copolymers of caprolactam and lauryl lactam (PA-6/12), said
composition being an oil-in-water emulsion.
(Appeal Br. 10 (Claims App'x.).)
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Application 12/595,672
The Examiner rejects claims 1, 10, 11, 15-19, and 22 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Loyen. 2 (Ans. 3.)
I.
Issue
The Examiner finds that Loyen discloses or suggests all of the
limitations of the claims, except that it does not disclose the composition
being an oil-in-water emulsion. (Ans. 3--4.) The Examiner finds, however,
that "[ s ]election of any order of mixing ingredients is prima facie obvious."
(Id. at 4. (citing MPEP § 2144.04)) The Examiner finds that it therefore
would have been obvious to a skilled artisan to modify Loyen's process for
making its compositions, wherein the aqueous phase is added to the fatty
phase, to instead add the fatty phase to the aqueous phase to form an oil-in-
water emulsion. (Id.) The Examiner further finds that Loyen teaches that
cosmetic compositions comprising a continuous fatty phase (1) "very often
cause annoyance on application which sometimes limits their use by
consumers," because "[a] continuous fatty film at the surface of the skin
causes a tacky, oily and sticky feeling"; (2) have a "shiny and oily
appearance ... harmful to the[ir] cosmetic and aesthetic properties"; and (3)
may be difficult to apply together with other make-up because of the "tacky
effect, which interferes with the spreading of the make-up over the skin."
(Id.) The Examiner concludes that "[t]he annoyances and poor performance
properties of a water-in-oil ( continuous fatty phase) composition taught by
Loyen provides the motivation to formulate a composition without said
continuous fatty phase." (Id.)
2 Loyen et al., US 2006/0115504 Al, published June 1, 2006.
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Application 12/595,672
Appellant contends that Loyen does not disclose an oil-in-water
emulsion. (Appeal Br. 2.) Appellant contends that the Examiner's citation
to MPEP § 2144.04 IV.C for the proposition that "'any order of mixing
ingredients' is obvious" is inapposite, because the claims on appeal are
product claims and because, in the cases discussed in MPEP § 2144.04 IV.C,
rearranging the process steps did not result in a different product. (Id. at 3-
4.) Appellant contends that the Examiner has not established that there is a
reason a skilled artisan would have modified the compositions in Loyen to
arrive at the claimed oil-in-water emulsion, with a reasonable expectation of
success. (Id. at 5.) Finally, Appellant contends that the claimed subject
matter exhibits unexpected results. (Id. at 5-8.)
The issue with respect to this rejection is whether a preponderance of
the evidence of record supports the Examiner's conclusion that it would
have been obvious to modify Loyen's composition to arrive at an oil-in-
water emulsion, as recited in the claims.
Analysis
On the record before us, we agree with Appellant that the Examiner
has not established a prima facie case that the claims are obvious over
Loyen. In particular, the Examiner has not established that (1) Loyen
discloses an oil-in-water composition or (2) a skilled artisan would have had
reason to modify Loyen to arrive at such a composition having the claimed
components, with a reasonable expectation of success.
The Examiner does not assert that Loyen explicitly teaches an oil-in-
water composition. However, the Examiner asserts that Loyen "disclose[ s] a
process for the preparation of [a] composition by slowly adding a ... heated
aqueous phase to [a] heated fatty phase while stirring under shearing
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Application 12/595,672
conditions, in order to obtain the emulsion and cooling," that "[ s ]election of
any order of mixing ingredients is prima facie obvious," and that
"[t]herefore, it would have been obvious to one of ordinary skill in the art at
the time of the invention to have added to fatty phase to the aqueous phase in
the process of Loyen to form an oil-in-water emulsion." (Ans. 4.)
We are not persuaded. MPEP § 2144.04 IV.C and the cases cited
therein are inapposite because, in this case, it is not disputed that the prior art
process as disclosed would not result in the claimed product. In re
Burhans, 154 F.2d 690, 692 (CCPA 1946) (holding that selection of order of
performing process steps is prima facie obvious unless such order produces
new and unexpected results). Furthermore, while "[a] claim can be obvious
even where all of the claimed features are not found in specific prior art
references," Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1307
(Fed. Cir. 2006), there still must be "a showing of a suggestion or motivation
to modify the teachings of [the prior art] to the claimed invention." Id.
(internal quotation marks omitted). The Examiner has not provided a
sufficient explanation why a skilled artisan would have modified the
compositions or processes disclosed in Loyen to produce an oil-in-water
composition.
The Examiner first asserts that, based on the description of Loyen's
composition and the claimed composition, "it appears reversing the order of
adding the components, i.e.[,] oil to water or water to oil[,] provides a
substantially similar product, i.e.[,] cream emulsion with similar properties
of leaving a soft powdery feel on the skin." (Ans. 5.)
We are not persuaded. The Examiner has not disputed that Loyen's
process as disclosed (i.e., adding the aqueous phase to the fatty phase) would
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Application 12/595,672
result in a water-in-oil emulsion, whereas adding the fatty phase to the
aqueous phase would result in an oil-in-water emulsion. Moreover, the
Examiner appears to be basing the rejection on the description of the
claimed composition found in the Specification, using the Specification as
though it were prior art. This is impermissible hindsight reasoning. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not ...
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies" in the cited references.)
The Examiner further asserts that Loyen teaches that "cosmetic
compositions comprising a continuous fatty phase [(e.g., a water-in-oil
composition)] very often cause annoyance on application which sometimes
limits their use by consumers," and that this teaching provides the
motivation to formulate a composition without said continuous fatty phase.
(Ans. 4.)
We are not persuaded. While it may be true that Loyen provides a
reason why a skilled artisan may want to improve the properties of a water-
in-oil cosmetic composition, the Examiner does not explain why this
teaching in Loyen would suggest that an oil-in-water composition be used
instead. "[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d
977,988(Fed.C~.2006D.
Finally, as to the reasonable expectation of success, the Examiner
asserts that "Loyen teaches formulations which provide a powdered finish
and a soft feeling upon application ... ; which are the same properties
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Application 12/595,672
provided by the instant compositions." (Ans. 5.) The Examiner asserts that,
"[t]herefore, it does not appear that the different formulations provide
different properties and would therefore provide a reasonable expectation of
success." (Id.)
We are not persuaded for the reasons discussed above. The Examiner
appears to base the finding of reasonable expectation of success on the
descriptions of the claimed composition in the Specification, using the
Specification as though it were prior art. Such hindsight reasoning is
improper in an obviousness analysis.
Accordingly, we reverse the Examiner's rejection of claims 1, 10, 11,
15-19, and 22 as obvious over Loyen.
II.
Under the provisions of 37 C.F.R. § 41.50(b ), we enter the
following new ground of rejection: claims 1, 10, 11, 15-19, and 22 are
indefinite for failing to point out and distinctly claim the subject matter
Appellant contends to be his or her invention. In particular, the claims recite
a composition comprising 69 to 95% of an aqueous phase but further recite
that the composition comprises 40 to 1 % of a fatty phase as well as 0.1 to
30% of a pulverulent phase. (Appeal Br. 10-11 (Claims App'x.).) The
claimed composition must include at least 69% of an aqueous phase and at
least 0.1 % of a pulverulent phase. Thus, no composition comprising 40% of
a fatty phase, as recited, can meet even the minimum requirements for the
other components of the claimed composition. We do not understand how a
composition comprising 69-95% of an aqueous phase may comprise up to
40% of a fatty phase, as this would result in some compositions having
greater than 100% of aqueous phase and fatty phase combined.
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SUMMARY
For the reasons above, we reverse the Examiner's decision rejecting
claims 1, 10, 11, 15-19, and 22 as obvious over Loyen. We enter a new
ground of rejection of claims 1, 10, 11, 15-19, and 22 as indefinite.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with
respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
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