Ex Parte PARK et al

Patent Trials and Appeals Board

Jun 25, 2019

15033048 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/033,048 04/28/2016 Byeong-Gyu PARK
28997 7590 06/27/2019
Harness Dickey (St. Louis)
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
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.
16477-000016-US-NP 3418
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
stldocket@hdp.com
bkamer@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BYEONG-GYU PARK, SUNG-SOO KANG,
SANG-WOOK PARK, and KYONG-SEOB KIM1
Appeal2019-004105
Application 15/033,048
Technology Center 1600
Before RYAN H. FLAX, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
cosmetic composition comprising UV blocking agents, impregnated in a
water-insoluble sponge. The Examiner rejected the claims as obvious over
the prior art, and for nonstatutory double patenting. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as "LG Household & Health
Care Ltd." Appeal Br. 3. Herein, we reference the Specification filed Apr.
28, 2016 ("Spec."); Final Office Action mailed May 9, 2018 ("Final Act.");
Appeal Brief filed Oct. 30, 2018 ("Appeal Br."); Examiner's Answer mailed
Mar. 1, 2019 ("Ans."), and Reply Brief filed Apr. 30, 2019 ("Reply Br.").
Appeal2019-004105
Application 15/033,048
STATEMENT OF THE CASE
The Specification states that the "inventors found that when a
cosmetic composition having a UV blocking function is impregnated into a
water insoluble sponge, there is a problem with an actual sun protection
factor/ grade that is lower than expected from the total amount of the UV
blocking agent included in the cosmetic composition." Spec. ,-J 8. The
Specification further states that "the inventors identified the cause of the
problem - the oil soluble organic UV blocking agent in direct contact with
the water insoluble sponge is adsorbed to the water insoluble sponge, and as
a result, the UV blocking agent is not delivered at the same concentration as
before impregnation." Id. ,-i 9. The Specification states that the disclosure
"is directed to providing a cosmetic composition including a UV blocking
agent, wherein the cosmetic composition is impregnated in a water insoluble
sponge, and an oil soluble organic UV blocking agent is substantially absent
in the external phase of the cosmetic composition .... " Id. ,-i 11.
Claims 10, 11, 13, and 14 are on appeal. Final Act. 2. Claim 10, the
only independent claim, reads as follows:
10. A cosmetic comprising a water-insoluble sponge, a
cosmetic composition impregnated in the water-insoluble
sponge, and a puff,
wherein the cosmetic composition comprises a water-
soluble organic ultraviolet (UV) blocking agent,
wherein an oil-soluble organic UV blocking agent is
present less than 10% per the total weight of the organic UV
blocking agent included in the cosmetic composition,
wherein the formulation of the cosmetic composition is a
water-in-oil emulsion, and
wherein the water insoluble sponge is formed of a
hydrophobic monomer polymer.
Appeal Br. 18 (Claims Appendix).
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Application 15/033,048
The claims stand rejected as follows:
Claims 10, 11, and 14 are rejected under 35 U.S.C. § 103(a) as being
obvious over Potin,2 Candau,3 and Loesser. 4 Final Act. 7.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being obvious over
Potin, Candau, Anonymous, 5 and Loesser. Id. at 10.
Claims 10, 11, 13, and 14 are rejected on the ground of nonstatutory
double patenting over claims 1-6 of U.S. Patent No. 9,744,117 (issued Aug.
29, 2017) in view of Loesser. Id. at 4.
DISCUSSION
Obviousness
The Examiner found that Potin discloses a cosmetic comprising a
water-insoluble substrate, e.g. a sponge, impregnated preferably with a
water-in-oil emulsion that can contain, e.g., UV screening agents. Final Act.
8. The Examiner found that while Potin does not explicitly disclose that the
UV screening agent is water-soluble, Candau discloses a cosmetic
composition, e.g., a foundation, in the form of a water-in-oil emulsion
comprising a water-soluble organic UV screening agent, which can further
comprise an inorganic UV screening agent, wherein the emulsion does not
necessarily comprise an oil-soluble organic UV screening agent. Id.
The Examiner further found that Loesser discloses a "vanity case"
comprising a box with a puff for face powder, and a tray for an additional
cosmetic. Id. The Examiner found that a person of ordinary skill in the art
2 Potin, US 2008/0199501 Al, published Aug. 21, 2008 ("Potin").
3 Candau, US 2006/0177395 Al, published Aug. 10, 2006 ("Candau").
4 Loesser, US Patent 1,549,276, issued Aug. 11, 1925 ("Loesser").
5 The Beauty Company, Inc., product flyer for "SBR 100% Synthetic Latex
for Cosmetic Applicators," Mar. 2008.
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Application 15/033,048
would have been "motivated to employ Candau's water-in-oil emulsion in
Potin' s cosmetic, with the reasonable expectation that the resulting cosmetic
will be easy to use, and that the composition will provide a creamy texture
that is comfortable to the skin upon application, will be evenly spread and
distributed onto the skin, and will exhibit good water-remanence,
perspiration remanence, and washing remanence, and good persistence over
time for an overall improved UV screening effectiveness." Id. at 9. The
Examiner further found that because "face powder [is] often applied over a
foundation to control perspiration and reduce shine, one of ordinary skill in
the art would [have] be[en] motivated to employ Loesser's 'vanity case'
cosmetic in which face powder with a puff (i.e. contained in the box
compartment) is combined with the water-insoluble sponge containing the
water-in-oil emulsion UV screening composition (i.e. contained in the tray
compartment)." Id. at9-10.
As to claim 13, the Examiner found that "Anonymous discloses that a
foam sponge comprising styrene-butadiene rubber (SBR) has been the
Professionals['] choice for decades as a cosmetic applicator," and that "one
of ordinary skill in the art would [have been] motivated to employ Candau' s
water-in-oil emulsion in Potin's cosmetic and employ SBR in the water-
insoluble sponge." Id. at 12-13.
We discern no error in the Examiner's findings and rationale; we
adopt the Examiner's findings of fact and conclusions on obviousness. See
id. at 7-17; Ans. 3-14. We address Appellants' arguments below.
Appellants assert that the "Examiner has not cited references that
describe all elements of independent Claim 10," specifically the "water
insoluble sponge ... formed of a hydrophobic monomer polymer," and the
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"cosmetic composition impregnated in the water insoluble sponge." Appeal
Br. 5-6. We are not persuaded by this argument. We agree with the
Examiner that Potin discloses a cosmetic impregnated into a water-insoluble
substrate, which can be a sponge. Ans. 4; see also Potin ,-J,-J 9-12, 68-69. As
to whether the sponge is "formed of a hydrophobic monomer polymer," the
Examiner stated that "it would have generally been well understood by
anyone of ordinary skill in the cosmetic arts in 2015 at the time the present
application was filed that any 'water-insoluble cosmetic sponge', and
certainly any 'water-insoluble foam cosmetic sponge' will of course be
composed of a hydrophobic monomer polymer," and that "the standard
materials employed in the strictly-regulated industry" are "either nitrile
butadiene rubber (NBR) or styrene butadiene rubber (SBR), or perhaps in
some rare cases natural latex." Ans. 5-6 (citing evidentiary support). In
view of the Examiner's findings, which the Appellants did not dispute, we
find that the cited prior art combination sufficiently teaches the
"hydrophobic monomer polymer" limitation of claim 10.
Appellants next assert that the "Examiner has failed to demonstrate
why the specific combination of a water-insoluble sponge, a water-soluble
organic UV blocking agent, and a W/0 [water-in-oil] emulsion would have
been obvious given the broad, general disclosures of Potin and Candau."
Appeal Br. 6-1 O; Reply Br. 2. We are not persuaded by this argument. As
the Examiner indicated, Potin expresses a preference for a water-in-oil
emulsion, which can contain, e.g., a UV blocking agent, and also expresses a
preference for a water-insoluble sponge. Ans. 4 (citing, e.g., Potin ,-J,-J 21, 58,
69), 6; Final Action 8. As the Examiner stated, "by selecting these features,
Appellant has merely followed the express teachings of Potin like a recipe."
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Ans. 4. Similarly, as the Examiner stated, Candau "expressly directs one of
ordinary skill in the art to employ hydrophilic UV screening agents,
including water-soluble organic UV screening agents." Ans. 6-7 ( citing,
e.g., Candau ,i,i 4, 5, 7, 15, 37-59); Final Action 8.
Appellants assert that the "Examiner cannot rely on a preferred
embodiment to direct the artisan only to W /0 emulsions, because each of the
five emulsion types are 'reasonably suggest[ ed]' by Potin." Appeal Br. 8.
As support, Appellants cite Merck & Co. v. Biocraft Labs., 874 F.2d 804
(Fed. Cir. 1989), which they summarize as stating that "[a] reference's
teachings are not limited only to preferred or exemplified embodiments, but
to all that would have been reasonably suggested to one having ordinary
skill in the art." Appeal Br. 8. Appellants' reliance on Merck is misplaced.
In that case, the patentee sought to discount prior art teachings because they
were not identified as preferred embodiments. Merck, 874 F.2d at 807. In
rejecting the patentee's argument, the Federal Circuit stated that "in a
section 103 inquiry, 'the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
preferred embodiments, must be considered."' Id. In other words, Merck
simply stands for the unremarkable proposition that a prior art disclosure is
not limited to only the examples or embodiments it sets forth as preferred.
Merck does not stand for the proposition that express teachings in a prior art
reference directing artisans to preferred embodiments are to be discounted
where the reference also teaches additional options, as Appellants suggest.
Appellants additionally argue that the "Examiner has provided no
evidence or rationale to suggest that the puff of Loesser, which is designed
for applying face powder, is capable of effectively applying the emulsions of
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either Potin or Candau" (Appeal Br. 11 ), and that fluid compositions like
those taught in Potin are directly applied to the skin and "would not be
administered with a puff." Reply Br. 3. We are not persuaded by these
arguments, because they misapprehend the Examiner's rejection. As the
Examiner explained, "the puff of Loesser is not employed to apply the
emulsions of Potin or Candau," but rather "is to apply face powder, as
Loesser expressly teaches." Ans. 8; see also Final Rejection 8, 9-10. This
rationale is reasonable, given that Appellants' claims merely recite inclusion
of a puff, without any further limitations on the puff. And even if Loesser' s
puff were required to apply the emulsions of Potin or Candau, on this record
Appellants have not identified any incompatibilities between these
emulsions and Loesser' s puff. The Specification indicates that a puff is
merely a tool to apply a cosmetic composition to the skin (Spec. ,-J 41 ), and
Loesser' s disclosure exemplifies precisely such a tool. See item 25 in
Loesser Fig. 1.
Appellants further assert that "there is no suggestion within either
reference [i.e. Potin and Candau] to include an additional cosmetic that
could be applied with a puff." Reply Br. 3. This argument ignores the
totality of the prior art teachings. Loesser teaches a vanity case that can
include two cosmetics, namely a face powder with a puff, and a second
cosmetic, and the Examiner set forth a sufficient prima facie case as to why
one of ordinary skill in the would have been motivated to include the
emulsions of Potin and Candau as the second cosmetic in Loesser' s vanity
case, e.g., to facilitate application of face powder over foundation. See Final
Act. 9-10, 13; Ans. 9-10.
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As to claim 13, Appellants argue that the Examiner "has provided no
evidence or rationale to use an SBR [ styrene-butadiene rubber] sponge for
the cosmetic reported in Potin." Appeal Br. 15. We disagree. The
Examiner indicated that one of ordinary skill in the art would have been
motivated to use SBR because Anonymous indicates that it had been used
for decades as a cosmetic applicator, and was "praised for its ability to hold,
release, and smooth without wasting or drawing moisture from expensive
cosmetic compositions." Final Act. 12-13. Further, Anonymous notes that
most makeup is water-based. See Anonymous. Accordingly, the Examiner
provided a sufficient rationale to use an SBR sponge, and on this record
Appellants have not pointed us to any evidence indicating that persons of
ordinary skill in the art would have considered SBR sponges to be
inappropriate for use with the water-in-oil emulsions disclosed in Potin and
Candau.
Finally, relying on Table 4 of the Specification, Appellants assert that
the claimed compositions demonstrate unexpected results, and that the
Examiner improperly disregarded these unexpected results. Appeal Br. 12-
14; Reply Br. 3-4. Having considered Appellants' arguments and cited
evidence, we are not persuaded that Appellants have demonstrated
unexpected results sufficient to demonstrate nonobviousness. Table 4
provides comparative data on the UV blocking capacity of various
compositions before impregnation and after impregnation on various water-
insoluble sponges. The compositions of Comparative Examples 1 and 2
contain only oil-soluble UV blocking agents (and no water-soluble UV
blocking agents). Spec. ,-J 86. The compositions of Examples 1 and 2
contain only a water-soluble UV blocking agent (and no oil-soluble UV
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Application 15/033,048
blocking agents). Id. In general, both sets of compositions showed a
reduction in UV blocking capacity after impregnation, but when viewed in
the light most favorable to Appellants, the data arguably show that the
compositions of Comparative Examples 1 and 2 showed a greater reduction
in UV blocking capacity after impregnation compared to the compositions of
Examples 1 and 2.
Appellants assert that "[t]his result is unexpected because the artisan
would expect that the comparative examples, which comprise more total UV
blocking agents than the claimed compositions, would have a higher UV
screening capacity than the claimed cosmetics." Reply Br. 4. We are not
persuaded by this argument, which is inconsistent with Appellants'
admission on this record that "it was well known that oil-soluble UV
blocking agents are not efficiently delivered when impregnated on the [ also
water-insoluble] sponge." Appeal Br. 13; Ans. 11; see also Response to
Office Action Dated 12 December 2017, filed Apr. 12, 2018, at 7. The
premise that two hydrophobic materials would be attracted to one another
would not have been surprising. In view of Appellants' admission, the
results in Table 4 for Comparative Examples 1 and 2-which showed a
reduction in UV blocking capacity after impregnation for compositions
containing oil-soluble UV blocking agents used in conjunction with a water-
insoluble sponge-are hardly unexpected or surprising. The converse would
likewise have been expected by the skilled artisan: pairing a water-soluble
UV agent with such a sponge would result in less attraction between the two
and, hence, more separation of the UV agent from its housing sponge.
The record is devoid of any indication that persons of ordinary skill in
the art would have been surprised that water-insoluble sponges holding and
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Application 15/033,048
delivering compositions containing water-soluble UV blocking agents would
have retained comparatively less of that UV blocking agent and, hence,
provided comparatively more UV blocking capacity. Indeed, the evidence
of record suggests the opposite. And as noted above, Anonymous discloses
that most makeup is water-based, and that SBR (styrene-butadiene rubber)
cosmetic applicators have long been known for their ability to hold and
release makeup without wasting product. Accordingly, given that persons
of ordinary skill in the art would have expected a reduction in UV blocking
capacity for oil-soluble UV blocking agents impregnated on water-insoluble
sponges, whereas water-based cosmetics were known to release from such
sponges, and given the Examiner's finding that "one of ordinary skill in the
art no doubt would have been highly motivated at the time of the present
application to significantly limit or exclude oil-soluble organic UV blocking
agents from Potin's water-insoluble sponge" in the first place (Ans. 11), we
are not persuaded that Appellants have demonstrated unexpected results
sufficient to demonstrate nonobviousness.
Thus, for these reasons, we affirm the Examiner's rejections of claims
10, 11, and 14 under 35 U.S.C. § 103(a) as being obvious over Potin,
Candau, and Loesser, and claim 13 over Potin, Candau, Anonymous, and
Loesser.
Nonstatutory Double Patenting
We adopt the Examiner's finding of fact and reasoning regarding the
nonstatutory double patenting rejection over claims 1-6 of U.S. Patent No.
9,744,117 ('" 117 patent") in view of Loesser. See Final Act. 4-6; Ans. 14-
15. Appellants assert that the rejection is improper because the "[t]he 'puff'
is an explicit structural feature of Claim 10, and Examiner's admission that
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the ' 11 7 claims lack a puff strongly advocates that the ' 11 7 claims are
distinct from the current claims." Appeal Br. 15. Appellants further assert
that "there is no suggestion that the puff of Loesser, which is used for a face
powder, would be capable of applying the emulsion of the '117 claims." Id.
at 16.
We are not persuaded by Appellants' arguments. That the claims of
the '11 7 patent lack a puff is not determinative here, because the double
patenting rejection is based on the combination of the '117 patent and
Loesser, and the Examiner relies on Loesser for disclosure of the puff, which
the Examiner contends would have been an obvious combination with the
cosmetic claimed in the '117 patent. "[O]ne cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references." In re Keller, 642 F.2d 413,426 (CCPA
1981 ). Further, whether the puff of Loesser "would be capable of applying
the emulsion of the '117 claims" (Appeal Br. 16) is again not determinative
here. As the Examiner explained, "the puff of Loesser is not employed to
apply an emulsion," but rather "is to apply face powder, as Loesser
expressly teaches." Ans. 14. Again, this rationale is reasonable, given that
Appellants' claims merely recite inclusion of a puff, without any further
limitations on the puff. Further, even if Loesser' s puff were required to
apply the emulsions claimed in the '117 patent, on this record Appellants
have not identified any incompatibilities with the claimed emulsions and
Loesser' s puff.
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SUMMARY
We affirm the rejections of claims 10, 11, and 14 under 35 U.S.C.
§ 103(a) as obvious over Potin, Candau, and Loesser, and claim 13 over
Potin, Candau, Anonymous, and Loesser.
We affirm the rejection of claims 10, 11, 13, and 14 on the ground of
nonstatutory double patenting over claims 1-6 of U.S. Patent No. 9,744,117
in view of Loesser.
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. § l .136(a)(l )(iv).
AFFIRMED
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