L'OREALDownload PDFPatent Trials and Appeals BoardMar 8, 20212020004115 (P.T.A.B. Mar. 8, 2021) 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. 14/979,263 12/22/2015 Christopher Michael MACNEILL 463149US99 9738 22850 7590 03/08/2021 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER YU, HONG ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 03/08/2021 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CHRISTOPHER MICHAEL MACNEILL, XIANZHI ZHOU, TSANG-MIN HUANG, ALINE AUDE GUIMONT, CHUNHUA LI, HY SI BUI, and RONNI LYNN WEINKAUF __________ Appeal 2020-004115 Application 14/979,263 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and TAWEN CHANG, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a nail composition. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the Real Party in Interest as L’Oréal of (see App. Br. 2). We refer to the Specification of Dec. 22, 2015 (“Spec.”); Final Action of June 21, 2019 (“Final Act.”); Appeal Brief of Dec. 26, 2019 (“Appeal Br.”); Examiner’s Answer of Mar. 12, 2020 (“Ans.”); and Reply Brief of May 12, 2020 (“Reply Br.”). Appeal 2020-004115 Application 14/979,263 2 Statement of the Case Background “UV gel compositions typically consist of a layer of base coat for adhesion on the nails, one or more color coats to enhance the color, and a layer of top coat for shine. Each coating needs to be cured with a UV Lamp or UV LED” (Spec. ¶ 2). In order to “remove such UV gel products from nails, it is usually required to soak nails with harsh solvent such as acetone for 20 minutes or more, followed by scraping the product off the nail. Frequent and/or prolonged use of such solvents in this manner and associated scraping can damage nails” (id.). Also, the “nail compositions sets are susceptible to damage by such frequent contact with water” (id. ¶ 3). “It would be desirable to possess a UV gel product which has one or more of the following properties . . . good water-resistance, good wear and/or good adhesion, without prolonging the amount of time needed for removal from nails” (id. ¶ 7). The Claims Claims 1, 8, 10, 17–25, and 27–29 are on appeal. Independent claim 1 is representative and reads as follows: 1. A nail composition comprising, in a single composition at least one photocrosslinkable compound, at least one photoinitiator, at least one solvent in an amount of 0.1 to 50% by weight with respect to the total weight of the composition, and at least one dispersion of acrylic polymer particles, the particles being present in an amount ranging from about 5% to about 20% by weight with respect to the total weight of the composition, wherein the composition is photocurable, and Appeal 2020-004115 Application 14/979,263 3 wherein the at least one dispersion of acrylic polymer particles comprises particles of from 50% to 90%) by weight of C1-C4 alkyl (meth)acrylate and from 0 to about 20% by weight of ethylenically unsaturated acid monomer, relative to the total weight of the polymer, and stabilized with a stabilizer based on isobornyl (meth)acrylate polymer, the particles being dispersed in a hydrocarbon oil. The Issue2 The Examiner rejected claims 1, 8, 10, 17–25, and 27–29 under 35 U.S.C. § 103(a) as obvious over Farcet3 and Kergosien4 (Final Act. 8–13). The issues with respect to this rejection are: (i) Does a preponderance of the evidence of record support the Examiner’s finding that Farcet and Kergosien render the rejected claims obvious? (ii) If so, has Appellant provided evidence of unexpected results that outweighs the evidence supporting the prima facie case of obviousness? Findings of Fact5 1. Farcet teaches the composition may comprise “a nail product such as a nail varnish or a nailcare product” (Farcet ¶ 198). Example 11 of Farcet exemplifies a nail varnish (Farcet ¶¶ 261–262). 2. Farcet teaches solvents including “a liquid carbon-based medium in which the said particles are dispersed” that may include “ketones 2 The Examiner withdrew the obviousness rejection over Blin and Farcet (see Ans. 3). 3 Farcet et al., US 2011/0243864 A1, published Oct. 6, 2011. 4 Kergosien et al., WO 2014/086869 A1, published June 12, 2014. 5 We note that the Examiner’s citation of paragraphs divorced from the specific limitations recited in the claims makes review of this rejection unnecessarily difficult. Appeal 2020-004115 Application 14/979,263 4 containing 6 to 30 carbon atoms . . . monoalcohols containing 6 to 30 carbon atoms . . . polyols containing 6 to 30 carbon atoms, such as hexylene glycol” and specifically lists “ethanol, isopropanol or n-propanol, . . . glycerol, diglycerol, propylene glycol, sorbitol, pentylene glycol, and polyethylene glycols” (Farcet ¶¶ 123, 137–139, 183). 3. Farcet teaches the solvent “may be present in an amount strictly less than 50% by weight, especially from 1% to 40% by weight” (Farcet ¶ 151). 4. Farcet teaches a: polymer capable of forming the polymeric core of the particle may be obtained by conventional radical polymerization or controlled radical polymerization (CRP), especially in a liquid carbon-based medium; the latter technique is perfectly suitable for use since it makes it possible to control the size of the particles in these media and their dispersity. (Farcet ¶ 26). 5. Farcet teaches the polymer “dispersions according to the invention find a most particular application in cosmetics. Thus, they may be present in the cosmetic compositions . . . preferably 2% to 50% by weight . . . or even 7% to 30% by weight, relative to the total weight of the composition” (Farcet ¶ 173). 6. The nail varnish composition of Example 11 of Farcet is reproduced below: Appeal 2020-004115 Application 14/979,263 5 The above table shows a nail varnish composition with 4% by weight of polymer particles D1 (Farcet ¶ 261). 7. Farcet teaches, regarding acrylic polymer particles, that: As monomers with a Tg of greater than or equal to 20° C., which may be used to form part of the core of the particle, mention may be made, alone or as a mixture, of the following monomers, and also salts thereof: (i) the (meth)acrylates of formula CH2-C(CH3)–COOR or CH2=CH–COOR, in which R represents a linear, branched or cyclic, saturated or unsaturated, or even aromatic, alkyl group. (Farcet ¶¶ 36–37). 8. Farcet teaches “soluble monomers that may be mentioned, alone or as a mixture, include . . . isobornyl (meth)acrylate” (Farcet ¶¶ 80, 83). Farcet teaches “[m]ention may be made more particularly of methyl (meth) acrylate, ethyl (meth) acrylate, (meth)acrylic acid, maleic anhydride, (meth)acryloxypropyl-tris(trimethylsiloxy)silane, (meth)acryloxypropylbis(trimethylsiloxy)methylsilane, (meth)acryloxymethyltris(trimethylsiloxy)silane and (meth)acryloxymethylbis(trimethylsiloxy)methylsilane” (Farcet ¶ 114). 9. Farcet teaches the “insoluble monomers especially represent 55% to 100% by weight, in particular 65% to 95% by weight or even 70% to 85% by weight, relative to the total weight of monomers forming the polymeric core of the particle” (Farcet ¶ 29). 10. The Examiner acknowledges that Farcet does not teach “photo- crosslinkable urethane methacrylate and the photo-initiator and the weight percentage of photo-crosslinkable urethane(meth)acrylate compound” (Final Act. 10–11). Appeal 2020-004115 Application 14/979,263 6 11. Kergosien teaches “a photocrosslinkable cosmetic composition, particularly for nail and/or false nail makeup” (Kergosien 1:3–4). 12. Kergosien teaches: a photocrosslinkable cosmetic composition, comprising in a physiologically acceptable medium: - at least one photocrosslinkable urethane (meth)acrylate compound P1 comprising a polyether chain, said compound having a molar mass greater than or equal to 1000 g/mol, - at least one film-forming polymer P2, - at least one photoinitiator, and - at least one volatile solvent chosen from acetone, ethyl acetate, and propyl acetate, said solvent being preferably present in said composition at a content greater than or equal to 20%, preferentially greater than or equal to 30%, by weight in relation to the total weight of said composition, wherein the proportion of (meth)acrylate monomer is preferably less than or equal to 10% by weight in relation to the total weight of said composition, and wherein the weight ratio between P1 and P2 is less than or equal 2.0. (Kergosien 2:4–17). 13. Kergosien teaches the “novel photocrosslinkable composition . . . is easy to use and remove . . .[,] exhibiting an enhanced stability over time, in terms of chipping resistance and gloss” (Kergosien 1:27–31). 14. Kergosien teaches “[a]s a photoinitiator mixture, mention may be made of a mixture of IRGACURE® 184 (BASF) and LUCIRIN® TPO-L (BASF)” (Kergosien 10:4–5). Principles of Law A prima facie case for obviousness “requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, Appeal 2020-004115 Application 14/979,263 7 1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Prima facie obviousness can be rebutted by presenting evidence of secondary considerations and when such evidence is submitted, all of the evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472−1473 (Fed. Cir. 1984). Secondary considerations include: long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Analysis We adopt the Examiner’s findings of fact and conclusion of law (see Final Act. 8–13; FF 1–14) and agree that the combination of Farcet and Kergosien renders claim 1 obvious. We address Appellant’s arguments below. Obviousness Appellant contends: “That it is possible to make the modification is obvious is not sufficient” and: [T]he Examiner has not reasonably established that in so modifying Farcet with Kergosien that the underlying princip[al] teachings of Farcet’s invention would remain, for example, be non-tacky amongst other important indicia. Simply combining various compositions and components in the compositions does not provide a sufficient record to sustain the specious conclusion underlying this rejection. (Appeal Br. 8–9). Appeal 2020-004115 Application 14/979,263 8 We find this argument unpersuasive because Farcet teaches a “polymer capable of forming the polymeric core of the particle may be obtained by conventional radical polymerization” (FF 4) and Kergosien teaches a “photocrosslinkable composition . . . is easy to use and remove . . .[,] exhibiting an enhanced stability over time, in terms of chipping resistance and gloss” (FF 13). An ordinary artisan, interested in substituting the polymerization approach for nail varnishes of Farcet with photocrosslinkable polymerization as suggested by Kergosien, would have reasonably selected polymer substitutions suggested by Kergosien in order to obtain benefits including stability, chipping resistance, and gloss (FF 12, FF 13). See KSR, 550 US at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”) As to combining these teachings, a “person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR, 550 US at 421. This result is also consistent with Wrigley, which found a “strong case of obviousness based on the prior art references of record. [The claim] recites a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known . . . agent for another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). “Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297 (CCPA 1982). Appellant contends “simply choosing components from various laundry lists is insufficient to establish a prima facie case of obviousness” Appeal 2020-004115 Application 14/979,263 9 (Reply Br. 3).6 Appellant contends that Farcet’s disclosure “is clearly not the small and finite number of alternatives that KSR suggested might support . . . obviousness” (Reply Br. 4). We find this argument unpersuasive. Claim 1 is open to any photocrosslinkable compound and any photoinitiator, and Kergosien specifically identifies urethane (meth)acrylate as a photocrosslinkable compound and also teaches specific initiators (FF 12, 14). As to the solvents, Farcet teaches both genera and lists of these components with solvents listed including “ethanol, isopropanol or n-propanol, . . . glycerol, diglycerol, propylene glycol, sorbitol, pentylene glycol, and polyethylene glycols” (FF 2). As to acrylic polymer particles, Farcet also teaches both genera and lists of these components with specific acrylates including “methyl (meth) acrylate, ethyl (meth) acrylate, (meth)acrylic acid, maleic anhydride” among others (FF 8). These lists represent obvious alternatives from which the ordinary artisan may select with a reasonable expectation of success. “[S]pecific disclosure, even in a list, makes this case different from cases involving disclosure of a broad genus without reference to the potentially anticipating species.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005). See also Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.Cir.1989) (holding that the prior art’s disclosure of a multitude of combinations failed to render any particular formulation less obvious). We note that the prior art has a presumption of a reasonable expectation of success which has not been rebutted here. In re Antor Media Corp., 689 6 The Reply Brief is not paginated so we refer to page numbers in consecutive order from the first page. Appeal 2020-004115 Application 14/979,263 10 F.3d 1282, 1289 (Fed. Cir. 2012); see also In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). “[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered.” In re Lamberti, 545 F.2d 747, 750 (CCPA1976). Secondary Considerations Appellant contends an “unexpected improvement is that by adding the dispersion of acrylic polymer particles to the nail composition, improved removal of the composition was achieved without sacrificing gloss and adhesion, which are two important properties for a viable commercial nail Composition” (Appeal Br. 10–11). Appellant cites the MacNeill Declaration7 to show that: a number of different materials [were] add[ed] to a top coat composition, particularly compositions that have a high level of UV curable polymers as those have been shown to have high wear and shine yet particularly difficult to remove, e.g., greater than about 85 wt % of polymer and monomers that create the cured coating. Of those 10 materials tested, the oil dispersion of acrylic polymer particles, using methyl acrylate and isobornyl acrylate as a representative of this class of dispersions, was the only one that maintained compatibility and gloss while significantly improving the removability off of the nail facsimile substrate. (Appeal Br. 14). Specifically, Dr. MacNeill states that “we assessed 10 different secondary film formers” including “two photocurable (meth)acrylate oligomers and one photocurable methacrylate monomer” (MacNeill Decl. ¶ 10). Dr. MacNeill found: “Of all of these tested, only Methyl acrylate/ethyl acrylate/acrylic acid/isobornyl acrylate copolymer had high shine and good swelling when added at 10%. All others either showed 7 Declaration of Dr. Christopher MacNeill, dated Aug. 1, 2017. Appeal 2020-004115 Application 14/979,263 11 incompatibility (assessed visually), poor shine and/or remained difficult to remove” (MacNeill Decl. ¶ 11). We find this evidence insufficient to establish unexpected results because unexpected results must be “commensurate in scope with the degree of protection sought by the claimed subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Here, Claim 1 encompasses any photocrosslinkable compound, any photoinitiator compound, any solvent, and a wide variety of acrylic polymer particles in a wide variety of amounts. However, the MacNeill Declaration shows that “only Methyl acrylate/ethyl acrylate/acrylic acid/isobornyl acrylate copolymer had high shine and good swelling when added at 10%. All others either showed incompatibility (assessed visually), poor shine and/or remained difficult to remove” (MacNeill Decl. ¶ 11). Thus, Appellant not only fails to provide an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, the evidence of record shows that even other acrylate polymers failed to demonstrate the unexpected results. We do not find the claim requirement for a “stabilizer based on isobornyl (meth) acrylate” to satisfy this issue both because claim 1 is not actually limited to isobornyl (meth) acrylate itself due to the “based on” language and because the MacNeill Declaration provides no evidence that the only factor causing the asserted unexpected results, irrespective of other solvents, acrylates, photoinitiators or photocrosslinkable compounds is the specific stabilizer used. Conclusion of Law (i) A preponderance of the evidence of record supports the Examiner’s Appeal 2020-004115 Application 14/979,263 12 finding that Farcet and Kergosien render the rejected claims obvious. (ii) Appellant has not provided evidence of unexpected results that outweighs the evidence supporting the prima facie case of obviousness. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8, 10, 17– 25, 27–29 103 Farcet, Kergosien 1, 8, 10, 17– 25, 27–29 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 Copy with citationCopy as parenthetical citation