L'OREAL

Patent Trials and Appeals Board

Mar 8, 2021

2020004115 (P.T.A.B. Mar. 8, 2021)

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.”).
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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
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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.
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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:

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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).
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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,
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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).
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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”
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(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.
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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.
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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
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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