2021000293 (P.T.A.B. Sep. 22, 2021)

L'OREAL

Patent Trials and Appeals BoardSep 22, 2021

2021000293 (P.T.A.B. Sep. 22, 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. 14/368,185 06/23/2014 Henri Samain 152436 3560 25944 7590 09/22/2021 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER KALACH, BRIANNE E ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 09/22/2021 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HENRI SAMAIN, FRANCK GIRON, GUILLAUME CASSIN, and VERONIQUE FERRARI Appeal 2021-000293 Application 14/368,185 Technology Center 3700 ____________ Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals from the Examiner’s rejections of claims 73–86 and 89–110 under 35 U.S.C. § 103(a). We do not sustain the Examiner’s rejections and, therefore, we REVERSE.2 1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the inventor or all of the joint inventors”). “The real party in interest for this appeal and the present application is L’OREAL.” (Appeal Br. 1.) 2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). Appeal 2021-000293 Application 14/368,185 2 THE APPELLANT’S INVENTION The Appellant’s invention “relates to making up the skin” (Spec. p1:2) and, more particularly, to “process[es] for making up the skin” (id. at p2:30–31, p3:6–7), a “makeup kit” (id. p9:24), and a “cosmetic device” (id. p3:12). According to the Appellant, its invention “advantageously makes it possible to recreate, on the made-up surface, a natural or idealized appearance of the skin, despite the presence of the foundation.” (Id. p3:19–21.) Thus, “a makeup, using a foundation that may be relatively covering, advantageously appears less artificial.” (Id. p3:24–25.) INDEPENDENT CLAIMS ON APPEAL 73. A method for making up skin comprising forming on a deposit of a foundation composition applied to the skin a discontinuous deposit of islets of corrective composition, said corrective composition comprising a red dye and having optical properties that locally modify appearance of makeup so as to create a pattern reproducing appearance of skin relief and/or colour heterogeneities, the islets comprising at the same time islets having a largest dimension between 0.8 and 2 mm, islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and islets having a largest dimension greater than 3 mm and less than or equal to 5 mm, a number of islets having a largest dimension between 0.8 and 2 mm being greater than a number of islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and greater than a number of islets having a largest dimension greater than 3 mm and less than or equal to 5 mm. 74. Kit comprising: a) a foundation composition, and b) a corrective composition, the corrective composition being coloured and further comprising a red dye, and Appeal 2021-000293 Application 14/368,185 3 c) an applicator for the application of said corrective composition onto a surface to be made up, the applicator comprising an application surface comprising a network of zones having corrective composition- releasing properties, which is configured to form, during application onto the surface to be made up, a pattern that reproduces the appearance of skin colour and/or relief heterogeneities, said pattern comprising a discontinuous deposit of islets and/or the applicator making it possible to spray the corrective composition so as to form a discontinuous deposit of islets, and/or an arrangement of holes in a screen bearing the holes and forming a stencil against the surface to be made up being linked to a pattern that reproduces the appearance of the skin colour and/or relief heterogeneities to be obtained, said pattern comprising a discontinuous deposit of islets, the islets comprising at the same time islets having a largest dimension between 0.8 and 2 mm, islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and islets having a largest dimension greater than 3 mm and less than or equal to 5 mm, a number of islets having a largest dimension between 0.8 and 2 mm being greater than a number of islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and greater than a number of islets having a largest dimension greater than 3 mm and less than or equal to 5 mm. 76. Process for making up the skin, comprising: a) applying a foundation composition to the skin, and b) locally removing the foundation applied in step a) so as to create a pattern reproducing the appearance of skin relief and/or colour heterogeneities, said pattern comprising a discontinuous deposit of islets, the islets comprising at the same time islets having a largest dimension between 0.8 and 2 mm, islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and islets having a largest dimension greater than 3 mm and less than or equal to 5 mm, and a number of islets having a largest dimension between 0.8 and 2 mm being greater than a number of islets having a Appeal 2021-000293 Application 14/368,185 4 largest dimension greater than 2 mm and less than or equal to 3 mm and greater than a number of islets having a largest dimension greater than 3 mm and less than or equal to 5 mm. 78. Cosmetic device having a peripheral surface comprising islets arranged nonuniformly in a surrounding surface, said islets each having a largest dimension of at least 0.8 mm and having a shape and/or properties for taking up and/or releasing a product present on the skin or to be applied thereto that are different from the shape and/or properties of the surrounding surface, so as to lead to the creation on the skin of a pattern whose appearance is linked to the arrangement of the islets on the surface, the islets comprising at the same time islets having a largest dimension between 0.8 and 2 mm, islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and islets having a largest dimension greater than 3 mm and less than or equal to 5 mm, and a number of islets having a largest dimension between 0.8 and 2 mm being greater than a number of islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and greater than a number of islets having a largest dimension greater than 3 mm and less than or equal to 5 mm. 104. Process for making up skin comprising forming, on a deposit of a foundation composition applied to the skin, a deposit of a liquid corrective composition comprising visible substances that give it an inhomogeneous appearance, said corrective composition comprising a red dye and having optical properties that locally modify appearance of makeup so as to create a pattern reproducing appearance of skin relief and/or colour heterogeneities, said pattern comprising a discontinuous deposit of islets, the islets comprising at the same time islets having a largest dimension between 0.8 and 2 mm, islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and islets having a largest dimension greater than 3 mm and less than or equal to 5 mm, and Appeal 2021-000293 Application 14/368,185 5 a number of islets having a largest dimension between 0.8 and 2 mm being greater than a number of islets having a largest dimension greater than 2 mm and less than or equal to 3 mm and greater than a number of islets having a largest dimension greater than 3 mm and less than or equal to 5 mm. REJECTIONS I. The Examiner rejects claims 73, 105, and 106 under 35 U.S.C. § 103(a) as unpatentable over Gueret3 and Kalla.4 (Final Act. 3.) II. The Examiner rejects claims 74 and 77 under 35 U.S.C. § 103(a) as unpatentable over Gueret, Kalla, and Wilson.5 (Final Act. 4.) III. The Examiner rejects claim 75 under 35 U.S.C. § 103(a) as unpatentable over Gueret, Kalla, Wilson, and Kurek.6 (Final Act. 6.) IV. The Examiner rejects claims 76, 107, and 108 under 35 U.S.C. § 103(a) as unpatentable over Gueret and Wilson. (Final Act. 6.) V. The Examiner rejects claims 78, 81–83, 85, 86, 89, 90, 93–97, 101, 103, 109, and 110 under 35 U.S.C. § 103(a) as unpatentable over Gueret. (Final Act. 8.) VI. The Examiner rejects claims 79, 80, 91, 92, 99, 100, and 102 under 35 U.S.C. § 103(a) as unpatentable over Gueret and Wilson. (Final Act. 11.) VII. The Examiner rejects claims 84 and 98 under 35 U.S.C. § 103(a) as unpatentable over Gueret and Klar.7 (Final Act. 13.) 3 US 6,883,995 B1, issued April 26, 2005. 4 US 2003/0003064 A1, published January 2, 2003. 5 US 8,974,134 B2, issued March 10, 2015. 6 US 2010/0221294 A1, published September 2, 2010. 7 US 5,820,884, issued October 13, 1998. Appeal 2021-000293 Application 14/368,185 6 VIII. The Examiner rejects claim 104 under 35 U.S.C. § 103(a) as unpatentable over Gueret, Kalla, Wilson, and Kurek. (Final Act. 13.) ANALYSIS Claims 73, 74, 76, 78, and 104 are the independent claims on appeal, with the rest of the claims on appeal depending therefrom. (See Appeal Br., Claims App.) Independent claim 73 sets forth a “method” for making up skin, independent claim 74 sets forth a “kit,” independent claim 76 sets forth a “[p]rocess” for making up skin, independent claim 78 sets forth a “[c]osmetic device,” and independent claim 104 sets forth another “[p]rocess” for making up skin. (Id.) The claimed method, kit, processes, and cosmetic device all involve “islets” which are associated either with applying a corrective composition or removing a foundation composition. (Appeal Br., Claims App.) Each independent claim on appeal further requires a certain distribution of different-dimensioned islets. (See id.) Specifically, the claims require what can be called a first set of small islets (“having a largest dimension between 0.8 and 2 mm”), a second set of medium islets (“having a largest dimension greater than 2 mm and less than or equal to 3 mm”), and a third set of large islets (“having a largest dimension greater than 3 mm and less than or equal to 5 mm”). (Id.) The Examiner’s obviousness rejections are premised upon Gueret teaching islets which can be associated either with applying a corrective composition or removing a foundation composition. (See Final Act. 3–15.) Gueret discloses, in Figure 5 reproduced below, a bottle for applying a product that “may be a cosmetic product.” (Gueret c8:18.) Appeal 2021-000293 Application 14/368,185 7 The above drawing is “a longitudinal cross-sectional view” of Gueret’s bottle (id. c8:46) and shows that this bottle comprises a “reservoir 2” (id. c12:62), an “applicator member 10” (id. c12:51–52), and a “support 17” (id. c12:45). The reservoir 2 is for “containing” a cosmetic product for selective application to a user’s skin. (Id. c6:15–16.) The applicator member 10 is “impregnated” with the cosmetic product “via the support 17.” (Id. c12:66–67.) And the applicator member 10 has an “applicator surface 15” that the user applies “to the surface to be treated.” (Id. c11:7–8.) Gueret’s applicator member 10 consists of an upper block of foam which includes the applicator surface 15. (See Gueret c11:7–8.) Gueret’s support 17 comprises a middle block of foam 17' and a lower block of foam 17''. (See id. c12:38–46.) Each foam block has open “pores” or “cells.” (Id. at c5:50–51, c6:5.) As shown in the above drawing, Gueret’s upper foam block has what can be called small pores/cells, Gueret’s middle Appeal 2021-000293 Application 14/368,185 8 foam block has what can be called medium pores/cells, and Gueret’s lower foam block has what can be called large pores/cells. (See id. c12:44–48.) Thus, when Gueret’s applicator member 10 is “impregnated” with the cosmetic product “via the support 17” (id. c12:66–67), the cosmetic product flows first through the lower foam block (with large pores/cells), then through the middle foam block (with medium pores/cells), and lastly through the upper foam block (with small pores/cells) before reaching the application surface 15. The Examiner finds, and we agree, that the pores/cells in Gueret’s three foam blocks can be associated with applying a corrective composition or removing a foundation composition. (See Final Act. 4, 5, 7, 14.)8 The Examiner finds, and we agree, that Gueret discloses three sets of different- dimensioned pores/cells. (See id. at 3, 4–5, 7, 8, 14.) The Examiner finds, and we agree, that Gueret teaches that its three sets of pores/cells could have dimensions falling within the claimed ranges. (See id. at 3, 4–5, 7, 8, 14.)9 8 Gueret teaches that “[t]he product may be a cosmetic product” such as a “foundation,” “a make-up remover,” a “correction fluid,” or a “dermatological composition.” (Gueret c8:18–23.) To the extent that Gueret does not itself teach applying a corrective composition, we agree with the Examiner that Kalla bridges this gap. (See Final Act. 4, 5, 14.) To the extent that Gueret does not itself teach removing a foundation composition, we agree with the Examiner that Wilson bridges this gap. (See id. at 7.) 9 Gueret teaches that its upper foam block can have “open pores or cells of a mean size of from 200 µm to 1.5 mm.” (Gueret c5:50–51.) Gueret teaches that its middle foam block and its lower foam block can have “open cells with a mean size of from 50 µm to 3 mm.” (Id. c6:4–6.) And Gueret discloses that these dimension ranges increase sequentially from the lower foam block to the upper foam block. (See id. c12:44–48, Fig. 5.) To the extent that Gueret does not expressly disclose a pore size greater than 3 mm, it does teach that “the nature of the foam and the size of the cells that form it Appeal 2021-000293 Application 14/368,185 9 Thus, insofar as the Examiner finds that Gueret teaches a cosmetic applicator having three sets of different-dimensioned pores/cells which can be associated with either applying a corrective composition or removing a foundation composition, we agree. But we also agree with the Appellant that the independent claims on appeal are not satisfied by a cosmetic applicator that merely includes these three sets of different-dimensioned islets somewhere in its construction. (See Appeal Br. 10–17; see also Reply Br. 2–15.) As discussed in more detail below, each of the independent claims on appeal includes additional limitations requiring these different-dimensioned islets to be formed, created, arranged, or otherwise configured in a manner which is structurally inconsistent with Gueret. In this regard, we note that Gueret expressly discloses that it is the “applicator surface 15” that the user applies “to the surface to be treated.” (Gueret c11:7–8.) This applicator surface 15 is located solely on the top region of Gueret’s applicator member 10, which consists of the upper foam block having the small pores/cells. (See id. Fig. 5.) In short, Gueret is specifically designed to dispense a product (e.g., a corrective composition or a removal composition) through only small cells/pores. The Examiner does not point to, and we do not see, any suggestion in Gueret that its product are chosen according to the rheology of the material that is to be applied, particularly its viscosity and its surface tension, and according also to the desired product delivery rate.” (Id. c5:54–58.) We agree with the Examiner that “it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the largest pores of Gueret to be between 3 and 5mm” so as to “provid[e] the requisite handling of product.” (Final Act. 4, see also id. at 5, 7, 9, 14.) Appeal 2021-000293 Application 14/368,185 10 could be additionally dispensed through the large pores/cells of its lower foam block and/or the medium pores/cells of its middle foam block. The Examiner finds that Gueret will “inherently provide a pattern during application” which is “defined” by the liquid held in its pores/cells. (See Final Act. 3.) This might be true. However, the Examiner does not direct our attention to any disclosure in Gueret portraying a correlation between pore/cell geometry and the pattern defined thereby. As pointed out by the Appellant (see, e.g., Appeal Br. 11), Gueret instead discusses pore/ cell geometry in the context of “a gradient for the compressibility and for the concentration of product when filling or emptying the cells during application.” (Gueret c12:48–50.) We below apply the foregoing considerations and analysis to specific limitations at issue in each of the independent claims, and the Appellant’s and the Examiner’s contentions relative thereto. Independent Claim 73 Independent claim 73 requires the step of “forming on a deposit of a foundation composition applied to the skin a discontinuous deposit of islets of corrective composition.” (Appeal Br., Claims App.) Claim 73 further requires these islets to comprise the claimed small, medium, and large islets. (See id.) The Examiner’s obviousness rejection is premised upon Gueret’s bottle forming such a deposit of islets when used to apply a corrective composition to the skin. (See Final Act. 3.) The Appellant argues that, insofar as Gueret forms a deposit of islets, this deposit would not comprise the claimed small, medium, and large islets. (See Appeal Br. 10–11.) We are persuaded by this argument because it is aligned with Gueret’s Appeal 2021-000293 Application 14/368,185 11 disclosure. If Gueret’s bottle is used to dispense a corrective composition, the pattern formed thereby will correspond, at most, to the small pores/cells in the “applicator surface 15” that the user applies “to the surface to be treated.” (Gueret c11:7–8; see also Fig. 5). Thus, we do not sustain the Examiner’s rejection of independent claim 73 under 35 U.S.C. § 103 (Rejection I). Independent Claim 74 Independent claim 74 requires “an applicator for the application of said corrective composition onto a surface to be made up” which is “configured to form during application” a pattern comprising “a discontinuous deposit of islets.” (Appeal Br., Claims App.) Claim 74 further requires these islets to comprise the claimed small, medium, and large islets. (See id.)10 The Examiner’s obviousness rejection is premised upon Gueret’s bottle being configured to form a deposit of islets during application of corrective composition to the skin. (See Final Act. 4.) The Appellant argues that, insofar as Gueret is configured to form a pattern comprising a deposit of islets, it is not configured to form a deposit of small, medium, and large islets. (See Appeal Br. 13–14.) We are persuaded by this argument because it is aligned with Gueret’s disclosure. Gueret is designed to dispense a corrective composition only through the small pores/cells in the “applicator surface 15” that the user applies “to the surface to be treated.” (Gueret c11:7–8; see also Fig. 5.) 10 Thus, the applicator is configured to form this pattern when the product is dispensed therefrom. Inasmuch as the Examiner maintains otherwise (see Answer 6), we disagree. Appeal 2021-000293 Application 14/368,185 12 Thus, we do not sustain the Examiner’s rejection of independent claim 74 under 35 U.S.C. § 103 (Rejection II). Independent Claim 76 Independent claim 76 requires the step of “removing” foundation previously applied to the skin “so as to create a pattern” comprising “a discontinuous deposit of islets.” (Appeal Br., Claims App.) Claim 76 further requires these islets to comprise the claimed small, medium, and large islets. (See id.) The Examiner’s obviousness rejection is premised upon Gueret’s bottle creating such a pattern when used to remove foundation from a person’s skin. (See Final Act. 6–7.) The Appellant argues that, insofar as Gueret would create a removal pattern comprising a deposit of islets, this deposit would not comprise the claimed small, medium, and large islets. (See Appeal Br. 14–15.) We are persuaded by this argument because it is aligned with Gueret’s disclosure. If Gueret’s bottle is used to apply a make-up remover, the removal pattern will correspond, at most, to the small pores/cells in the “applicator surface 15” that the user applies “to the surface to be treated.” (Gueret c11:7–8; see also Fig. 5.) Thus, we do not sustain the Examiner’s rejection of independent claim 76 under 35 U.S.C. § 103 (Rejection IV). Independent Claim 78 Independent claim 78 requires a cosmetic device to have “islets” for “taking up” or “releasing” a product on the skin “so as to lead to the creation on the skin of a pattern whose appearance is linked to the arrangement of the islets.” (Appeal Br., Claims App.) Claim 78 further requires these islets to comprise the claimed small, medium, and large islets. (See id.) Appeal 2021-000293 Application 14/368,185 13 The Examiner’s obviousness rejection is premised upon Gueret’s bottle being constructed to have pores/cells for releasing a product that leads to creation of a pattern on the skin linked to the arrangement of the pores/ cells. (See Final Act. 8.) The Appellant argues that, insofar as Gueret is constructed to create a pattern on the skin, this pattern would not be linked to the arrangement of small, medium, and large islets. (See Appeal Br. 15–16.) We are persuaded by this argument because it is aligned with Gueret’s disclosure. Gueret’s bottle is constructed to create, at most, a pattern that is linked to the arrangement of the small pores/cells in the “applicator surface 15” that the user applies “to the surface to be treated.” (Gueret c11:7–8; see also Fig. 5.) Thus, we do not sustain the Examiner’s rejection of independent claim 78 under 35 U.S.C. § 103 (Rejection V). Independent Claim 104 Independent claim 104 requires the step of forming a “deposit” of a liquid corrective composition “so as to create a pattern” comprising “a discontinuous deposit of islets.” (Appeal Br., Claims App.) Claim 104 further requires these islets to comprise the claimed small, medium, and large islets. (See id.) The Examiner’s obviousness rejection is premised upon Gueret’s bottle forming a pattern comprising a deposit of islets when used to apply a corrective composition to the skin. (See Final Act. 14.) The Appellant argues that, insofar as Gueret forms such a pattern, the deposit of islets would not comprise the claimed small, medium, and large islets. (See Appeal Br. 16–17.) We are persuaded by this argument because it is aligned with Gueret’s disclosure. If Gueret’s bottle is used to dispense a corrective Appeal 2021-000293 Application 14/368,185 14 composition, the pattern formed will correspond, at most, to the small pores/ cells in the “applicator surface 15” that the user applies “to the surface to be treated.” (Gueret c11:7–8; see also Fig. 5.) Thus, we do not sustain the Examiner’s rejection of independent claim 104 under 35 U.S.C. § 103 (Rejection VIII). Dependent Claims 75, 77, 79–86, 89–103, and 105–110 The Examiner’s further findings and determinations with respect to the dependent claims (see Final Act. 3–13) do not compensate for the above- discussed shortcomings in the rejections of the independent claims. Thus, we do not sustain the Examiner’s rejections of these claims under 35 U.S.C. § 103 (Rejections I–VII). CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 73, 105, 106 103(a) Gueret, Kalla 73, 105, 106 74, 77 103(a) Gueret, Kalla Wilson 74, 77 75 103(a) Gueret, Kalla, Wilson, Kurek 75 76, 107, 108 103(a) Gueret, Wilson 76, 107, 108 78, 81–83, 85, 86, 89, 90, 93–97, 101, 103, 109, 110 103(a) Gueret 78, 81–83, 85, 86, 89, 90, 93–97, 101, 103, 109, 110 79, 80, 91, 92, 99, 100, 102 103(a) Gueret, Wilson 79, 80, 91, 92, 99, 100, 102 84, 98 103(a) Gueret, Klar 84, 98 Appeal 2021-000293 Application 14/368,185 15 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 104 103(a) Gueret, Kalla, Wilson, Kurek 104 Overall Outcome 73–86, 89– 110 REVERSED