L'OREAL

Patent Trials and Appeals Board

Feb 22, 2022

2021004999 (P.T.A.B. Feb. 22, 2022)

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. 16/062,422 06/14/2018 Elodie VALVERDE 513635US 1067 22850 7590 02/22/2022 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER LIU, TRACY ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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 ELODIE VALVERDE1 Appeal 2021-004999 Application 16/062,422 Technology Center 1600 Before RYAN H. FLAX, DAVID COTTA, and CYNTHIA M. HARDMAN, Administrative Patent Judges. HARDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a specific water-in-oil emulsion composition. The Examiner rejected the claims as obvious over the prior art. We heard oral argument on December 6, 2021, and a transcript is of record. 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 Paris, France. Appeal Br. 1. Appeal 2021-004999 Application 16/062,422 2 CLAIMED SUBJECT MATTER Claims 1, 3-5, 7, 8, 10-14, and 16-18 are on appeal (Final Act. 2), of which claim 1 is independent. Claim 1 is representative and reads as follows: 1. A composition, in the form of a water-in-oil emulsion, comprising a physiologically acceptable medium, comprising: an aqueous phase in a content from 60% to 80% by weight relative to the total weight of the composition; an oily phase at a concentration of less than 30.0% by weight relative to the total weight of the composition and comprising at least one silicone oil selected from the group consisting of polydimethylsiloxanes comprising alkyl groups or alkoxy groups, which are pendent and/or at the end of the silicone chain, these groups each comprising from 6 to 24 carbon atoms; at least one hydrophobic coated pigment, wherein the at least one hydrophobic coated pigment is present in a content ranging from 5% to 25% by weight, relative to the total weight of the composition; at least one moisturizing agent at a concentration ranging from 10% to 25% by weight relative to the total weight of the composition; and at least one emulsifying surfactant selected from the group consisting of polyoxyalkylenated silicone elastomers, polyglycerolated silicone elastomers, and mixtures thereof. Appeal Br. 12 (claims appendix). Appeal 2021-004999 Application 16/062,422 3 REFERENCES The Examiner relies upon the following prior art references: Name Reference Date Mougin US 2007/0264208 A1 Nov. 15, 2007 Nohata US 2008/0031906 A1 Feb. 7, 2008 Dumousseaux US 2011/0150800 A1 June 23, 2011 Patel US 2011/0243867 A1 Oct. 6, 2011 Ricard US 2012/0279514 A1 Nov. 8, 2012 Tanaka AU 2013/228828 B2 Sept. 12, 2013 Roudot WO 2014/111574 A1 July 24, 2014 Valverde WO 2014/167543 A1 Oct. 16, 2014 Nagamatsu WO 2014/191324 A1 Dec. 4, 2014 REJECTIONS Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 5, 7, 8, 10-14, 16- 18 103 Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, Nohata, Roudot, Tanaka 3, 4 103 Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, Nohata, Ricard OPINION Rejection of Claims 1, 5, 7, 8, 10-14, 16-18 Under 35 U.S.C. § 103 as Unpatentable Over Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, and Nohata, as Evidenced by Roudot and Tanaka With respect to the above rejection, Appellant argues the rejected claims as a group. See generally Appeal Br. 4-10. We select independent claim 1 as representative of this group. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-004999 Application 16/062,422 4 To summarize, the Examiner finds that Nagamatsu teaches a cosmetic sunscreen composition in the form of a water-in-oil emulsion that overlaps with the claimed compositions, but does not teach, for example, inclusion of a hydrophobic coated pigment. Final Act. 3-4. According to the Examiner, Nagamatsu teaches that its compositions can comprise conventional cosmetic adjuvants, Mougin teaches that pigments are common adjuvants in cosmetics, and Valverde teaches a cosmetic composition comprising hydrophobic coated pigments. Id. at 4-5 (citing Nagamatsu 19:10-16; Mougin ¶ 414; Valverde at Abstr., 52:12-13, 52:30-31, 54:21). The Examiner finds that it is prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended use, and that it would have been obvious to one of ordinary skill in the art to incorporate a pigment into Nagamatsu’s composition in view of Mougin’s teaching that pigments are commonly used in cosmetics. Id. at 5 (citing, e.g., MPEP § 2144.07); Ans. 5-6, 8. The Examiner also finds that Nagamatsu teaches use of an emulsifying surfactant, but does not teach the specific claimed emulsifying surfactant (i.e., a polyoxyalkylenated or polyglycerolated silicone elastomer). Final Act. 6; Ans. 6; see also Nagamatsu 21:35-22:10. The Examiner finds, however, that Dumousseaux discloses a cosmetic composition comprising the claimed emulsifying surfactants, and that a person of ordinary skill in the art would have been motivated to incorporate the same into Nagamatsu’s composition in view of Dumousseaux’s teaching that these surfactants impart good stability to water-in-oil emulsions. Final Act. 6-7 (citing Dumousseaux at, e.g., ¶¶ 96, 98, 132, 256); Ans. 6-7. Appeal 2021-004999 Application 16/062,422 5 The Examiner also finds that while Nagamatsu discloses that its composition can comprise a silicone oil, it does not disclose the specific claimed silicone oils (i.e., polydimethylsiloxanes comprising alkyl groups or alkoxy groups, which are pendent and/or at the end of the silicone chain, these groups each comprising from 6 to 24 carbon atoms), and caprylyl methicone in particular (recited in dependent claim 11). Final Act. 7; see also Nagamatsu 12:10-18 (disclosing silicone oils including “polydimethylsiloxanes comprising alkyl or alkoxy groups which are pendent and/or at the end of the silicone chain, which groups each contain from 2 to 24 carbon atoms”). The Examiner finds, however, that Patel discloses a cosmetic composition comprising caprylyl methicone. Final Act. 7 (citing Patel ¶ 30). The Examiner finds that one of ordinary skill in the art would have been motivated to incorporate caprylyl methicone into Nagamatsu’s composition given Patel’s teaching that caprylyl methicone is an effective silicone oil for cosmetic compositions. Id.; Ans. 7. The Examiner also finds that while Nagamatsu discloses that its composition can comprise moisturizers, it does not teach specific amounts of moisturizers. Final Act. 7-8; see also Nagamatsu 20:38. The Examiner finds that Nohata discloses cosmetic composition comprising a typical amount of moisturizer, i.e., 0.5-20%. Final Act. 7-8 (citing Nohata ¶¶ 1, 119, 121); Ans. 6. We agree with and adopt the Examiner’s findings, and determine that the Examiner has established a prima facie case of obviousness of claim 1. See Final Act. 3-8; Ans. 4-11. We address Appellant’s arguments below. Appellant argues that Nagamatsu is focused on novel composition particles as sunscreen agents, and “discloses nothing about pigments.” Appeal 2021-004999 Application 16/062,422 6 Appeal Br. 7. Thus, according to Appellant, Nagamatsu’s teaching of including in its composition “‘[a]ny other ingredient’ . . . cannot provide sufficient motivation to combine the asserted art to yield compositions containing the required coated pigments.”2 Id. at 8. We are not persuaded. As the Examiner finds (Final Act. 4-6), Nagamatsu teaches that its compositions can include “conventional cosmetic adjuvants” (Nagamatsu 19:10-16); Mougin teaches that pigments are conventional cosmetic adjuvants (Mougin ¶ 414); and Valverde teaches hydrophobic coated pigments as claimed, including the claimed amounts (Valverde at, e.g., Abstr., 52:13-19, 52:27-29). On this record, this is sufficient to establish a prima facie case of obviousness. Appellant next argues that Nagamatsu “wanted to avoid shininess and greasy feel,” and thus there would have been no motivation to add “substantial amounts of moisturizing agent (10%-25%) which can possibly lead to shininess and/or greasy feel.” Appeal Br. 8. We are not persuaded, because Appellant points to no evidence of record suggesting that a composition comprising 10%-25% moisturizing agent would have shininess or greasy feel. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 2 The premise of Appellant’s argument-i.e., that Nagamatsu “discloses nothing about pigments” and thus there is no motivation to add pigments to Nagamatsu’s compositions (Appeal Br. 7-8)-is inconsistent with Nagamatsu itself. Nagamatsu teaches that its sunscreen particles comprise a matrix of perlite particles and mineral UV-screening agent particles. See Final Act. 3 (citing Nagamatsu 1:7-12). Nagamatsu teaches that the perlite is pigmented (“of glossy black or light-grey colour”) and the mineral UV- screening agent, which can be coated with hydrophobic material such as beeswax, is “metal oxide pigment[].” See Nagamatsu 5:1-22; 5:31; see also id. at 3:29-6:35. Appeal 2021-004999 Application 16/062,422 7 1989) (noting that attorney argument is “no substitute for evidence”); see also Ans. 9 (“Appellant has not provided objective evidence to support” its argument that “substantial amounts of moisturizing agent (10%- 25%) . . . can possibl[y] lead to shininess and/or greasy feel.”). Appellant also argues that Nagamatsu is directed to emulsions (which comprise a surfactant), while Valverde is directed to gel/gel compositions that lack surfactant. Appeal Br. 8. Appellant argues that given these different types of compositions, a person of ordinary skill in the art would have had no motivation to add Valverde’s hydrophobically-coated pigment to Nagamatsu’s emulsion with a reasonable expectation of success. Id. We disagree. As noted by the Examiner, simply because “Valverde teach[es] a composition with a different form from Nagamatsu’s composition does not mean that all the ingredients present in Valverde’s composition are unsuitable for Nagamatsu’s composition.” Ans. 9. Appellant has not pointed us to persuasive record evidence indicating that a person of ordinary skill in the art would have understood Valverde’s pigments to be incompatible with emulsions. Appellant next argues that Nagamatsu “does not teach or suggest the importance of combining the required silicone oil with the required silicone surfactant in obtaining the invention emulsions.” Appeal Br. 9; see also id. at 4. According to Appellant, Nagamatsu states that any oil can be used in its compositions, and Patel equates the claimed oil with mineral oil. Id. at 9. Appellant argues that Examples 1 and 2 of the Specification “demonstrate that mineral oil is insufficient and results in an unstable composition,” and “nothing in Patel would lead one of ordinary skill in the art to expect the difference between the required oil and mineral oil demonstrated in Appeal 2021-004999 Application 16/062,422 8 examples 1 and 2.” Id. We are not persuaded. Nagamatsu expressly teaches use of silicone oils, including polydimethylsiloxanes, and Patel teaches caprylyl methicone, which is a specific embodiment of the claimed polydimethylsiloxanes. See Nagamatsu 9:35-37, 12:10-18; Patel ¶ 30; Final Act. 4, 7. The fact that each reference also discloses mineral oil is of no moment. A reference that “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). To the extent Appellant is arguing that Examples 1 and 2 demonstrate unexpected results, we are not persuaded. “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). Here, Appellant provides no persuasive evidentiary basis on which to conclude that the results of Examples 1 and 2 are unexpected. Appellant appears to ask us to conclude that the results are unexpected merely because Patel equates the required oil with mineral oil. See Appeal Br. 9-10 (“Nothing in Patel would focus one of ordinary skill in the art on the required oil. . . . [N]othing in Patel would lead one of ordinary skill in the art to a reasonable expectation of the properties associated with the invention emulsions (that is, the invention emulsions possess unexpected properties).”). We decline to do so. Even if Patel suggests that the claimed oil and mineral oil are interchangeable in Patel’s compositions, on this record, Appellant has not established that persons of ordinary skill in the art would have expected the claimed oil and mineral oil to be interchangeable in the composition suggested by the prior art. Appeal 2021-004999 Application 16/062,422 9 For the reasons above, we affirm the Examiner’s rejection of claims 1, 5, 7, 8, 10-14, 16-18 under 35 U.S.C. § 103 as unpatentable over Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, and Nohata, as evidenced by Roudot and Tanaka. Rejection of Claims 3 and 4 under 35 U.S.C. § 103 as Unpatentable Over Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, Nohata, and Ricard Claim 3 depends from claim 1 and recites that the “composition has a viscosity at 25ºC ranging from 0.1 to 10 Pa.s.” Appeal Br. 12 (claims appendix). Claim 4 depends from claim 3 and recites that “the viscosity ranges from 0.5 to 5 Pa.s.” Id. The Examiner cites Ricard for disclosure of an emulsion having a viscosity at 25ºC ranging from 0.8-4 Pa.s. Final Act. 9-10 (citing Ricard ¶ 25). The Examiner finds that one of ordinary skill in the art would have been motivated to formulate Nagamatsu’s composition to have a viscosity within the range taught by Ricard, because Ricard teaches that this viscosity range is effective for cosmetic emulsions. See id.; see also Ans. 11-12. We adopt the Examiner’s findings. Final Act. 9-10; Ans. 11- 12. Appellant argues that “[m]erely because Ricard recites numerical values for viscosity in completely unrelated compositions does not indicate that the viscosities set forth in claims 3 and 4 for the invention emulsions having the required ingredients[] in the required amounts are obvious.” Appeal Br. 10. We are not persuaded. As indicated by the Examiner, Ricard teaches a person of ordinary skill in the art that the disclosed viscosity range is effective in cosmetic emulsions. Final Act. 9-10. We also agree with the Examiner that it is within the skill in the art to modify Appeal 2021-004999 Application 16/062,422 10 Nagamatsu’s compositions to have a desired viscosity. Ans. 12 (citing Nagamatsu, 19:11-12; Ricard ¶ 28). Appellant also cites Examples 1 and 2 of the Specification and argues that “not all viscosity levels are acceptable.” Appeal Br. 10. This argument is not persuasive. First, the Examiner does not propose modifying the prior art composition to have an unacceptable viscosity. Rather, the Examiner proposes modifying the prior art composition to have the viscosity recited in claims 3 and 4. Second, we agree with the Examiner that “Examples 1 and 2 do not disclose anything in regards to viscosity,” thus “it is unclear how Examples 1 and 2 [support Appellant’s argument that] not all viscosity levels are acceptable.” Ans. 12. For the above reasons, we affirm the rejection of claims 3 and 4 under 35 U.S.C. § 103 as unpatentable over Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, Nohata, and Ricard. CONCLUSION We affirm the Examiner’s rejections. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 7, 8, 10-14, 16- 18 103 Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, Nohata, Roudot, Tanaka 1, 5, 7, 8, 10-14, 16- 18 Appeal 2021-004999 Application 16/062,422 11 3, 4 103 Nagamatsu, Mougin, Valverde, Dumousseaux, Patel, Nohata, Ricard 3, 4 Overall Outcome: 1, 3-5, 7, 8, 10-14, 16- 18 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. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED