SHISEIDO COMPANY, LTD.

Patent Trials and Appeals Board

May 4, 2021

2019006236 (P.T.A.B. May. 4, 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.
15/099,737 04/15/2016 KAZUTAKA SASAKI WINGR.P035 US 4168
28752 7590 05/04/2021
NOLTE LACKENBACH SIEGEL
LACKENBACH SIEGEL BUILDING
1 CHASE ROAD
SCARSDALE, NY 10583
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
ayoung@NLS.law
docketing@nls.law
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUTAKA SASAKI1
Appeal 2019-006236
Application 15/099,737
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
MICHAEL A. VALEK, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cosmetic product, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1–7 are on appeal. Claim 1, reproduced below, is illustrative:
1. A skin cosmetic product comprising:
A) 15 to 50% by mass of a powder formed of an (adipic
acid/neopentyl glycol) crosspolymer, and

1 Appellant identifies the real party in interest as Shiseido Company Ltd.
Appeal Br. 1. We use the word “Appellant” to refer to “applicant” as defined
in 37 C.F.R. § 1.42.
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(B) 0.5 to 3% by mass of an aqueous thickening agent
consisting of a hydrophobically modified polyurethane.

The claims stand rejected as follows:
Claims 1 and 3–7 under 35 U.S.C. § 103 as obvious in view of
Yoshida2 and AuraSphere3 (Ans. 3) and
Claim 2 under 35 U.S.C. § 103 as obvious in view of Yoshida,
AuraSphere, Adeka,4 and Tominaga5 (Ans. 5).
OPINION
Claims 1 and 3–7
Claims 1 and 3–7 stand rejected as obvious based on Yoshida and
AuraSphere. The Examiner finds that “Yoshida teaches cosmetic
compositions [comprising] an associative thickener comprising
hydrophobically modified polyurethane, (B polymer of claim 1)” but “fails
to specifically teach adipic acid/neopentyl glycol crosspolymer (A polymer
of claim 1).” Ans. 3–4. The Examiner finds, however, that “AuraSphere
teaches adipic acid/neopentyl glycol crosspolymer particles, commercially
available under tradenames Penstia Powder, AuraSphere N, S or A.” Id. at 4.
The Examiner concludes that it would have been obvious “to modify
the teachings of Yoshida [by] add[ing] the adipic acid/neopentyl glycol
crosspolymer powders as motivated by AuraSphere” because “AuraSphere
teaches of desirable and predictable cosmetic benefits including (e.g., visual,

2 Yoshide et al., US 6,440,431 B1, Aug. 27, 2002.
3 Veil Wrinkles, “AuraSphere®” Centerchem, Inc. 2013.
4 ADEKA CORPORATION, “ADEKA NOL GT-730” www.adeka.co.jp.
5 Tominaga, US 8,323,629 B2, Dec. 4, 2012.
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tactile properties) and manufacturing advantages (e.g., ease of formulation,
etc.).” Id.
We agree with the Examiner that the product of claim 1 would have
been obvious based on the cited references. Yoshida discloses “a cosmetic
composition including advanced associative thickener” which is “a
hydrophobic denatured polyurethane.” Yoshida 4:13–25. Yoshida also
discloses that “[i]t is preferable to compound 0.01 to 10 wt % of said
associative thickener into the cosmetic composition of [its] invention.” Id. at
7:51–53. Thus, as the Examiner found, Yoshida discloses a cosmetic product
comprising component (B) of claim 1, in amounts that encompass the recited
range.
Yoshida states that its “associative thickener sometimes may be
inferior in time stability of viscosity at high temperature. Also, in the case
where the cosmetic composition, in particular, is an oil-in-water emulsion
composition, long-term emulsion stability may be inferior.” Id. at 7:67 to
8:4. Yoshida suggests that “[s]uch problems can be resolved by using water-
soluble polymers, polyhydric lower alcohols, or monohydric lower alcohol
together with the associative thickener.” Id. at 8:6–8.
AuraSphere discloses “PenstiaTM Powder,” an “Adipic Acid/Neopentyl
Glycol Crosspolymer.” AuraSphere, second page. AuraSphere states that
“Penstia™ Powder is a polymer that imparts a silky, creamy feel” and “[t]he
particles of Penstia™ Powder are porous spheres that allow for high oil
loading, which is for active entrapment, stabilization and sebum absorption.
The chemical composition of Penstia™ Powder gives it dry binding
properties, resulting in improved formula stability and reduced tackiness.” Id.
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AuraSphere also discloses “AuraSphere® N . . . an aqueous
AuraSphere® complex developed from technology behind Penstia™ Powder,”
which includes an “Adipic Acid/Neopentyl Glycol Crosspolymer.” Id., third
page. AuraSphere states that AuraSphere® N “works to instantly minimize the
appearance of lines and wrinkles, while providing a soft, comfortable film. . . .
The result is a smooth, silky film, which makes the skin appear virtually free
of fine lines.” Id.
Based on these teachings, it would have been obvious to include
AuraSphere® N, an aqueous polymer, in Yoshida’s cosmetic composition
because Yoshida suggests that problems with its thickener can be resolved by
using water-soluble polymers and AuraSphere teaches that its AuraSphere® N
composition minimizes the appearance of lines and wrinkles, and provides a
soft, comfortable film.
“Appellant does not contest the fact that these claim elements are
known in the art.” Appeal Br. 2.6 Appellant contends, however, that “it was
not predictable that the hydrophobic urethane thickener would stabilize high
concentrations (15 to 50% by mass) of the polymer particles in aqueous
media.” Id. at 3. Appellant argues that “[t]he technical literature provided by
Centerchem for these powders [i.e., Penstia™ and AuraSphere®] recommends
a concentration of no more than 3% (specification, p. 3 lines 16–21) in
aqueous media, and, as noted above, other workers skilled in the art failed to

6 With exceptions not relevant here, the Appeal Brief must contain “[t]he
arguments of appellant with respect to each ground of rejection. . . . [A]ny
arguments or authorities not included in the appeal brief will be refused
consideration by the Board.” 37 C.F.R. § 41.37(c)(1)(iv). Thus, arguments
not included in the Appeal Brief have been waived.
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identify this solution to the problem of suspension instability at higher
concentrations.” Id.
This argument is not persuasive because, as the Examiner found (Ans.
4, 6–7; Final Act. 3), AuraSphere discloses an example of a “Veiling cream”
formulation that includes 20% of AuraSphere® N. See AuraSphere, fifth page.
The formulation also includes 49.15% water, which is mixed with an
“Ammonium Acryloyldimethyltaurate/VP Copolymer,” and “HYBRIDUR®
875 POLYMER.” Id.
Appellant concedes that “[t]he Centerchem product brochure (of
record) discloses that the commercially available AuraSphere™ powders are
(adipic acid/neopentyl glycol) crosspolymer powders, of the type recited in
Claim 1.” Appeal Br. 2. Thus, Appellant in its Appeal Brief does not contest
the Examiner’s finding that AuraSphere discloses a composition that appears
to include an amount of adipic acid/neopentyl glycol crosspolymer powder
within the claimed range, and does not disclose any problem of instability.
Claim 1 is not limited to aqueous suspensions, and does not require any
specific amount of water. Therefore, claim 1 encompasses the composition
made obvious by the cited references.
Claim 2
Claim 2 requires a specific hydrophobically modified polyurethane:
(PEG-240/Decyltetradeceth-20/HDI) copolymer. The Examiner finds that
“Tominaga teaches an external preparation comprising an associative
polyurethane thickener. Examples contain 0.5-2 wt% PEG-
240/decyltetradeceth-20/HDI copolymer” and “Adeka teaches that PEG-
240/decyltetradeceth-20/HDI copolymer was available before the time of the
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filing of the present invention and well known as a cosmetic . . . gelling
agent.” Ans. 5.
The Examiner concludes that it would have been obvious “to modify
the teachings of Yoshida and substitute the associative thickener with PEG-
240/decyltetradeceth-20/HDI copolymer as motivated by Adeka” because
“the latter teaches that the copolymer is used to make a high-elastic/
sparingly water gel that is sprayable and stable in salt.” Id. at 6. We agree
with the Examiner’s findings and conclusion.
Appellant acknowledges that “[t]he Adeka product brochure teaches
that the specific hydrophobically modified polyurethane PEG-240/
Decyltetradeceth-20/HDI, recited in claim 2, is the effective component of
commercial gelling agents marketed as ADEKA NOL GT-700 and GT-
730.” Appeal Br. 5. Appellant also acknowledges that “Tominaga teaches
the use of the GT-700 product in combination with a crosslinked acrylamide
to form a viscous but easily washable skin treatment.” Id.
Appellant argues, however, that “Tominaga provides no teaching,
suggestion, or motivation to employ GT-700 as a stabilizer of particle
suspensions. One of ordinary skill in the art can learn from Tominaga only
that GT-700 (hydrophobically modified urethane) is an aqueous phase
thickener suitable for cosmetics.” Id.
We are not persuaded by this argument. Adeka discloses the same
copolymer as is recited in claim 2, which Appellant acknowledges. Appeal
Br. 5 (“Appellant does not contest the fact that PEG-240/Decyltetradeceth-
20/HDI was known in the art as an aqueous phase thickener.”). Adeka also
discloses that “[i]t is used for cosmetics as gelator.” Adeka, first page.
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Adeka also discloses that this polymer forms a “High elastic/Springy water
gel” with “Good spray discharge” and “Good solubility in water.” Id.
Yoshida discloses compositions that include an aqueous “Hair Gel”
including its thickener. Yoshida 28:21–30 (Table 27). Thus, it would have
been obvious to use the specific PEG-240/Decyltetradeceth-20/HDI taught
by Adeka as the hydrophobic denatured polyurethane taught by Yoshida
because Adeka teaches that its polymer forms a springy water gel with good
spray discharge and good water solubility.
Appellant argues that, “assuming, arguendo, that the patentability of
claim 2 relies upon an unexpected result, the Examiner has failed to explain
how claim 2, which is limited to the precise thickener for which
effectiveness was demonstrated, is not commensurate in scope with the
experimental evidence.” Appeal Br. 5.
We do not agree that Appellant has provided evidence of unexpected
results sufficient to outweigh the evidence cited by the Examiner. Appellant
argues that “among all of the aqueous phase thickeners tested for use in
combination with the suspension of polymer particles (specification, Table
1, see comparative Examples 1–4), satisfactory results could be obtained
only with the claimed hydrophobically modified polyurethane. Nothing in
the prior art teaches or suggests that this particular class of thickener would
have this particular property.” Appeal Br. 3.
The Specification’s Comparative Examples 3 and 4, however, show
that compositions comprising “(Acrylates/C10–30 alkyl acrylate)
crosspolymer” were equally effective in stabilizing a suspension of 25% or
35% (adipic acid/neopentyl glycol) crosspolymer powder as the PEG-
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240/Decyltetradeceth-20/HDI copolymers shown in the Specification’s
Examples 1–4. Compare Spec. 15 (Table 1) with id. at 16 (Table 2). The
only difference between the results is that the examples with PEG-
240/Decyltetradeceth-20/HDI copolymers had better stability over time, but
Tominaga teaches that its “preparation for skin . . . is excellent in usability
and stability.” Tominaga 1:6–7 (emphasis added). Appellant has not shown
that the results in the Specification were unexpected.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7 103 Yoshida, AuraSphere 1, 3–7
2 103 Yoshida, AuraSphere,
Adeka, Tominaga
2
Overall
Outcome
1–7

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