Chunhua Li et al.Download PDFPatent Trials and Appeals BoardNov 24, 20202020001930 (P.T.A.B. Nov. 24, 2020) 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. 14/416,438 01/22/2015 Chunhua Li 446344US99PCT 9142 22850 7590 11/24/2020 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 11/24/2020 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 CHUNHUA LI, HY SI BUI, JEAN-THIERRY SIMONNET, XIANZHI ZHOU __________ Appeal 2020-001930 Application1 14/416,438 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a nail composition, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s specification states both “[t]raditional nail enamel [that] can contain a large amount of nitrocellulose” and “UV gel composition[s]” that require curing with UV lamp or UV LED usually require solvents for 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’Oreal. (Appeal Br. 2.) Appeal 2020-001930 Application 14/416,438 2 effective removal of the nail coating. (Spec. ¶¶ 2, 3.) The Specification, however, notes that from both a personal preference and an environmental perspective and the time it takes for removal there is a desire to avoid such solvent-based removers. (Id. at 2–5.) Appellant’s invention is directed to solving that problem. (Id. ¶ 37 (“the primer allows a nail composition comprising a nail polish (UV Gel composition or conventional nail enamel) to be easily peeled off”).) Claims 1, 2, 6, 7, 15, and 16 are on appeal. Claim 1 is representative and reads as follows: 1. A nail composition set comprising at least one primer and at least one color coat, wherein the at least one primer comprises an aqueous dispersion consisting of polyurethane and an aqueous medium, and wherein the at least one color coat is a UV gel composition comprising at least one colorant. (Appeal Br. 17.) The prior art relied upon by the Examiner is: Name Reference Date Ellingson US 6,197,316 B1 Mar. 6, 2001 Kozachek US 2011/0256080 A1 Oct. 20, 2011 Berezkin US 7,445,770 B2 Nov. 4, 2008 Baycusan C 1000, Baycusan Product Sheet, Bayer Material Science, Mar. 2011 The following ground of rejection by the Examiner is before us on review: Claims 1, 2, 6, 7, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Ellingson, Kozachek, Berezkin, and Baycusan. Appeal 2020-001930 Application 14/416,438 3 DISCUSSION The Examiner finds that Ellingson teaches a nail kit comprising a basecoat that is a water-borne polyester polyurethane and a separate composition that is a mid-coat providing color with pigments and including polyacryl polymers. (Final Action 4.) The Examiner finds that Ellingson does not teach the specific polyurethane recited in some dependent claims and does not indicate that the mid-coat is UV curable. (Id.) The Examiner relies on Berezkin and the product data sheet for Baycusan in concluding that the specific polyurethane Baycusan, a polyurethane that undisputedly meets the requirements of dependent claims, would have been an obvious selection to one having ordinary skill in the art due to its known water resistance and excellent film-forming ability, and rapid drying forming non-allergenic and breathable films at ambient temperature. (Id. at 5–6.) The Examiner relies on Kozachek in concluding that it would have been obvious to select a UV curable color-providing mid-coat in the nail kit of Ellingson because such nail compositions were known to have the “considerable advantage of reduced time needed to harden” and include the use of acrylates and methacrylates. (Id. at 6, 7.) The Examiner recognizes that Ellingson teaches polymers for use in the mid coat nail composition are preferable self-curable (Id. at 6.) However, the Examiner concludes that Ellingson does not limit the polymers for use in the mid-coat to self-curable only and that given the known advantage of UV curable compositions that includes acrylate polymers, which are types of polymers that Ellingson teaches can be used in the mid-coat, one of ordinary skill in the art would have been motivated with reasonable expectation of success of achieving a Appeal 2020-001930 Application 14/416,438 4 mid-coat composition that would be usable with the polyurethane basecoat of Ellingson. (Id. at 6–7.) Claims 1 and 15 We agree with the Examiner’s findings and conclusion. We address claim 1 first, which requires two separate compositions: one is a primer that “comprises an aqueous dispersion consisting of polyurethane and an aqueous medium,” the other is “at least one color coat” that “is a UV gel composition comprising at least one colorant.” Appellant does not argue independent claim 15, which also includes these two components, separately from claim 1. We note that Appellant does not dispute that Ellingson teaches an “aqueous dispersion consisting of polyurethane” as required. Appellant argues only that Ellingson is directed to self-curable materials and that “one of ordinary skill in the art would not have been motivated to combine the teachings of Berezkin and Baycusan C1000 to compensate for the deficiency of claimed polyurethane as the Examiner alleges.” (Appeal Br. 9–10.) However, the deficiency of Ellingson as to the polyurethane requirement is the use of a polyurethane meeting the species of polyurethane compound found in dependent claims 6 and 7 (see Ans. 5), not the general recitation of “polyurethane and an aqueous medium” required by claim 1. We, thus, turn to Appellant’s argument as to the color coat composition. According to Appellant, the Examiner’s rejection is in error because “Ellingson teaches that the polymers used therein are not UV- curable (Ellingson col. 3, ll. 47–51)” and there is no disclosure in Ellingson of using UV-curable polymers. (Appeal Br. 6–7.) Appellant urges that because Ellingson “explicitly discloses that the film-forming polymers are Appeal 2020-001930 Application 14/416,438 5 preferably self-curing polymers and do not require chemical reaction or introduction of energy (such as exposure to UV rays)” and because Kozachek is directed to solving a problem related to UV curable nail gels, one of ordinary skill in the art “would not have even considered the teachings of Kozachek.” We do not find this argument persuasive. As the Examiner noted (Ans. 4), Ellingson teaches a preference for self-curable, but does not preclude UV curable. Although Ellingson indicates that “the preferred polymers do not require . . . introduction of energy e.g., exposure to ultraviolet rays)” (Ellingson 3:48–50), the only requirement of the mid-coat composition is that the film-forming polymer included is one that “forms an adherent continuum. . . when applied to mammalian nails” (Id. 3:28–35, 10: 25–29 (“The present midcoat compositions comprise a film-forming polymer, a liquid diluent, and, optionally, other suitable components . . . [such as] pigments, and dyes.”).) Moreover, as the Examiner further noted, Ellingson teaches the film forming polymer used in the midcoat layer can be, among other polymers, polyacryls, polymethacryls, and mixtures thereof. (Id. at 10:38–41.) “[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We do not find that Ellingson teaches away from the use of UV curable polymers in the mid-coat composition even though, as the Examiner acknowledged, it does not make specific disclosure of such a polymer. Appeal 2020-001930 Application 14/416,438 6 And we agree with the Examiner that Kozachek’s teaching of the “considerable advantage of the use of the UV nail gel for the customer and the person performing the application [being] the reduced time needed to harden,” would have motivated one of ordinary skill in the art to use such a polymer composition in the mid-coat that includes a pigment. Furthermore, Kozachek teaches esters or amides of acrylic and methacrylic acids are used in UV-curable gel compositions. (Kozachek ¶ 24.) Consequently, and contrary to Appellant’s position that the Examiner’s assertions regarding obviousness and motivation are conclusory and insufficient (Appeal Br. 12), we agree with the Examiner that one of ordinary skill in the art would have had a reasonable expectation of success in using a UV curable polymer in the mid-coat composition. Indeed, as the Examiner noted in the Answer, to which Appellant does not respond, “the instant specification discloses both UV gel and conventional based nail composition[s] are suitable color coats” for use in kits that include a polyurethane base coat. (Ans. 4; see Spec. ¶¶ 32, 33, 37, 87–89.) And, because we conclude that Ellingson does not teach away from using a UV-curable polymer in the mid-coat composition, we do not find persuasive Appellant’s argument that a modification of Ellingson so as to include a UV curable polymer in the mid-coat composition would change the principle of operation of Ellingson (Appeal Br. 8–9). Appellant does not argue claims 2 or 16 separately, and they therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). In affirming a multiple reference rejection under 35 U.S.C. § 103, the Board may rely on fewer than all of the references relied on by the Examiner in an obviousness rationale without designating it as a new ground of Appeal 2020-001930 Application 14/416,438 7 rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961). In light of the above discussion of Ellingson and Kozachek, we affirm the Examiner’s rejection of claims 1, 2, 15, and 16 as being obvious over Ellingson, Kozachek, Berezkin, and Baycusan. Claims 6 and 7 We now turn to Appellant’s arguments relevant to the requirement of claims 6 and 7 of a particular type of polyurethane. According to Appellant, Berezkin and Baycusan are both non-analogous art to the present application. (Appeal Br. 9–11.) Appellant notes that Berezkin is concerned with polyurethane dispersions used in hair fixatives and is “related to the broader cosmetic industry” and not “nail composition sets having a UV gel composition as a color coat” or nail compositions at all. (Id. at 11.) Appellant explains that Baycusan is also not concerned with nail compositions sets. (Id.) Thus, Appellant contends that the references are not in the same field of endeavor and not reasonably pertinent to the “technical problem of UV gel compositions which are safe and adhere well to nails, but also can be easily removed with less damage to nails and with more time efficiency.” (Id.) We do not find Appellant’s argument persuasive. “A reference is reasonably pertinent if, even though it may be in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re GPAC Inc., 57 F.3d 1573, 1578 (Fed. Cir. 1995) (emphasis added). Moreover, “[t]he problems to which the claimed invention and reference at issue relate must be identified and compared from Appeal 2020-001930 Application 14/416,438 8 the perspective of a person having ordinary skill in the art,” such a person “—resigned to considering art outside her field of endeavor—would . . . not identify the problems so narrowly so as to rule out all . . . art [outside that field of endeavor].” Donner Tech., LLC v. Pro Stage Gear, LLC, Appeal No. 2020-1104, slip op. at 9 (Fed. Cir. Nov. 9, 2020). One of the objects of Appellant’s invention, besides being easy to remove, is to fill the need for nail compositions which are safe and adhere well to nails. (Spec. ¶¶ 2, 5, 22, 32.) The Specification states that “it is desirable to avoid . . . solvent-based removers both from a personal perspective (to avoid damage to nails) and an environmental perspective (to avoid damage to the environment).” (Id. ¶ 2.) The Specification further teaches that it is the primer that is the component which “helps an applied nail composition (UV Gel composition or conventional solvent-based nail composition or enamel) to adhere to nails and also allows an applied composition to be easily peeled off.” (Id. ¶ 32.) Although it is true that Berezkin is directed generally to cosmetic compositions and hair fixatives, it nevertheless teaches the claimed aqueous polyurethane dispersion of claim 7 has excellent film-forming ability and is water resistant and can be used safely on human keratin. (Berezkin 1:9–15; 2: 9–24; 8:32–40.) All of these are relevant characteristics for a polymer to provide a safe coating on nails, which also comprise keratin. Thus, we conclude that Berezkin is reasonably pertinent to at least one problem faced by the inventors and is thus analogous art. As for Baycusan, we note that it teaches the polymer may be used in decorative cosmetics and is compatible with a wide range of cosmetic ingredients and has “a unique combination of water resistance and ease of Appeal 2020-001930 Application 14/416,438 9 removal from skin.” (Baycusan 1, 3.) It further describes characteristics of being non-allergenic, rapid drying, that film forms by evaporation of water, and that the film is breathable at ambient temperatures. (Id. at 2–4.) Thus, we conclude that Baycusan is reasonably pertinent to all of the objects of Appellant’s invention, and is analogous art. In light of the foregoing, we affirm the Examiner’s rejection of claims 6 and 7 as being obvious over Ellingson, Kozachek, Berezkin, and Baycusan. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6, 7, 15, 16 103 Ellingson, Kozachek, Berezkin, Baycusan 1, 2, 6, 7, 15, 16 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 Copy with citationCopy as parenthetical citation