Ex Parte Farcet

Patent Trial and Appeal Board

Apr 30, 2018

14255103 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/255,103 04/17/2014
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
05/02/2018
FIRST NAMED INVENTOR
Celine Farcet
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
085507-536493 2599
EXAMINER
AHMED, HASAN SYED
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CELINE FARCET 1
Appeal2017-002474
Application 14/255, 103
Technology Center 1600
Before ULRIKE W. JENKS, JENNIFER MEYER CHAGNON, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic process employing a gradient copolymer composition, all of which
have been rejected. We have jurisdiction under 35 U.S.C. § 6(b ). We
affirm-in-part.
STATEMENT OF THE CASE
According to Appellant's Specification, it is often desired to obtain a
deposited layer of cosmetic material on a keratinous substance, i.e., hair,
1 Appellant identifies the Real Party in Interest as L'OREAL. (Appeal
Br. 2.)
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Application 14/255, 103
skin, eyelashes or nails. (Spec. 1: 19--24.) "Good persistence and hold over
time of the deposited cosmetic layer and good adhesion to the support are
generally sought." (Id. at 1 :32-34.) Having a composition that is
comfortable to wear and does not exhibit an excessively tacky texture is also
a desirable property. (Id. at 2:7-10.) Polymers are used to help achieve
these properties. (Id. at 2: 11-26.) The use of a blend of polymers having
different chemical natures can cause problems of phase separation in a
cosmetic formulation. (Id.) So-called "random polymers" that exhibit a
dispersity in composition of the polymer chains also suffer from phase
separation in a cosmetic formulation. (Id.)
The claimed invention seeks to overcome the disadvantages of the
prior art with a "gradient copolymer" composition. (Id. at 2:28-39.) A
gradient copolymer is defined by Appellant as a copolymer "exhibiting a
change in the ratio of the various monomers all along the chain." (Id. at 7:6-
8.)
Claims 1-37 are on appeal. Claim 1 is the only independent claim on
appeal and reads as follows:
1. A cosmetic process for making up or caring for keratinous
substances which comprises applying to said substances a
cosmetic composition comprising, in a physiologically
acceptable medium, at least one gradient copolymer comprising
at least two different monomers chosen from isobomyl acrylate,
isobomyl methacrylate, isobutyl acrylate, isobutyl methacrylate
and 2-ethylhexyl acrylate.
(Appeal Br. 28.)
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Application 14/255, 103
The following two grounds of rejection by the Examiner are before us
on review:
1. Claims 1-32 and 34--37 under 35 U.S.C. § 103(a) as unpatentable
over Mathew2 and Rollat. 3 (Final Action 3-5.)
2. Claims 1-37 under 35 U.S.C. § 103(a) as unpatentable over Mathew,
Rollat, and Dupuis. 4 (Final Action 6-7.)
DISCUSSION
Ground 1. Obviousness over Mathew and Rollat
The Examiner finds that Mathew discloses preparing polymers of
vinyl monomers with controlled molecular weight and narrow polydispersity
in the presence of a thiocarbonylthio compound. (Final Action 3 (citing
Mathew i-f 2).) The Examiner explains that Mathew describes forming the
polymer from one vinyl monomer (i.e., homopolymer) or a combination of
polymerizable vinyl comonomers (i.e., copolymer made by a mixture of
monomers) and that the copolymers that can be obtained include gradient
copolymers. (Id. (citing Mathew i-fi-141, 45); Ans. 3, 4.) Furthermore,
explains the Examiner, Mathew describes specific monomers that may be
used to make these homo or copolymers including "all isomers of butyl
acrylate, 2-ethylhexyl acrylate, and isobomyl acrylate." (Final Action 3
(citing Mathew i-f 42); Ans. 4.) The Examiner also explains that Mathew
indicates "that the disclosed copolymer is beneficial in that it has low
polydispersity." (Final Action 4 (citing Mathew i-f 10); Ans. 5.)
2 Mathew et al., US 2003/020812 Al, published Nov. 6, 2003.
3 Rollat et al., US 6,689,346 Bl, issued Feb. 10, 2004.
4 Dupuis, US 6,294,158 Bl, issued Sept. 25, 2001.
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Application 14/255, 103
The Examiner concludes that, based on these disclosures in Mathew,
it would have been obvious to a person of ordinary skill in the art at the time
the invention was made to make a gradient copolymer comprising at least
two different monomers chosen from an isomer of butyl acrylate,
2-ethylhexyl acrylate or isobomyl acrylate, and recognizes and that such a
person "would have been motivated to make such a copolymer because it
has low polydispersity, as explained by Mathew." (Final Action 5.) The
Examiner notes that "'[r]eading a list and selecting a known compound to
meet known requirements is no more ingenious than selecting the last piece
to put in the last opening in a jig-saw puzzle."' (Ans. 5 (quoting Sinclair &
Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945).)
Moreover, explains the Examiner, "the reference, like the instant
application, is using the disclosed monomers to make a gradient copolymer
with the same property as the instant application, i.e. low polydispersity (see
[0010] of Mathew and [0013] of the instant specification as published)."
(Id.; see also id. at 6 ("Mathew explains that the disclosed polymers are
beneficial for their low polydispersity (see [0043] of Mathew)")). The
Examiner further notes that "Appellant has not demonstrated that the
claimed monomers result in any unexpected results compared with the
remainder of the monomers listed in [0042] of Mathew." (Id. at 5)
The Examiner also notes that Mathew discloses that the polymers it
describes as having low polydispersity may be used as dispersants,
surfactants, surface treating agents, adhesives, rheology controllers,
coatings, and thermoplastic elastomers. (Ans. 6 (citing Mathew i-f 45).) The
Examiner indicates that such properties are "critical for cosmetic
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compositions" and notes that Appellant's Specification "states that the
claimed polymers are important for their adhesive (see [0003]) and
rheological properties (see [0012])." (Id.)
The Examiner further explains that while Mathew does not teach a
cosmetic process for making up or caring for keratinous substances as
claimed, such would have been obvious in light of Rollat. (Final Action 4.)
Rollat, notes the Examiner, teaches a hair styling composition comprising at
least one acrylic copolymer that may include monomers of ethylhexyl
acrylate and monomers of isobomyl methacrylate and isobomyl acrylate.
(Id. (citing Rollat columns 1 and 3).) The Examiner concludes that in light
of the foregoing disclosure in Rollat, it would have been obvious to employ
the gradient copolymer of Mathew in a cosmetic that would be used in a
hairstyling composition and to use that composition in caring for the hair by
applying the hairstyling composition to it. (Id. at 4--5.)
Regarding the properties of the gradient copolymer composition as
recited in claims 19 and 20, the Examiner contends that because "the prior
art teaches the identical chemical structure" and because a composition and
its properties are inseparable, the claimed properties "are necessarily
present." (Id. at 4.)
a. Claim 1 would have been obvious
We agree with the Examiner's fact-findings and conclusion that
Mathew and Rollat render obvious claim 1.
1. The gradient copolymer
Appellant contends that the Board decision in application 11/628,954
(the '954 Decision) reversing the Examiner's obviousness rejection of
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Application 14/255, 103
claims to gradient polymer compositions may have a bearing on the decision
in this appeal. (Reply Br. 2.) We find that the '954 Decision does not
control the outcome here. We note that the gradient copolymer limitations
of claim 34 in the '954 application are the same as claim 1 in the present
application on appeal. (See '954 Decision at 2.) In the '954 application, the
Examiner rejected claim 34 as being anticipated by Mathew. (Id. at 3.) The
Examiner relied upon the same paragraphs from the Mathew disclosure
noted above (concerning the rejection of the claims in the present application
for obviousness) in arriving at the conclusion of the anticipation of claim 34
involved in the'954 Decision. (See id.) The Board found that disclosure did
not provide a sufficiently specific description to clearly and unequivocally
disclose, for purposes of anticipation, the claimed gradient copolymer
composition of claim 34. (Id. at 4--5.) The '954 Decision went on to find
that there was insufficient explanation provided by the Examiner in the
rejection concerning the obviousness of the gradient copolymer
composition: specifically, concerning the obviousness of at least two
different monomers recited in the claim, based on Mathew's disclosure
alone. (Id. at 5---6.) The Board concluded that the Examiner did not
"independently reject[]" that claimed copolymer "as being obvious over
Mathew;" the Examiner, instead, relied on the position that Mathew
anticipated this gradient copolymer composition and was concerned with
whether Mathew and Rollat rendered obvious the specific amounts of
monomers recited in dependent claims. (Id. at 5---6.) Thus, the'954 Decision
did not address the obviousness of the gradient copolymer composition
based on Mathew.
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Application 14/255, 103
Unlike the Examiner's rejection on appeal in the '954 Decision, here
the Examiner clearly provided a reason that the claimed gradient copolymer
of claim 1 would have been obvious from the disclosure of Mathew. In
particular, as set forth above, the Examiner notes, and we agree, that
Mathew teaches at least 3 of the claimed monomers (all isomers of butyl
acrylate, 2-ethylhexyl acrylate, and isobomyl acrylate, Mathew i-f 42), can be
used to make a gradient copolymer (Mathew i-f 45) and that such a
copolymer would be expected to have a low polydispersity (Mathew i-fi-1 10,
43) and could be used in a variety of disclosed ways, including as adhesives
and rheology controllers (Mathew i-f 45). (See Final Action 3-5 and Ans. 3-
5.) The Examiner further articulates a reason that one of ordinary skill in the
art would have found it obvious to make a gradient copolymer with at least
two of the monomers recited in the claim, i.e., because the resultant polymer
would be expected to have a low polydispersity as Mathew discloses (Final
Action 5) and that it could be used as an adhesive or for its rheological
properties as Mathew discloses (Ans. 7-8). The fact that it would be
possible to make many homopolymers or copolymers from the listed
monomers that Mathew discloses (Appeal Br. 15-1 7) does not make the
claimed gradient copolymer any less obvious. Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[D]isclos[ing] a multitude
of effective combinations does not render any particular formulation less
obvious.").
Appellant argues that the claimed gradient copolymer is not obvious
from Mathew's disclosure because (1) Mathew does not specifically disclose
a gradient copolymer comprising at least two different monomers from the
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Application 14/255, 103
claimed list of monomers but rather only "alludes in a very general and
passing way to the possibility of gradient copolymers" (Appeal Br. 15; see
also Reply Br. 4 ("Mathew does not explicitly disclose that gradient
copolymers prepared ... would have low polydispersity") and (2) Mathew is
not even concerned with copolymers, but also refers to homopolymers and
all of Mathew's examples are directed to homopolymers (Appeal Br. 16-
1 7). Appellant also argues that, because Mathew is focused on
homopolymers, Mathew teaches away from the gradient copolymers claimed
(Appeal Br. 17) and that Mathew does not explicitly mention narrow
polydispersity with respect to gradient copolymers (Reply Br. 4 ). Appellant
also argues that "Mathew is not concerned with problems addressed by the
present invention" and thus "nothing in the art leads a person skilled therein
to select the claimed monomers and expect to achieve results obtainable by
the present invention." (Id.) We do not find these arguments persuasive for
the reasons discussed below.
"It is well settled that a prior art reference is relevant for all that it
teaches to those of ordinary skill in the art." In re Fritch, 972 F.2d 1260,
1265 (Fed. Cir. 1992). That Mathew only exemplifies homopolymers, does
not negate the fact that Mathew teaches that copolymers can be made and
that gradient copolymers are among the types of copolymers that can be
made. (Mathew i-f 45) That Mathew only exemplifies homopolymers does
not teach away from making the gradient copolymers that Mathew also
discloses could be made. "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
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direction divergent from the path that was taken by the applicant." In re
Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). Mathew's exemplification of homopolymers
cannot be said to discourage or lead one in a divergent path from that taken
by Appellant because Mathew explicitly says that the polymerization
process can be used to make copolymers, including gradient copolymers,
too.
In addition, we do not find the fact that Mathew specifically identifies
block copolymers and graft copolymers as having "a narrow polydispersity"
(Mathew i-f 45) means that Mathew does not teach or suggest gradient
copolymers using the disclosed monomers can achieve a polymeric structure
with "low polydispersity." We conclude instead that Mathew's disclosure
was differentiating well-defined structured polymers as having narrow
polydispersity, while less well-defined structured polymers have a low
polydispersity, which Mathew teaches is usually between 1.05 to 2 (Mathew
i-f 43). That conclusion is supported by the fact that an object of the
invention of Mathew is to obtain polymers with low polydispersity (Id. i-f 10)
and that the polymers described as being able to be obtained include gradient
copolymers (Id. i-f 45).
Furthermore, "[t]he prior art's ... disclosure of more than one
alternative does not constitute a teaching away from ... alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Thus, the fact that Mathew provides a list of possible monomers for use in
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creating a copolymer does not teach away from the claimed gradient
copolymers.
Appellant's argument that nothing in the art leads a person "to select
the claimed monomers and expect to achieve results obtainable by the
present invention" because Mathew is not concerned with problems
addressed by the present invention is equally unpersuasive.
First, prima facie obviousness does not require prior art references to
recognize or even suggest the problem that applicant attempted to solve.
See, e.g., In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as
some [reason,] motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor."). As
the Examiner pointed out, "Mathew demonstrates that a copolymer formed
with any of the disclosed monomers (including those claimed instantly)"
would be expected to achieve a low polydispersity, which, is the same
"property desired by the instant application." (Ans. 5 (citing Spec. i-f 13
("The copolymers according to the invention are gradient copolymers which
comprise at least two different monomers chosen from a given list and
which preferably exhibit a low polydispersity in weight and preferably a low
polydispersity in composition.")).
Second, "[i]n an obviousness determination, a reference must be
considered ... for what it fairly suggests." In re Burckel, 592 F.2d 1175,
1179 (CCPA 1979). We find Mathew reasonably suggests that any
combination of the listed monomers (i-f 43) would be expected to be able to
be used to make a homopolymer or to be combined to achieve a copolymer
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(i1i1 41, 45), be it a well-defined copolymer structure or another type of
copolymer structure, such as a gradient copolymer, and that when the
polymerization is effected in the presence of the disclosed thiocarbonylthio
compound, those polymers will have a low polydispersity (i-f 40). And we
agree with the Examiner that in light of these teachings, one of ordinary skill
in the art would have been motivated to make a gradient copolymer
comprising at least two different monomers from the group that includes an
isomer of butyl acrylate, 2-ethylhexyl acrylate or isobornyl acrylate to arrive
at a low polydispersity gradient copolymer that could be used in a field in
which rheology controllers were useful and/or adhesive qualities were
needed. Thus, we find that the Examiner has made out a prima facie case of
obviousness of the claimed gradient copolymer.
Appellant did not rebut the Examiner's determination with any
experimental results demonstrating that it was unexpected to achieve a low
polydispersity gradient copolymer from Mathew's combinations or that the
claimed copolymers resulted in an unexpected result compared with
Mathew's suggested copolymers. And for the reasons discussed above, we
conclude that Appellant has not provided any persuasive argument as to why
it would not be obvious to combine the monomers the Examiner noted from
Mathew to achieve a gradient copolymer.
2. Using the gradient copolymer to care for keratinous
substances
Appellant next argues that Mathew is not analogous art because
"Mathew is not concerned with a cosmetic process for making up or caring
for keratinous substances and is not concerned with problems addressed by
the present invention." (Appeal Br. 17.) Appellant further argues that "[i]t
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is not apparent why persons skilled in the art would employ compositions in
Mathew in a cosmetic process even in view of Rollat [which does not
disclose gradient copolymers, and which obtains its polymers through
emulsion or solution polymerization] and furthermore expect results
achievable by the present invention." (Id. at 19.) Appellant also contends
that Rollat "is not the same technology" as the present invention because
Rollat's polymers "are in the form of aqueous emulsions or dispersion"
while the "gradient copolymers [of the invention] exhibit the advantage of
being able to be easily employed in organic cosmetic media." (Id.) We do
not find these arguments persuasive.
Art is analogous if it is (1) from the same field of endeavor, regardless
of the problem addressed, or (2) reasonably pertinent to the particular
problem with which the inventor is involved. In re Clay, 966 F .2d 656,
658-59 (Fed. Cir. 1992). "A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor's 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." Id.
at 659. Regardless of whether Mathew explicitly addresses "a cosmetic
process for making up or caring for keratinous substances," as the Examiner
explained (Ans. 7), the polymeric compositions that Mathew teaches can be
made are said to be ones that have a low polydispersity (Mathew i-f 40, see
also i-f 43), "the very benefit of the polymer being claimed instantly ... (see
[0018] of the instant specification as published)." Even apart from that, as
the Examiner also explained (Ans. 7), which Appellant does not dispute,
"Mathew notes that the disclosed polymers may be used as dispersants,
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surfactants, surface treating agents, adhesives, rheology controllers,
coatings, and thermoplastic elastomers (see [0045])," which are properties
that are important for cosmetic compositions.
To the extent that Appellant argues that Rollat is not analogous art
because the polymers are in a "different form" and allegedly are not "able to
be easily employed in organic cosmetic media" (Appeal Br. 19), we are not
persuaded. As the Examiner properly noted (Ans. 11 ), Rollat was cited to
show that use of copolymers comprising the claimed monomers is known in
the art of cosmetic compositions. Thus, whether or not Rollat's polymers
are in a different form is simply immaterial. In short, Rollat is in the same
field of endeavor as Appellant's invention because it is directed to
compositions for caring for hair (Rollat 1 :45--48) just as Appellant's
Specification indicates the claimed compositions can be used for hair (Spec.
i-f 173 ("The composition according to the invention can also be a hair
product, in particular for the form retention of the hairstyle or the shaping of
the hair.")).
We agree with the Examiner that it would have been obvious to use
the copolymers of low dispersity of Mathew, which have properties such as
surface treating and adhesive, in a cosmetic composition such as described
in Rollat that is applied to a keratinous substance, in light of the fact that
Rollat is concerned with applying a composition to the hair to hold its shape
(Rollat 1: 17--4 7) ). We note that claim 1 does not require the cosmetic
composition to achieve any particular results, just that it be applied to a
keratinous substance. "[O]ne need only have a motivation to combine
accompanied by a reasonable expectation of achieving what is claimed in the
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patent-at-issue." Intelligent Bio-Sys. v. Illumina Cambridge, 821F.3d1359,
1367 (Fed. Cir. 2016) (emphasis added). Whether the results of the
invention as described in Appellant's Specification are achieved or that
achieving the "often conflicting properties" described in Appellant's
Specification "is quite difficult" (Reply Br. 3) is not relevant to the
obviousness inquiry because all that is required by claim 1 is that the
composition be applied to a keratinous substance.
In light of the foregoing, we affirm the Examiner's rejection of claim
1 as being obvious over Mathew and Rollat.
Appellant does not separately argue claims 2-18, 21-32, and 34--37
and therefore these claims fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant separately argues claims 19 and 20, which we discuss
below.
b. The Examiner has not established that claims 19 and 20 would
have been obvious from Mathew and Roll at
Regarding claims 19 and 20, the Examiner contends that because
"Mathew discloses the same combination of monomers being claimed in the
configuration being claimed, i.e., a gradient copolymer" that the properties
claimed are necessarily present. (Final Action 3--4 (citing In re Spada, 911
F.2d 705, 709 (Fed. Cir. 1990) and MPEP 2112.01).)
We disagree with the Examiner's fact-finding and conclusion that
Mathew and Rollat render obvious claims 19 and 20. While Mathew
suggests making a gradient copolymer with 3 out of the 5 claimed
monomers of claim 1, it does not disclose such a copolymer for anticipatory
purposes and there is no disclosure of the solubility of any polymers
described in Mathew. Consequently, there is no basis upon which to
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conclude that a gradient copolymer so made by Mathew's process would be
soluble or not. Thus there is insufficient disclosure to "show that the natural
result flowing from the operation [of polymerization to make a gradient
copolymer of low dispersity in Mathew] would result in" the function
claimed, i.e., solubility in isododecane at room temperature and atmospheric
conditions at any concentration, much less of at least 1 % by weight (claim
19) or at least 10% by weight (claim 20). Par Pharm. v. Twi Pharms., Inc.,
773 F.3d 1186, 1195 (Fed. Cir. 2014). The Examiner has cited no evidence
to establish the solubility of gradient copolymers having the claimed
monomers in any solvent, much less that one would reasonably expect such
copolymers to have the claimed solubility in isododecane under the recited
conditions. (Id. at 1195-96.) Consequently, we are constrained to reverse
the Examiner's rejection of claims 19 and 20 as being obvious over Mathew
and Rollat.
Ground 2. Obviousness over Mathew, Rollat, and Dupuis
The Examiner rejected claim 33 as obvious over Mathew, Rollat, and
Dupuis. Dupuis was relied upon for a disclosure of make-up products
applied to skin rather than hair. (Final Action 6-7.)
Appellant argues that the rejection is in error because Dupuis does not
cure the deficiencies noted above with respect to claim 1. (Appeal Br. 24.)
Because we do not find Appellant's arguments persuasive as to the
non-obviousness of claim 1, we affirm the Examiner's rejection of claim 33
as being obvious over Mathew, Rollat, and Dupuis.
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SUMMARY
We affirm the rejection of claims 1-18, 21-32, and 34--37 under
35 U.S.C. § 103(a) as obvious over Mathew and Rollat.
We reverse the rejection of claims 19 and 20 under 35 U.S.C. § 103(a)
as obvious over Mathew and Rollat.
We affirm the rejection of claims 1-37 under 35 U.S.C. § 103(a) as
obvious over Mathew, Rollat, and Dupuis.
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).
AFFIRMED-IN-PART
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