Ex Parte Hales et al

Patent Trial and Appeal Board

Jun 25, 2018

13513980 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/513,980
60723 7590
Avon Products, Inc.
1 Avon Place
Suffern, NY 10901
FILING DATE FIRST NAMED INVENTOR
06/05/2012 Kelly Hales
06/27/2018
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.
CR117U-US 8465
EXAMINER
WHEELER, THURMAN MICHAEL
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
PATENT.DEPARTMENT@AVON.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY HALES, HOSSEIN A. BAGHDAD!, and
DERRICK B. MCKIE
Appeal2016-08440
Application 13/513,980 1
Technology Center 1600
Before JOHN G. NEW, RICHARD J. SMITH, 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
method for applying a smooth cosmetic film to eyelashes or a method for
imparting a self-leveling property to a mascara, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
"Boger fluids have been extensively used in the paint and industrial
coatings industry," including systems that use polyether polyurethanes.
1 Appellants identify the Real Party in Interest as Avon Products, Inc.
(Appeal Br. 2.)
Appeal2016-008440
Application 13/513,980
(Spec. i-f 3.) Boger fluids are non-Newtonian and "over a wide range of
shear rates," their viscosity "remains essentially constant." (Spec. i-f 2.)
"Boger fluid-like properties" could "facilitate uniform application of
cosmetics to skin, hair or eyelashes." (Spec. i-f 4.)
A known polyether polyurethane used in the paint industry is Rheolate
288. (Spec. i-f 3.) According to Appellants, that polymer has not been used
in the cosmetic industry. (Id.)
The invention at issue relates generally to a mascara composition that
includes a polyether polyurethane associative thickener and wherein the
composition will "self-level, by which is meant that initially existing clumps
and surface irregularities will be substantially eliminated within a few
minutes" and thus provides "smooth films coating the shaft of the
eyelashes." (Spec. ,-r 6.)
Claims 1-6, 9-12, 14--16, and 24--28 are on appeal. 2 Claim 1 is
representative and reads as follows:
1. A method for applying a smooth cosmetic film to eyelashes,
compnsmg:
forming an initial coating on said eyelashes with a
composition comprising by weight of the composition from
about 1 to about 30% by weight of an associative thickener
capable of forming a film on the shaft of a keratin fiber; and
allowing the coating to self-level to provide a coating having
reduced clumping and a smoother surface as compared to said
initial coating;
wherein said associative thickener comprises a
polyurethane polymer resulting from the reaction of a mixture
comprising (i) a polyether polyol component having an average
molecular weight between about 500 and about 20,000 g/mol,
2 Claims 18-23 are also pending, but stand withdrawn from consideration as
being directed to a non-elected invention. (Appeal Br. 10.)
2
Appeal2016-008440
Application 13/513,980
(ii) a diisocyanate, (iii) a branched, aliphatic C8-36 primary
alcohol, and (iv) optionally a modifier comprising two groups
reactive with said diisocyanate and a hydrophobic moiety; and
wherein said composition is in the format of an oil-in-
water or a water-in-oil emulsion that exhibits Boger fluid
behavior.
(Appeal Br. 8.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 3---6, 9--11, 14--16, and 24--28 under 35 U.S.C. § 103(a) as
being unpatentable over De La Poterie3 and Doolan. 4
Claims 2 and 12 under 35 U.S.C. § 103(a) as being unpatentable over
De La Poterie, Doolan, and Reich. 5
DISCUSSION
Claims 1, 3-6, 9-11, 14-16, and 24-28
The Examiner finds that De La Poterie teaches (1) a cosmetic
composition, such as mascara, comprising at least one film-forming polymer
and at least one wax in an aqueous phase and (2) applying that cosmetic
composition to keratinous fibers, such as eyelashes. (Final Action 3.) The
Examiner explains that De La Poterie teaches ( 1) that the film-forming
polymer is selected from a polyether-polyurethane, and (2) both water-in-oil
and oil-in-water emulsions that comprise wax. (Id.) The Examiner notes
that De La Poterie does not teach the cosmetic composition must include a
polyurethane polymer resulting from the reaction recited in claim 1 or that
3 De La Poterie et al., US 2003/0031640 A9, published Feb. 13, 2003.
4 Doolan et al., US Patent 5,973,063, issued Oct. 26, 1999.
5 Reich et al., US Patent 5,563,233, issued Oct. 8, 1996.
3
Appeal2016-008440
Application 13/513,980
the composition exhibits Boger fluid behavior allowing the mascara to self-
level to provide a coating having reduced clumping and a smoother surface
as claimed. (Id.)
The Examiner finds that Doolan teaches polyether-polyurethanes
resulting from the reaction recited in claim 1 and that such polyurethanes
can be used in a cosmetic composition to provide, inter alia, good flow and
leveling properties to the cosmetic composition. (Id. at 4.) The Examiner
also finds that Doolan teaches using such polyurethanes in an amount within
the range of from about 0.05 to about 20% by weight, which includes
amounts that fall within the range recited by claim 1. (Id.) The Examiner
notes that mascara is a cosmetic composition and concludes that it would
have been obvious to add Doolan's polyurethane in the range recited in
claim 1 to the mascara composition described by De La Poterie to provide,
inter alia, good flow and leveling properties to such a mascara composition.
(Id. at 4--5) The Examiner further concludes that it would have been
obvious to one of ordinary skill in the art to apply the mascara composition
to the eyelashes with a reasonable expectation of success in light of De La
Poteries' teaching that its compositions can be applied to eyelashes. (Id. at
3-5.)
The Examiner further explains that a chemical composition and its
properties are inseparable. (Id. at 5) According to the Examiner, because
the polyurethanes taught by Doolan that would have been obvious to use in
the De La Poterie mascara are within the scope of the polyurethanes recited
by claim 1, the composition including those polyurethanes would result in a
composition having Boger fluid behavior. (Id.; Ans. 3.)
4
Appeal2016-008440
Application 13/513,980
We agree with the Examiner's factual findings and conclusion that the
method of claim 1 would have been obvious to one having ordinary skill in
the art.
Appellants argue that the Examiner's rejection is in error because
neither De La Poterie nor Doolan disclose compositions having Boger fluid
rheology. (Appeal Br. 4.) In fact, argue Appellants, Doolan states that its
polyurethane associative thickeners "are shear thinning," i.e., exhibit a
decrease in viscosity under shear, whereas a Boger fluid "'is an elastic fluid
with a constant viscosity, meaning that its viscosity is independent of shear
rate or nearly so' (i-f [0002]; emphasis added)." (Id. at 4--5) We do not find
Appellants' argument persuasive.
First, as the Examiner noted, claim 1 does not require a Boger fluid,
but rather a composition "that exhibits Boger fluid behavior." (Ans. 3.)
Appellants' Specification explains that Boger fluids have more than one
rheological property, e.g., behavior. (Spec. i-f 16 ("'Boger-like fluid' as used
herein refers to any fluid that demonstrates one or more properties
characteristic of Boger fluids, such as one or more of the unique rheological
properties of such fluids." (Emphases added)).) One such behavior is a
"viscosity ( 11) that does not increase, or does not appreciably or significantly
increase, with increasing shear (y)." (Id.) Another such behavior is
"improved flow characteristics." (Spec. i-f 18.) Consequently, the prior art
need only teach or suggest a composition having the claimed polyurethane
that has improved flow characteristics in order to meet the behavior
requirements of claim 1. For the foregoing reasons, we do not find the
Examiner's position to be "completely at odds" with the application, as
argued by Appellants (Reply Br. 2).
5
Appeal2016-008440
Application 13/513,980
Even if it is true that Doolan's polyurethanes are shear thinning,
which as discussed below (p. 7) is not an established fact on the present
record, we note that Doolan also teaches that the polymers "provide both
good flow and leveling" (Doolan 1 :35-36) and can be used in both clear and
pigmented systems (Doolan 10:49-52). In light of these teachings, we agree
with the Examiner (Ans. 3--4) that Doolan's polyurethanes meet the
requirement of claim 1 of providing for a composition that "exhibits Boger
fluid behavior" by resulting in improved flow characteristics.
Furthermore, Appellants' Specification discloses that the polyurethane
polymers described in Doolan are associative thickeners that are within the
scope of the claimed polymers. (Spec. i-fi-121, 33.) Indeed, Doolan's
Examples 3 and 4 meet the reactant mixture requirements of claim 1 recited
as necessary to result in the polyurethane polymer of claim 1. (Doolan col.
11-12 (Example 3: reacting a polyethylene glycol with average molecular
weight 3440 g/mol with VEST ANAT TMDI and the branched alcohol Isofol
20 ("total carbon content of 20, i.e. C20"); Example 4: reacting a
polyethylene glycol with average molecular weight 4512 g/mol with
VEST ANAT TMDI and the branched alcohol Isofol 20); see also Spec. i126
(noting that Vestanat TMDI is an exemplary diisocyanate useful in the
preparation of the associative thickener.) Doolan's Specification provides
additional description of different reactants within the scope of Appellants'
claims that are suitable to make Doolan's described polyurethane associative
thickeners. (Doolan cols. 6-8.) Consequently, as the Examiner noted, the
thickeners described by Doolan would be expected to provide one or more
properties characteristic of a Boger fluid similar to an associative thickener,
as instantly claimed.
6
Appeal2016-008440
Application 13/513,980
Moreover, while Doolan does mention "shear thinning" with respect
to the associative thickeners described (Doolan 9:3-5; see Appeal Br. 4--5),
Doolan notes that this is a hypothesis as to the mechanism of the invention
described therein that is an interpretation of how the thickeners display
increased efficiency in a clear system coupled with improved flow and
leveling properties (Doolan 8:65-9: 13). Doolan does not provide testing of
viscosity of its thickeners over various shears, which would verify such a
hypothesis. Thus, we are not compelled to find as fact that Doolan's
associative thickener's are shear thinning, nor are we required to find as fact
that Doolan's associative thickeners achieve the good flow by the
hypothesized mechanism of action, contrary to Appellants argument (Reply
Br. 2-3).
We are presented with a record providing evidence that ( 1)
Appellants' Specification describes the same thickeners described by
Doolan, and indicates these are preferred associative thickeners for use in
the claimed composition, and (2) the claimed composition recites the use of
such associative thickeners in the composition in amounts of about 1 to
about 30%, which is a range that overlaps the range disclosed by Doolan
(about .05 to about 20%, Doolan 10:24--26) and described by Doolan to be
used to achieve good flow and leveling (Doolan 1: 35-36). In light of this
evidence, we conclude, as the Examiner did (see, e.g., Ans. 4--6), that the
fluid properties of Doolan's associative thickeners would be the same as
alleged by Appellants regarding the claimed thickeners.
Appellants contend that they have established surprising results of
achieving Boger-fluid rheology of nearly constant viscosity at different shear
rates at polyurethane concentrations as high as 4% and 5% (Example 1, Fig.
7
Appeal2016-008440
Application 13/513,980
1). (See, e.g., Appeal Br. 5---6.) We agree with the Examiner that
Appellants' showing does not establish non-obviousness. "[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art." In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Appellants'
Example I measures viscosity of Rheolate 288 in water at 4% and 5%
concentration when subjected to various shear rates. Appellants' Example in
the Specification does not provide a comparison to the closest prior art.
First, it appears that Rheolate 288 is a composition within the scope of
Doolan's described polyurethane associative thickeners. The Specification
indicates that Rheolate 288 is a prior art composition known to be used in
the paint industry, although it is noted that it "has not been used in the
cosmetic industry." (Spec. i-f 3.) That it has not been used in the cosmetic
industry does not, however, provide any information as to whether or not
Rheolate 288 is a composition described by Doolan, a reference that states
the thickeners disclosed can be used in a cosmetic composition that is
aqueous based as a thickener. (Doolan 10:49--57.) If Rheolate 288 is a
composition described by Doolan as we deem to be the case on this record,
we note that recognizing that this compound in water at a concentration of 4
or 5% (which is within the range disclosed to be used in Doolan) has nearly
constant viscosity when subjected to varying shear is insufficient to establish
non-obviousness. Baxter, 952 F .2d at 392 ("Mere recognition of latent
properties in the prior art does not render nonobvious an otherwise known
invention.").
Second, Appellants' Example 1 of the Specification does not provide
a comparison of a polyurethane thickener within the scope of the invention
8
Appeal2016-008440
Application 13/513,980
against a polyurethane thickener described by Doolan, which is the closest
prior art. Rather it simply reports the viscosity measurements for
compositions of Rheolate 288 in water at a concentration of 4 or 5% when
the compositions are subjected to various shear rates. Those results, thus, do
not establish that the composition is different rheologically than the
compositions described by Doolan.
In light of the foregoing, there is insufficient evidence to establish the
constant viscosity measured was not inherent to the Doolan associative
thickener or that the claimed invention exhibits some superior property or
advantage over the prior art.
Third, we agree with the Examiner (Final Action 14--15) that the
alleged evidence of unexpected results is not commensurate in scope with
the claimed invention. "Commensurate in scope" means that Appellants'
evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner
as the tested embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA
1972) ("Here, only one mixture of ingredients was tested .... The claims,
however, are much broader in scope, ... and we have to agree with the
Patent Office that there is no 'adequate basis for reasonably concluding that
the great number and variety of compositions included by the claims would
behave in the same manner as the [single] tested composition."'). In other
words, if an Appellants' claim is directed to a range of compositions and the
Examiner has established a prima facie case of obviousness as to that claim,
as is the case here, Appellants have the burden to demonstrate an unexpected
result for a data point within that range "and provide[] an adequate basis to
support the conclusion that other embodiments falling within the claim will
9
Appeal2016-008440
Application 13/513,980
behave in the same manner." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011 ). In light of the foregoing legal landscape, we disagree with
Appellants' premise that to find Appellants' results set forth in Figure 1 and
Example 1 are not commensurate in scope, "the Examiner must find it to be
unpredictable, in some manner" (Appeal Br. 5). Rather than show a basis
for unpredictability (Appeal Br. 6), the Examiner can find, instead, that
Appellants have failed to "provide an adequate basis to support the
conclusion that other embodiments falling within the claim will behave in
the same manner." Id. We conclude that Appellants have failed to provide a
basis to support a conclusion of unexpected Boger fluid behavior for the
wide range of polyurethanes within the scope of claim 1 and along the full
weight percent range of the claimed polyurethane associative thickener in
the composition (from about 1 to about 30%).
Moreover, though we do not find it necessary to provide a reason to
doubt Appellants' evidence is applicable across the full range claimed in
light of the Examiner's prima facie case of obviousness, we, nevertheless,
note that Appellants' own arguments about the state of the prior art provide a
basis for such doubt. In particular, Appellants state that "[ c ]onventionally,
Boger fluids are obtained only in very dilute polymer solution (e.g., about
0.08% by weight)." (Appeal Br. 4.) One might expect, therefore, at
concentrations well above 0.08% by weight polyurethane, e.g., lOo/o-30%
permitted by the claims, which is at least twice as large as the 4% and 5% by
weight polyurethane exemplified by Appellants, constant viscosity over
varying shear rates may very well be lost.
10
Appeal2016-008440
Application 13/513,980
For the foregoing reasons, Appellants do not persuade us that the
Examiner erred in rejecting claim 1 for obviousness over De La Poterie and
Doolan.
Appellants have not argued claims 3-6, 10-11, 15-16 and 24
separately. Thus, these claims fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claims 9 and 14
Appellants contend that the narrower range of polymer recited in
claims 9 and 14 is reasonably commensurate in scope with Appellants'
showing of unexpected results at 4 and 5% polymer by weight based on the
total weight of the composition. Appellants contend that the Examiner's
rejection of these claims is in error because the Examiner "has offered no
rationale as to why one skill in the art would not have expected the values
within a range of about 2-10% to share similar properties to the 4 % and 5%
values tested." (Appeal Br. 6.) We do not find this argument persuasive for
the reasons discussed above. In summary, we find the Examiner has made
out a proper prima facie case of obviousness and Appellants' evidence does
not establish the near constant viscosity results in the shear rate applicable to
applying mascara is not an inherent property of Doolan's disclosed
associative thickeners. Moreover, in attempting to overcome the Examiner's
prima facie case of obviousness based on secondary evidence of unexpected
results, Appellants had the initial burden of establishing an adequate basis to
support the conclusion that other embodiments falling within the claim
would behave in the same manner. It was not the Examiner's burden to
establish why one would not have expected the full range recited to have the
11
Appeal2016-008440
Application 13/513,980
same demonstrated results from the 4 and 5% of the specific associative
thickener tested by Appellants.
Claims 25-28
Appellants argue that the Examiner's continued rejection of claims
25-28 is in error because "the Examiner does not even address the
unexpected results with respect to these claims" which recite even narrower
ranges than claims 9 and 14, including 4% and 5% as a specific beginning
and/or end point of the range. (Appeal Br. 6-7.) We do not find Appellants'
arguments persuasive for at least the reason discussed above that Appellants
failed to establish the claimed rheological characteristic of constant viscosity
of varying shear rates applicable to application of mascaras is not an
inherent property of Doolan's associative thickeners, which are taught to be
useful in Doolan even in the narrower claimed ranges of claims 25-28.
Claims 2 and 12
"When the appellant fails to contest a ground of rejection to the
Board, ... the Board may treat any argument with respect to that ground of
rejection as waived." Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008).
Appellants have not addressed the Examiner's rejection of claims 2 and 12
based on De La Poterie, Doolan, and Reich. (Appeal Br. 14.) Thus, we
deem Appellants to have waived arguments directed to that rejection. We
therefore affirm the Examiner's rejection of claims 2 and 12 for the reasons
set forth above, and the additional reasons provided by the Examiner in the
Final Rejection at pages 10-11.
12
Appeal2016-008440
Application 13/513,980
SUMMARY
We affirm the rejection of claims 1, 3-6, 9-11, 14--16, and 24--28
under 35 U.S.C. § 103(a) as being unpatentable over De La Poterie and
Doolan.
We affirm the rejection of claims 2 and 12 under 35 U.S.C. § 103(a)
as being unpatentable over De La Poterie, Doolan, and Reich.
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
13