Ex Parte Malnou et al

Patent Trial and Appeal Board

Jul 19, 2013

10332814 (P.T.A.B. Jul. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALAIN MALNOU and FRANCISCO MARTINEZ
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Appeal 2011-009943
Application 10/332,814
Technology Center 1600
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 20, 22-25, 27-29, and
31-38 (App. Br. 2). Examiner entered rejections under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Real Party in Interest is Fiabila of Maintenon, France (App. Br. 1).
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STATEMENT OF THE CASE
The claims are directed to a nail polish composition and methods of
applying the nail polish composition. Claims 20 and 36-38 are
representative and are reproduced in the Claims Appendix of Appellants’
Brief.
Claims 20, 22, 24, 28, and 34-38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Castrogiovanni2 and
Lang.3,4
Claims 20, 22-25, 27-29, 31, and 34-38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Castrogiovanni and
Stanhope.5
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Castrogiovanni and either Lang or Stanhope in
combination with Socci.6

The combination of Castrogiovanni and Lang:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 Castrogiovanni et al., US 5,066,484, issued November 19, 1991.
3 Lang et al., US 2003/0023112 A1, published January 30, 2003.
4 Appellants’ statement of the “Grounds of Rejection to be Reviewed on
Appeal” incorrectly includes claim 26 as part of this rejection (App. Br. 6;
Cf. Ans. 4) (emphasis omitted).
5 Stanhope et al., US 6,583,207 B2, issued June 24, 2003.
6 Socci et al., US 6,740,314 B2, issued May 25, 2004.
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FACTUAL FINDINGS (FF)
FF 1. Castrogiovanni suggests a nail polish composition comprising, inter
alia, a nitrocellulose film forming component, a diester plasticizer
component, and a non-aromatic solvent component, wherein the nail polish
composition does not contain phthalate, camphor or aromatic solvent (Ans.
4-5; Castrogiovanni, Abstract; col. 1, ll. 40-45; col. 1, ll. 20-38; col. 5, ll. 19-
21 and 47-50).
FF 2. Castrogiovanni suggests that while nitrocellulose is the preferred
film-forming component, “[o]ther satisfactory film-forming components
include[, inter alia,] cellulose acetate butyrate, acrylics, … vinyls, [and] …
styrene/butadiene copolymers” (Castrogiovanni, col. 5, ll. 19-28).
FF 3. Castrogiovanni suggest that
[t]he film-forming component should be present in an amount
sufficient to provide a stable film upon the nail following the
application of the nail enamel to the nail, but not so high a
concentration that the nail enamel composition is unable to flow
freely onto a brush and from the brush onto the nail,
as well as, general amounts of the film-forming component that would be
expected to meet the foregoing requirements (id. at ll. 32-37; see also Ans. 6
(“Castrogiovanni discloses the specific amount of plasticizer to employ can
be readily ascertained to the nail enamel chemist, recognizing that too low
an amount of the compounds results in a lack of flexibility and/or adhesive
properties of the dried film, whereas too high an amount results in an overly
soft, slowly drying film”)).
FF 4. Examiner finds that Castrogiovanni fails to suggest a diester
plasticizer within the scope of Appellants’ claimed invention and relies on
Lang to make up for this deficiency in Castrogiovanni (Ans. 5).
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FF 5. Lang’s “ester compositions are useful primary plasticizers for homo-
and copolymers of vinyl chloride and other rigid organic polymers” (Lang 1:
¶ [0011]).
FF 6. Lang suggests that
[i]n addition to homo- and copolymers of vinyl chloride, other
types of polymers suitable for use with the present ester
compositions include but are not limited to thermoplastic
polymers such as cellulose ester polymers, polystyrene, and
chlorinated polyethylene, and elastomers such as polyacrylics,
styrene/butadiene copolymers and natural rubber.

(Lang 3: ¶ [0039]; see generally Ans. 9.)
FF 7. Lang suggests that “[t]he freezing point of the mixtures and the
efficacy of the present ester mixtures as plasticizers can be varied by
adjusting the type and molar ratio of the two types of acids used to prepare
the ester mixture” (Lang, Abstract).
ANALYSIS
Claim 20:
Based on the combination of Castrogiovanni and Lang, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious to utilize Lang’s diester in Castrogiovanni’s nail
polish composition (Ans. 5-6). In this regard, Examiner finds that
Castrogiovanni and Lang are interested in the use of diester plasticizers in
the preparation of polymeric films (id. at 8-9; FF 1-2, 5, and 6).
Appellants contend that Lang is not related to Castrogiovanni’s field
of endeavor (App. Br. 8). In this regard, Appellants contend that Lang is
directed to “plasticizers for organic rigid polymers,” while Castrogiovanni
“is focused on free flowing nail polish compositions which can be applied
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by brush and set up as a film, presumably at room temperature” (id. at 8-9).
We are not persuaded.
Castrogiovanni and Lang both suggest diester plasticizers for an
overlapping range of film forming components (see FF 1, 2, and 4-6; Cf.
Reply Br. 4). Therefore, we are not persuaded by Appellants’ unsupported
contention that “the categories of polymers cited in LANG would not have
incited a skilled person in nail enamel compositions to use the esters of
LANG as plasticizer with nitrocellulose” (Reply Br. 4). Further,
Castrogiovanni suggests that free flowing property of the nail polish
composition can be adjusted based on the concentration of the film forming
component (FF 3; Cf. Reply Br. 3 and 4-5).
We recognize, but are not persuaded by, Appellants’ contention that
“the data in Example 2, Table 2, suggests that some of the plasticizers may
not solidify at room temperature or are already solid at room temperature”
(App. Br. 10 (emphasis added)). Appellants fail to explain why a person of
ordinary skill in this art, interested in a plasticizer for Castrogiovanni’s nail
polish composition, would select those plasticizers from the scope of Lang’s
disclosure that would not suit Castrogiovanni’s intended purpose (see FF 7).
It is proper to “take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550
U.S. 398, 418 (2007). See also id. at 421 (“A person of ordinary skill is also
a person of ordinary creativity, not an automaton.”).

Claims 36-38:
We recognize Appellants separate arguments with respect to claims
36-38 (App. Br. 9-12). Each separate argument, however, sets forth the
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same contention, specifically that since Castrogiovanni and Lang “are not
related to the same field of endeavor, there would have been no reason to
utilize the diesters of LANG in CASTROGIOVANNI” (id. at 10-12). We
are not persuaded for the reasons set forth above.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 20 and 36-38 under 35
U.S.C. § 103(a) as unpatentable over the combination of Castrogiovanni and
Lang is affirmed. Claims 22, 24, 28, 34, and 35 are not separately argued
and fall with claim 20.

The combination of Castrogiovanni and Stanhope:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 8. Examiner relies on Castrogiovanni as discussed above (Ans. 6; see
also FF 1-3).
FF 9. Examiner finds that Castrogiovanni fails to suggest a diester
plasticizer within the scope of Appellants’ claimed invention and relies on
Stanhope to make up for this deficiency in Castrogiovanni (Ans. 7).
FF 10. Castrogiovanni suggests that the solvent component of the nail
polish composition
should be inert to the user’s nail and to other components of the
nail enamel composition, should be capable of dissolving or
dispersing the other components of the nail enamel allowing the
components to flow onto the nail, and should be able to
evaporate from the nail in a matter of minutes at room
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temperature and pressure. Examples of preferred solvents
include toluene, isopropanol, butyl acetate, ethyl acetate, glycol
ethers, N-methyl pyrrolidone, alkyl lactates, and mixtures
thereof.
(Castrogiovanni, col. 5, ll. 41-50.)
FF 11. Stanhope’s “liquid ester compositions … are particularly suitable
plasticizers for aqueous polymer compositions useful as adhesives” and,
inter alia, “polishes for a variety of applications” (Stanhope, col. 1, ll. 16-18
and col. 5, ll. 11-14).
ANALYSIS
Based on the combination of Castrogiovanni and Stanhope, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious to utilize Stanhope’s diester in Castrogiovanni’s
nail polish composition (Ans. 7). Appellants contend that “[t]he nail
polishes of CASTROGIOVANNI … are solvent based compositions” and
“[t]here is no indication in STANHOPE that the dibenzoate molecule can
plasticize nitrocellulose in a solvent composition” (App. Br. 15; see also FF
9). In response, Examiner asserts that Stanhope “is not limited to only
aqueous formulations” (id. at 9; Cf. FF 10; App. Br. 14). Examiner fails,
however, to identify an evidentiary basis in Stanhope that supports
Examiner’s assertion that Stanhope suggests the use of a diester plasticizer
within the scope of Appellants’ claimed invention in a solvent based
composition, such as that suggested by Castrogiovanni. Therefore we are
compelled to reverse Examiner’s rejection of Appellants’ composition
claims. Since Appellants’ method claims require the use of Appellants’
composition we are compelled to reverse the rejection of Appellants’
method claims for the same reasons set forth above.
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CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 20, 22-25, 27-
29, 31, and 34-38 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Castrogiovanni and Stanhope is reversed.

The combination of Castrogiovanni and either Lang or Stanhope in
combination with Socci:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 12. Examiner relies on Castrogiovanni, Lang, and Stanhope as discussed
above (Ans. 7; see also FF 1-10).
FF 13. Examiner finds that the combination of Castrogiovanni with either of
Lang or Stanhope fails to suggest “the use of the specific additional
modifying resins” required by Appellants’ claims and relies on Socci to
make up for this deficiency (id. at 7-8; see also id. at 10 (“Socci is relied on
for the teaching of resins useful in a nail polish composition and not for the
teaching of plasticizers”)).
ANALYSIS
Based on the combination of Socci with Castrogiovanni with either of
Lang or Stanhope, Examiner concludes that
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to have incorporated the
additional modifying resins as disclosed by Socci into the
combinations of Castrogiovanni in view of Lang and
Castrogiovanni in view of Stanhope since Socci disclosed using
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additional solvents provides composition having enhanced
appearance.
(Ans. 8.)
Having found no deficiency in the combination of Castrogiovanni and
Lang, we are not persuaded by Appellants’ contention that Socci fails to
make up for the foregoing deficiencies in the combination of Castrogiovanni
and Lang (App. Br. 22).
We agree, however, that Examiner’s reliance on Socci to suggest
“resins useful in a nail polish composition,” fails to make up for the
Examiner’s failure to identify an evidentiary basis in Stanhope that supports
Examiner’s assertion that Stanhope suggests the use of a diester plasticizer
within the scope of Appellants’ claimed invention in a solvent based
composition, such as that suggested by Castrogiovanni (see Ans. 9).
Accordingly, we are compelled to reverse the rejection over the combination
of Castrogiovanni, Stanhope, and Socci.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to the combination of
Castrogiovanni, Lang, and Socci. The rejection of claim 32 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Castrogiovanni, Lang, and
Socci is affirmed. Claim 33 is not separately argued and falls with claim 32.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to the combination of
Castrogiovanni, Stanhope, and Socci. The rejection of claims 32 and 33
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Castrogiovanni, Stanhope, and Socci is reversed.

Appeal 2011-009943
Application 10/332,814

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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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