Ex Parte Motornov et al

Patent Trial and Appeal Board

Nov 30, 2018

14343979 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/343,979 03/10/2014 Mikhail Motornov
22850 7590 12/04/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
427677US99PCT 5311
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKHAIL MOTORNOV, HY SI BUI, JEAN-THIERRY
SIMONNET, and CHRISTOPHER PANG
Appeal2017-007692
Application 14/343,979 1
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a water-
in-oil emulsion. The Examiner rejected the claims on appeal under
35 U.S.C. § 103(a) as obvious.
We affirm.
1 According to Appellants, the real party in interest is L'Oreal. App. Br. 1.
Appeal2017-007692
Application 14/343,979
STATEMENT OF THE CASE
The Specification identifies key traits of cosmetic compositions,
including "long wear," "low cost," "transfer resistance, water resistance,
wear comfort," and the ability to "maintain a fresh look throughout the day."
Spec. ,r 3. "These properties are generally dependent on the properties of
silicone resins and silicone elastomers that are typically used but have
negative drawbacks such as high costs and formulation difficulties,
particularly with water." Id. "High water content make up products with a
possibility to encapsulate actives [are] beneficial and can provide additional
skin hydration." Id.
The Specification discloses that it was known that the "[w]ater-
insoluble reaction product of a polyamine (polyethylemeimine (PEI)) and an
oil-soluble polar modified polymer" had a "maximum water content of up to
45%" and that exceeding that amount "resulted in emulsion separation." Id.
,r 5.
The Specification discloses "emulsions comprising a water-in-oil
(W/0) emulsion comprising at least one oil-soluble polar modified polymer
and at least one polylysine" with "improved properties and characteristics
such as, for example, stability, increased long wear and anti-smudging." Id.
,r 2. According to the Specification, "[i]t has been surprisingly discovered
that the above-described compositions/emulsions are stable over time (little
or no separation and/or creaming), even if a high amount of water is
present." Id. ,r 16. Because these compositions use "a polylysine instead of
PEI, W/0 emulsions with a high water content can be achieved." Id. As a
result, "[t]he emulsions are stable over time, with little or no separation
and/or creaming" and when they are applied to keratinous materials they
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Application 14/343,979
produce films that "are water- and oil-resistant, and have nice texture and
pleasant feel." Id.
Claims 1, 6-9, 11, 12, 14, and 18 are on appeal. Claim 1, the only
independent claim, is illustrative and reads as follows:
1. An emulsion comprising a water-in-oil emulsion
compnsmg:
(a) 45% to 90% water based on the total weight of the
composition;
(b) a half-acid, half amide crosslinked, water-insoluble
reaction product comprising
App. Br. 8.
(i) at least one polylysine; and
(ii) at least one low carbon oil-soluble polar
modified polymer comprising at least one C2-C4
monomer and modified with at least one maleic
anhydride unit, and having a weight-average molecular
weight of less than or equal to 25,000 g/mol and a
melting point above 7 5QC.
The Examiner rejected claims 1, 6-9, 11, 12, 14, and 18 under 35
U.S.C. § 103(a) as obvious over the combination of Bui2 and Luengo. 3
ANALYSIS
Appellants argue claims 1, 6-9, 11, 12, 14, and 18 together. We
designate claim 1 as representative.
Bui discloses compositions that may be used as a hair colorant, styling
agent, and/or mascara. Bui ,r,r 15-17. In rejecting claims 1, 6-9, 11, 12, 14,
and 18 as obvious, the Examiner found the Bui disclosed a "water-in-oil
2 Bui et al., US Patent Publication No. 2011/0150806 Al, published June 23,
2011 ("Bui").
3 Luengo et al., US Patent Publication No. 2010/0092416 Al, published Apr.
15, 2010 ("Luengo").
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Appeal2017-007692
Application 14/343,979
emulsion comprising water ... a polyamine ... , and ... an oil-soluble polar
modified polymer." Final Act. 4. The Examiner found that "the oil-soluble
polar modified polymer is reacted with the polyamine compound in the
presence of water to form a reaction product." Id. The Examiner also found
that Bui taught that the "polyamine has at least two amine groups and may
comprise lysine," but acknowledged that Bui did not "explicitly teach that
the polyamine is polylysine." Id. at 4, 5.
According to the Examiner, "[t]his deficiency is made up for by the
teachings of Luengo." Id. at 5. Luengo discloses compositions "for the
treatment of keratin materials ( e.g. skin, hair, lip, nail, eyelashes) comprising
a polymer having a polymer backbone comprising amino acid monomer
units ... wherein the polymer backbone may be a homopolymer, of
polylysine type, especially poly(E-lysine), poly(a-lysine), poly(L-lysine),
poly(D-lysine ), [and] poly(D,L-lysine )." Id. The Examiner found that
Luengo teaches that "polyamino acid polymers may allow protection and
repair of keratin materials, especially damaged keratin materials, to impart
gloss and anti-breakage effect to keratin materials." Id.
Based on the combined teachings of Bui and Luengo, the Examiner
concluded that it would have been obvious to combine the teachings of Bui
and Luengo because:
Both of the compositions are useful for hair, skin and eyelashes
and one of ordinary skill would have been motivated in order to
provide the benefits of protection and repair of keratin materials
to impart gloss and anti-breakage effect to keratin materials, as
taught by Luengo et al. and good smudge resistance, good
volumizing properties, good curling properties, and good curl
retention properties as taught by Bui et al.
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Application 14/343,979
Id. More specifically, the Examiner concluded that it would have been
obvious to "select the polylysine of Luengo et al. for use in the composition
of Bui et al" because "Bui et al teach polyamines comprising lysine" and the
skilled artisan would have "been motivated ... to obtain the benefits of
keratin protection and gloss taught by Luengo." Id. at 6.
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art and agree that the claims are obvious over
Bui and Luengo. We address Appellants' arguments below.
Appellants argue that the claimed emulsion represents an
improvement over Bui's "compositions containing polyethyleneimine
('PEI') and an oil-soluble polymer in a reaction product." App. Br. 3. More
specifically, Appellants contend that the claimed emulsion contains
polylysine in place of PEI and, as a result of this difference, the claimed
emulsions are stable when water content is above 45% (as claimed) while
Bui's emulsions are unstable when water content is above 45%. App. Br. 3-
4; Mortonov Decl. 4 ,r,r 3-10. Appellants argue that these results are
"sufficiently unexpected to overcome the asserted prima facie case of
obviousness." App. Br. 6. We are not persuaded.
Appellants argument is premised on the assumption that Bui is limited
to compositions containing PEI. We do not read Bui so narrowly. While
Bui does disclose compositions in which the polyamine is PEI, Bui also
discloses that the polyamine may include "polymers based on amino acids
containing a basic side chain (preferably selected from proteins and peptides
comprising at least 5%, preferably at least 10% of amino acids selected from
4 Declaration of Mikhail Mortonov Under 37 C.F.R. § 1.132, dated January
21, 2016 ("Mortonov Deel.").
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Appeal2017-007692
Application 14/343,979
histidine, lysine and arginine). Bui ,r 88 ( emphasis added). Bui also states:
"Preferably, the amount of polyamine compound reacted with the oil-soluble
polar modified polymer is such that at least two amine groups on the
polyamine compound react with the oil-soluble polar modified polymer ... "
Id. ,r 90. Thus, while Bui does not specifically disclose the use of
polylysine, it encompasses compositions in which its polyamine is
polylysine.
In addition, Bui discloses that its compositions may comprise water
content in excess of 45%. Specifically, Bui discloses:
Preferably, compositions of the present invention comprise
sufficient water to form a water-in-oil emulsion. Preferably,
compositions of the present invention comprise from about 5%
to about 80% water, more preferably from about 15% to about
60% water, and more preferably from about 20% to about 50%
water by weight with respect to the total weight of the
composition, including all ranges and subranges there between.
Bui ,r 13 0 ( emphasis added). Appellants discount this disclosure arguing
that "[t]o the extent Bui suggests high-water content compositions could be
formed, one of ordinary skill in the art would recognize that such high water
content would most likely be compositions having a continuous aqueous
phase ( e.g., 0/W emulsion) rather than a composition having a continuous
oil phase." App. Br. 5. Appellants assert that "Bui never states that high-
water content W /0 emulsions can be formed." We are not persuaded
because, as reflected in the above quoted passage, Bui expressly discloses
that its "water-in-oil" have the recited water content. Bui ,r 130.
Moreover, even if we were to find that the compositions of Bui are
unstable when water content is above 45%, and even if we were to find the
stability provided by the polylysine composition described in the Mortonov
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Appeal2017-007692
Application 14/343,979
Declaration to be unexpected, the evidence of unexpected results is not
commensurate with the scope of the claims. As the Examiner explains, the
claims "are not limited to an amount or ratio of the reaction product (b ),
polylysine (i), or low carbon oil-soluble modified polymer (ii)." Ans. 4--5.
In contrast, the results described in the Mortonov Declaration provide
comparative testing of a single composition within the scope of the claims.
See, Mortonov Deel. i-fi13-10. Accordingly, we agree with the Examiner that
"[t]he claims are much broader than the data provided." Id. at 5. Further,
the claims do not exclude the presence of a surfactant or emulsifier, which
the Examiner notes may provide stability to the composition. Id. at 4. The
results described in the Mortonov Declaration thus do not provide persuasive
evidence that the claimed emulsion would have been non-obvious when
considered as a whole with the Examiner's prima facie case.
Accordingly, we affirm the Examiner's rejection of claim 1. Because
they were not argued separately, claims 6-9, 11, 12, 14, and 18 fall with
claim 1.
SUMMARY
For the reasons set forth herein, and those set forth in the Examiner's
Answer and Final Office Action, we affirm the Examiner's rejection of
claims 1, 6-9, 11, 12, 14, and 18 under 35 U.S.C. § 103(a) as obvious over
the combination of Bui and Luengo.
AFFIRMED
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