Ex Parte PENG et al

Patent Trial and Appeal Board

Nov 13, 2018

14515169 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/515,169 10/15/2014
23599 7590 11/15/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
QinyunPENG
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.
EMIP-0066-CO 1-DO 1 5720
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QINYUN PENG and PHILIP LINZ
Appeal2017-009317
Application 14/515,169
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2,3 under 35 U.S.C. § 134 involving claims to a
cosmetic powder composition. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 Appellants identify the Real Party in Interest as MERCK PA TENT
GMBH, a subsidiary of MERCK KGAA (see App. Br. 1 ).
2 We have considered and herein refer to the Specification of Mar. 24, 2015
("Spec."); Final Office Action of Apr. 15, 2016 ("Final Act."); Appeal Brief
of Dec. 19, 2016 ("App. Br."); Examiner's Answer of Apr. 21, 2017
("Ans."); and Reply Brief of June 21, 2017 ("Reply Br.").
3 This application is related to US 12/171,969, Appeal 2015-004454, where
the Examiner's rejection was affirmed (see App. Br. 1).
Appeal2017-009317
Application 14/515, 169
Statement of the Case
Background
The "eye-catching color travel pigments of normal particle sizes ( 1-80
µm) is not readily visible in cosmetic powder products or upon application
on the skin when a relatively low concentration of the pigments was used"
(Spec. 1 ). The Specification teaches that "using large particle size color
travel pigments, it is possible to achieve the color travel effect on the skin
using powder applications and the like without using high concentrations of
the pigments, unlike their normal particle size counterparts" (id.).
The Claims
Claims 1-24 are on appeal. Independent claims 1, 16, and 20 are
representative and read as follows:
1. A cosmetic powder composition comprising flake-form
pigments having a color travel effect, wherein said composition
contains a sufficient amount, about 1-30% by weight, of large
particle size color travel pigments having a D50 particle size of
at least 40 µm up to about 150 µm to retain the color travel
effect upon application to skin.
16. A flake-form color travel pigment having a D50 particle
size of at least 40 µm up to about 150 µm.
20. A cosmetic composition comprising pigments having a
color travel effect, wherein said composition contains a
sufficient amount of large particle size color travel pigments
having a D50 particle size of at least 40 µm up to about 150 µm
to retain the color travel effect upon application to skin.
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Application 14/515, 169
The Issues 4
A. The Examiner rejected claims 16-24 under 35 U.S.C.
§ I03(a) as obvious over Rona5,6 and Meyer7 (Final Act. 3-5).
B. The Examiner rejected claims 1-15 under 35 U.S.C.
§ I03(a) as obvious over Rona, Schmidt,8 and Meyer (Final Act. 5---6).
Because these rejections substantially rely upon the same prior art and
depend upon the same issues, and Appellants only separately argue claim 20
(see App. Br. 8), we will consider these rejections together.
The Examiner finds "Rona discloses Xirona Color Travel Pigments"
(Final Act. 3). The Examiner finds Rona "teaches that choosing a right
particle size affects different coloring effects, and states, 'larger sized
particles (> 100 microns) create high luster effects, either sparkling or
glittering, combined with very high brilliancy and transparency[']" (id.).
The Examiner finds that
given the teaching on the specific visual effects of travel
pigments having large particle size, optimization of the
concentration of such particles to obtain an expected outcome
4 The provisional obviousness-type double patenting rejection over US
12/171,969 is moot in view of the abandonment of that application on Feb.
27, 2017.
5 Rona, Basics of Success, Ingredients for Cosmetics, Merck, published July
2004 ("Rona").
6 We note that based on the quoted text the Examiner clearly relied upon the
April 2004 Rona document originally cited in an PT0-892 dated July 16,
2009 in the parent application US 12/171,969, not the July 2004 Rona
document cited in the PT0-1449 filed May 22, 2015 by Appellants.
7 Meyer et al., US 6,605,235 Bl, issued Aug. 12, 2003 ("Meyer").
8 Schmidt et al., US 2004/0052743 Al, published Mar. 18, 2004
("Schmidt").
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Application 14/515, 169
would have been obvious to one of ordinary skill of the art.
The skilled artisan would have had a reasonable expectation of
successfully producing a collection of large sized particles as
manipulating the particle size distribution, by sieving, for
example, is a well-known technique. See Meyer, col. 29, lines
47-53.
(Final Act. 4--5).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the prior art renders claim 16
obvious?
Findings of Fact
1. The Specification teaches "'large particle size' pigments are
defined as having a median particle size (D50) of 40 µm or higher,
preferably 60 µm or higher" (Spec. 1 ).
2. The Specification teaches the "desired particle sizes of the
pigments are obtained by conventional methods, e.g. sieving or
sedimentation" (Spec. 7).
3. Rona teaches:
Xirona® Color Travel Pigments
(Rona 1).
• Color changing effects depending on the viewing angle
• Interference pigments based on mica or silica coated with
titanium dioxide or iron oxide
4. Rona teaches:
Different coloring effects can be achieved by the right choice of
pearl luster pigments depending on their particle size. Small
particles ( < 15 µm) create silky and satin effects and will
opacify the mass. They enhance the hiding power of
formulations and provide a high coverage as well. Larger sized
particles (> 100 µm) create high luster effects, either sparkling
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Application 14/515, 169
or glittering, combined with very high brilliancy and
transparency.
(Rona 2).
5. Rona teaches:
!Mgt i:rnrtides -> good rd'kdhln -> rnaxitmim 11.i\ter
sm~i!I partk!es -> m,my H1Jht :-nitt,!dnq c~nters -> rnaidmwn hidi!1g
S - 75 µ rn
10- L!S pm
(Rona 3).
6. Meyer teaches that cosmetic material such as "pigments can
subsequently be classified in order to narrow the particle-size distribution,
for example by means of a sieving process" (Meyer 29:51-53).
7. Schmidt teaches cosmetics with pigments within the range of 1
to 30 % by weight (see Schmidt ,r 76).
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Application 14/515, 169
Principles of Law
"If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3-5; FF 1-7) and agree that
claims 1, 16, and 20 are rendered obvious by Rona and Meyer (with Schmidt
for claims 1-15). We address Appellants' arguments below.
Appellants contend that:
both the present Office Actions and the decision in the co-
pending application erroneously interpret "particle size" as that
value is used in the Rona reference to be coextensive with D50 .
It is again emphasized that particle size does not correlate to
particle size distribution, not even median distribution D50 . The
only time when the particle size and particle distribution would
be the same is when the distribution is symmetrical. However,
this is not the case in many particle distributions. It is for this
reason that the commercial Rona pigments as demonstrated in
the Declaration under 37 CPR§ 1.132 (filed November 23,
2015), do not have a D50 which is the same as their particle
"size" as disclosed in the reference. Modification of the
particle size is taught in Rona, but contrary to the conclusion in
the Office Actin [sic] and the decision of the PT AB, modifying
the height of the peak does not suggest modifying the particle
size distribution, e.g., Dso in an organized, coherent or
understood manner. Changing the particle size itself may
change the distribution, but if the distribution is asymmetrical
and skewed towards the lower end, reducing the particle size
would actually increase the D50 since in that case more particles
would be above the mean.
(App. Br. 3--4).
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Application 14/515, 169
We do not find this argument persuasive for several reasons. First,
claims 1 and 16 do not recite the word "distribution" but simply refer to a
"D50 particle size of at least 40 µm up to about 150 µm" (see, e.g., Claim
16). Therefore, the argument is not directed at a limitation that actually
appears in the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
("[A]ppellant's arguments fail from the outset because ... they are not based
on limitations appearing in the claims.").
Second, the Specification does not support Appellants' interpretation
of the claim as requiring a "distribution" because the Specification defines
"large particle size" as a particular "median particle size" (FF 1 ), not a
particular size distribution.
Third, Rona expressly recognizes that specific ranges of particle sizes
that are reasonably understood as a distribution of particles, have different
effects in cosmetic applications (FF 5). For example, Rona explains that
particle size distributions between 5 and 25 µm have strong hiding power
while particle sized in distributions between 20 and 150 µm are transparent
(FF 5).
Fourth, Meyer evidences that the ordinary artisan was aware that
specific particle size distributions were obtainable by sieving (FF 6).
Meyers specifically explains that "pigments can subsequently be classified
in order to narrow the particle-size distribution, for example by means of a
sieving process" (FF 6).
Thus, in this obviousness analysis, the ordinary artisan interested in
obtaining particular effects regarding luster or hiding power would have
recognized that the particle size distributions represent a results optimizable
variable as expressly demonstrated by Rona (FF 4, 5) and Meyer (FF 6). See
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In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) ("The
mere fact that multiple result-effective variables were combined does not
necessarily render their combination beyond the capability of a person
having ordinary skill in the art."). Here, Rona establishes reasons to
optimize particle size, stating "[ d]ifferent coloring effects can be achieved
by the right choice of pearl luster pigments depending on their particle size"
(FF 4) and Meyer, as discussed above, teaches to control the particle size
distribution (FF 6).
Appellants contend that:
the present D50 range of 40-150 µm is comparatively narrow
inasmuch as 50% of the particles must be above the D50, and
50% below. The size range of Rona could have the 50%
dividing line anywhere within the stated range, and thus, as
shown, a Dso well outside the claims.
(App. Br. 4). Appellants contend a "median value, defined as the value
where half of the particle population resides above the point, and half resides
below the point, is called a 'Dso'. See Horiba, at page 3" (App. Br. 3).
We find this argument unpersuasive for several reasons. First, as
already noted, claims 1 and 16 do not recite a specific size distribution. The
Horiba9 discussion of median particle size demonstrates that multiple
different median values may be calculated, as Horiba teaches "Dv50 ( or
Dv0.5) is the median for a volume distribution, Dn50 is used for number
distributions, and Ds50 is used for surface distributions" (Horiba 3). Neither
9 Horiba Scientific, Understanding and Interpreting Particle Size
Distribution Calculations, http://www.horiba.com/scientific/products/
particle-characterization/ education/ general-information/ data-
interpretation/understanding-particle-size-distribution-calculations/
(accessed Sept. 13, 2016).
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Application 14/515, 169
the Specification nor the claims identify whether the median used is a
"volume distribution," a "number distribution," or a "surface distribution."
Consequently, to the extent that Horiba provides a general teaching,
consistent with the Specification (FF 1) that the word median has its
ordinary meaning of a midpoint of a frequency distribution of observed
values, we agree. However, to the extent that Appellants contend this
distinguishes the ranges of Rona, which specifically overlap the claimed D50
ranges, we are not persuaded. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) ("A prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art."). Appellants provide no evidence that a Dso range of Rona using the
particle size range chart disclosed by Rona (FF 5), would not fall within the
range claimed.
Moreover, the instant rejection is for obviousness, not anticipation.
Thus, the issue is not whether Rona teaches a specific composition
anticipating the Dso particle size required by claim 1 but rather whether Rona
when combined with Meyer renders the recited D50 particle size obvious as a
matter of routine optimization (FF 3-5). As already noted, we conclude that
it does. Appellants provide no evidence of a secondary consideration that
overcomes the Examiner's prima facie case of obviousness.
Appellants contend that:
the teaching of values in Rona, even though the particle size is
given, does not teach one of ordinary skill in the art to modify
the distribution ... what Rona actually teaches is that large
particles have a good reflection and maximum luster and that
small particles have many light scattering centers and
maximum hiding .... The present invention is not desirous of
obtaining sparkling or glittering effects by the use of larger size
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particles, but to provide cosmetic compositions having color
travel effects.
(App. Br. 5). Appellants contend that "[b ]y the use of tailor-made color
travel pigments which have a particle size distribution D50 of 40 µm or
higher it is possible to obtain a readily visible color travel effect even at low
concentrations due to the higher hiding power" (id.).
We are not persuaded because Rona expressly teaches "color travel
pigments" (FF 3) (emphasis omitted) and provides specific guidance
regarding tradeoffs between gloss and hiding effect based upon particle size
(FF 4). Thus, the ordinary artisan would have been aware, based on Rona,
of the elements necessary to select gloss or hiding effect as well as the
elements necessary to obtain a color travel pigment (FF 3). Rona neither
teaches away nor renders unobvious any specific particle size distribution.
To the extent that Appellants are contending that there is an improvement in
the color travel effect, Appellants provide no evidence whatsoever of any
such improvement relative to Rona. See In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995) ("'It is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements ... [do] not
suffice."'). In addition, Appellants do not compare their compositions with
the closest prior art nor provide any of the other data necessary to establish
an unexpected result. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.").
Appellants contend that "from the Rona reference a person skilled in
the art was not able to choose the right particle size distribution to achieve
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Application 14/515, 169
the present effects" (App. Br. 6). Appellants contend "Meyer does not
provide any information which ranges of the particle size distribution are
necessary in order to obtain highly improved cholesteric pigments with a
high hiding power" (id.).
We do not find these arguments persuasive. First, Appellants'
argument that selection of particle sizes for a color travel effect taught by
Rona (FF 3) within the particle size range expressly taught by Rona (FF 5)
would not have been within the ability of the artisan to routinely optimize
represents attorney argument without evidentiary basis. However, "attorney
argument [is] not the kind of factual evidence that is required to rebut a
prima facie case of obviousness." In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997). This argument is also effectively rebutted by Rona's teaching
that effects "can be achieved by the right choice of pearl luster pigments
depending on their particle size" (FF 4 ). Rona is directly suggesting
optimization based on particle size, recognizing that coloring effects may be
"achieved by the right choice of pearl luster pigments depending on their
particle size" (FF 4 ).
Claim 20
Appellants contend "[ fJrom the presentation of Dr. Peng ... it was not
at all obvious that large particles are suitable for cosmetic applications due
to their less smooth skin feeling and limited or lessened hiding power" (App.
Br. 8). Appellants contend "it is not at all obvious to find the right particle
size distribution for color travel pigments" (id.).
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We find this argument unpersuasive. The Peng Declaration10 does not
provide specific evidence comparing skin feel with particular particle size
distributions, instead simply stating "the discovery that color travel pigments
having a D50 value that is comparatively large, i.e., greater than 60 microns,
would be suitable for cosmetics ... is highly unexpected" (Peng Deel. 2). In
addition, Appellants provide no persuasive evidence of any unexpected
result regarding skin feel and particle size. No comparison with specific
products of Rona or other prior art references is provided in the Peng
Declaration. See In re Baxter Travenol Labs., 952 F.2d at 392.
No supporting evidence, only PowerPoint slides presenting summary
information, is provided by the Peng Declaration. We therefore find the
Declaration unpersuasive of unexpected results. See In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroborations
warrants discounting the opinions expressed in the declarations.").
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
prior art renders claims 1, 16, and 20 obvious.
SUMMARY
In summary, we affirm the rejection of claims 16 and 20 under
35 U.S.C. § 103(a) as obvious over Rona and Meyer. Claims 17-19 and 21-
24 fall with claims 16 and 20.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Rona, Schmidt, and Meyer. Claims 2-15 fall with claim 1.
10 Declaration of Dr. Qinyun Peng, dated Dec. 2, 2013.
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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
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