Ex Parte Pistorio et al

Patent Trial and Appeal Board

Feb 13, 2019

13651732 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/651,732 10/15/2012
61275 7590 02/15/2019
The Marbury Law Group, PLLC
11800 Sunrise Valley Drive
15THFLOOR
Reston, VA 20191
FIRST NAMED INVENTOR
Bradford Joseph Pistorio
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.
4000-570US 5868
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/15/2019 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):
ptonotices@marburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADFORD JOSEPH PISTORIO,
JEAN-THIERRY SIMONNET, JIM M. SINGER, and HENRI SAMAIN
Appeal2017-006828
Application 13/651,732
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2,3 under 35 U.S.C. § 134(a) involving claims to an
aqueous wax dispersion. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b ). We reverse.
1 Appellants identify the Real Party in Interest as L'OREAL (see App. Br.
2).
2 We have considered and herein refer to the Specification of Oct. 15, 2012
("Spec."); Non-Final Office Action of Apr. 7, 2016 ("Non-Final Act.");
Appeal Brief of Sept. 7, 2016 ("App. Br."); Examiner's Answer of Jan. 27,
2017 ("Ans."); andReplyBriefofMar. 27, 2017 ("Reply Br.").
3 An oral hearing was held on February 7, 2019.
Appeal2017-006828
Application 13/651,732
Statement of the Case
Background
"[W]axes are highly desirable in cosmetics and personal care products
... in order to provide properties such as shine, smoothness, and slipperiness
to various types of surfaces, as well as a protective coating against external
factors such as exposure to water or moisture and physical rubbing" (Spec.
,r 3). "[T]he formulation of waxes, polymers, resins and oils in various
galenic forms such as sprays, foams, emulsions, gels, mousses, pastes and
sticks may pose a challenge" (id. ,r 4 ). The Specification teaches "a wax
dispersion comprising wax particles ... wherein the wax dispersion can be
employed in various galenic forms" (id. ,r 9).
The Claims
Claims 1-13, 18, 20, 22-30, 32, and 62---65 are on appeal. Claim 1 is
representative and is reproduced below:
1. An aqueous dispersion comprising:
(a) at least one solid wax particle having a particle size
ranging from equal to or greater than 1 micron to about
100 microns and comprising at least one wax having a
melting point of greater than 35°C and up to about 70°C;
(b) from about 1 % to about 5% by weight, based on the
total weight of the aqueous dispersion, of a surfactant
mixture comprising:
(i) at least one nonionic surfactant; and
(ii) at least one ionic surfactant comprising at least one
anionic surfactant chosen from acyl glutamates, alkyl
sulfates and their salts, alkyl ether sulfates and their
salts, acyl glutamates, alkyl ether carboxylates, and
mixtures thereof and present in an amount of from
about 5% to about 30% by weight, based on the total
weight of the surfactant mixture; and
(c) water.
2
Appeal2017-006828
Application 13/651,732
The Issues
A. The Examiner rejected claims 1-13, 18, 20, 22-29, 32, and 62---65
under 35 U.S.C. § I03(a) as obvious over Pays '248, 4 MicroEase, 5
Ajinomoto, 6 and Pays '447 7 (Non-Final Act. 3-8).
B. The Examiner rejected claims 1-13, 18, 20, 22-30, 32, and 62---65
under 35 U.S.C. § I03(a) as obvious over Pays '248, MicroEase, Ajinomoto,
Pays '447, and Pays '656 8 (Non-Final Act. 8-9).
C. The Examiner provisionally rejected claims 1-13, 18, 20, 22-30, 32
and 62---65 on the ground of nonstatutory obviousness-type double patenting
as being unpatentable over claims 1-59 and 63---66 of copending Application
No. 14/251,373 (Non-Final Act. 14--15).
A. 35 US.C. § 103(a) over Pays '248, MicroEase, Ajinomoto, and Pays
'447
The Examiner finds Pays '248 teaches
cosmetic compositions for coating a substrate ( e.g. paragraph
0002-0005), comprising wax particles having a particle size
most preferably ranging from 5 to 10 microns ( e.g. paragraph
0177) and comprising at least one wax having a melting point
of greater than or equal to 45°C or greater than or equal to 50°C
( e.g. paragraph O 151 ); and a surfactant mixture comprising at
least one nonionic surfactant and at least one ionic surfactant
and no amphoteric surfactant ( e.g. paragraph 0099).
4 Pays et al., US 2006/0130248 Al, published June 22, 2006.
5 Microease Technical Data sheet, Micro Powders, Inc. (2012).
6 Ajinomoto product list, http:www.ajichem.com/en/products/
product-list.aspx 1--4 (accessed Aug. 8, 2013).
7 Pays et al., US 2004/0091447 Al, published May 13, 2004.
8 Pays et al., US 2005/0031656 Al, published Feb. 10, 2005.
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Appeal2017-006828
Application 13/651,732
(Non-Final Act. 4). The Examiner finds Pays '248 teaches "the total
surfactant concentration is most preferably 1.5 to 10% by weight relative to
the total weight of the composition ( e.g. paragraph 0065)" (id.). The
Examiner finds Pays '248 teaches "compositions comprising water and
organic solvents as the carrier" (id. at 5).
The Examiner acknowledges that while Pays '248 "describes the
combination of an ionic and nonionic surfactant, they do not provide a
concentration range or ratio for either individually. Pays '248 do not teach
that (b) (ii) is present in an amount of from about 5% to about 30% by
weight" (Non-Final Act. 5).
The Examiner finds Pays '44 7 teaches cosmetic compositions
"comprising wax particles ( e.g. paragraph 0066) and a surfactant mixture
comprising at least one nonionic surfactant and at least one ionic surfactant"
where "the nonionic surfactant is preferably 0.5-10% by weight of the total
composition (e.g. paragraph 0104), and the ionic surfactant is preferably 0.5-
10% by weight of the composition (e.g. paragraph 0121)" (Non-Final Act.
5).
The Examiner finds the combination would have been obvious
because "one of ordinary skill would have been motivated to seek additional
guidance on the appropriate concentrations for each individual surfactant. In
addition, one of ordinary skill in the art would have varied and optimized the
concentrations through routine experimentation" (Non-Final Act. 6).
The issue with respect to the rejection is: Does a preponderance of the
evidence of record support the Examiner's conclusion that the prior art
renders claim 1 prima facie obvious?
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Appeal2017-006828
Application 13/651,732
Findings of Fact
1. Pays '248 teaches "cosmetic compositions for making up
and/or for the nontherapeutic care of keratin materials, for example the skin,
the lips and/or keratin fibers, which are capable of resisting water and of
being easily removed" (Pays '248 ,r 2).
2. Pays '248 teaches the "composition according to the invention
may be in liquid, pasty, solid, mousse or spray form" (Pays '248 ,r 273).
3. Pays '248 teaches the "composition according to the invention
may comprise at least one agent for structuring the oily phase or organic
solvent, chosen from waxes" (Pays '248 ,r 146).
4. Pays '248 teaches "the waxes that are suitable for the invention
may have a melting point of greater than or equal to 45° C., and for example
greater than or equal to 55° C" (Pays '248 ,r 151).
5. Pays '248 teaches "waxes provided in the form of small
particles having a dimension expressed as the mean 'effective' volume
diameter D[4.3] of the order of0.5 to 30 micrometres, for example from 1 to
20 micrometres, and for example from 5 to 10 micrometres which are
referred to hereinafter as 'micro waxes', may also be used" (Pays '248 ,r 177;
cf Pays '44 7 ,r 66).
6. Pays '248 teaches a "surfactant with an HLB of greater than or
equal to 6 at 25° C. included in the cosmetic composition according to the
present invention may be ionic, nonionic or of mixed ionic and nonionic
nature" (Pays '248 ,r 70; cf Pays '447 i-f 82).
7. Pays '248 teaches the "nonionic and ionic surfactants with an
HLB of greater than or equal to 6 at 25° C. described above can also be
present in combination" (Pays '248 ,r 99).
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Appeal2017-006828
Application 13/651,732
8. Pays '248 teaches surfactants "may be present for example in a
proportion ... for example from 1.5 to 10% by weight" (Pays '248 ,r 65; cf
Pays '447 i-f 80).
9. Pays '248 teaches "the content of water and/or of water-soluble
solvent optionally present is less than 50% by weight relative to the total
weight of the composition" (Pays '248 ,r 17).
10. Example 2 of Pay '248 teaches "A microdispersion of camauba
wax having the following composition is prepared:
Cit,naub~: <+,ia:x
Polyox;;:tllykm1ted (.30 EOJ glycc1:vI monoi,;tem\stc (fagat
S frmn Gohh.chnJ.klt)
Ethanol
27.00 g
6.75 g
10 .. 00 g
qs 100 .. 00 g
The wax and the surfactant are heated to 90° C. while
homogenizing the mixture with moderate stirring. The water,
heated to 90° C., is then incorporated while continuing the
stirring. The mixture is cooled to ambient temperature and the
ethanol is added so as to obtain a microdispersion of wax
having a mean particle diameter of approximately 170 nm.
Pays '248 ,r,r 306-307.
11. Pays '44 7 teaches "a composition that is useful for producing a
heavy makeup result on keratin fibers and especially the eyelashes, which is
also known as charging makeup" (Pay's '447 i-f 8).
12. Pays '447 teaches "amount of nonionic surfactant with an HLB
of greater than or equal to 8 may range from 0.01 % to 40% by weight ...
and better still from 0.5% to 10% by weight, relative to the total weight of
the composition" (Pay's '447 i-f 104).
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Appeal2017-006828
Application 13/651,732
13. Pays '44 7 teaches "the compositions according to the invention
may contain from 0.01 % to 30% by weight ... or even from 0.5% to 10%
by weight of ionic surfactant, relative to the total weight of the composition"
(Pay's '447,I 121).
Principles of Law
A prima facie case for obviousness "requires a suggestion of all
limitations in a claim," CFMT, Inc. v. Yieldup Int 'l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and "a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
Appellants contend the rejection relies on "the particle size and
melting points for waxes for use as a structuring agent in the oily phase, as
well as the surfactants/or use in the composition of Pays '248 and Pays
'447. (April 7, 2016 Office Action at p. 4). However, these ranges and
surfactants are not directed to an aqueous dispersion of wax particles, as
featured in the instant claims" (App. Br. 11 ).
Appellants contend "there is no disclosure related to any parameters
associated with aqueous microdispersions, and no reason to modify the
aqueous microdispersion to achieve any result. Indeed, the Office fails to
offer any rationale as to why a skilled artisan would have modified the
microdispersion of Example 2" (Reply Br. 7). Appellants contend
"[i]nstead, the Office merely argues that the modification could have been
made. A finding of obviousness requires more than a conclusory statement
that a modification could have been made" (id.).
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Appeal2017-006828
Application 13/651,732
Appellants point out that "a skilled artisan could not have predicted
the properties because the waxes and surfactants of Pays '248 are used in an
entirely different medium (i.e., oily phase) and for an entirely different
purpose (i.e., as a structuring agent)" (Reply Br. 10).
The Examiner finds that
As there is no separate section listing ingredients to be used in
an aqueous microdispersion (as in Example 2), it would have
been obvious to one of ordinary skill in the art that other waxes,
amounts, and combinations also recited in "Wax( es)"
paragraphs 0148-0179, would also be appropriate in a
micro dispersion.
(Ans. 4). The Examiner finds that"[ o ]ne of ordinary skill in the art would
not have ignored the broader teachings of Pays '248 and looked only to
Example 2 for appropriate waxes, surfactants, and particle sizes" (Ans. 5).
The Examiner finds "[i]t would have been obvious to select any of the
disclosed ingredients for use in a microdispersion, including the elected and
claimed wax and surfactants, with no change in their respective functions,
and the combination yielding nothing more than predictable results" (Ans.
6).
We agree with Appellants and agree with their reasoning. Although
there is no dispute that citations to each of the elements in claim 1 may be
found in Pays '248 and Pays '447, these references separately identify
components for an oily phase as opposed to an aqueous dispersion (FF 3).
In Example 2, the only aqueous microdispersion disclosed by Pays '248, the
particle diameter is 170 nm, a value significantly different than the 1 to 100
micron range required by claim 1 (see FF 10). And, although we agree with
the Examiner that there would have been a reasonable expectation of success
in combining the ingredients, we do not see a persuasive "reason that would
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Appeal2017-006828
Application 13/651,732
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." KSR, 550 U.S. at 418.
We recognize that combining known elements may often be obvious
when there is no change in their function, but the present situation differs
because the Examiner has not identified how the aqueous dispersion would
be used after the combination was made. That is, in Pays '248, it is unclear
whether the aqueous microdispersion of Example 2 is used as a component
of a later mascara composition or is simply an experiment that was reported.
In either case, there is insufficient evidence to establish that the aqueous
microdispersion would have been modified to a mascara or other cosmetic
composition using the other components required by claim 1 in the absence
of any logic, reason, direction, or other guidance found in Pays '248, Pays
'447, or other prior art. We therefore agree with Appellants that the rejected
claims have not been shown to be prima facie obvious over the cited prior
art. 9
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner's conclusion that the prior art renders claim 1 prima facie obvious.
9 We note that we are not persuaded by the unexpected results, because the
single example in the Shaw Declaration, dated Jan. 5, 2015, is not
reasonably commensurate in scope with the much broader scope of claim 1.
Unexpected results must be "commensurate in scope with the degree of
protection sought by the claimed subject matter." In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005).
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Application 13/651,732
B. 35 US.C. § 103(a) over Pays '248, MicroEase, Ajinomoto, Pays '447,
and Pays '656
The Examiner added Pays '656 to address the limitation of "heat-
activated" as found in claim 30 (see Non-Final Act. 9). Having reversed the
obviousness rejection of claim 1 for the reasons given above, we also find
that the further combination with Pays '656 does not render dependent claim
30 obvious for the same reasons.
C. Provisional Obviousness-type Double Patenting
We decline to reach this undisputed provisional rejection. See In re
Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010) (precedential). The rejection
is provisional and Application No. 14/251,373 remains copending and not
allowed; accordingly, the issues are not ripe for decision.
SUMMARY
In summary, we reverse the rejection of claims 1-13, 18, 20, 22-29,
32, and 62---65 under 35 U.S.C. § 103(a) as obvious over Pays '248,
MicroEase, Ajinomoto, and Pays '447.
We reverse the rejection of claims 1-13, 18, 20, 22-30, 32, and 62---65
under 35 U.S.C. § 103(a) as obvious over Pays '248, MicroEase, Ajinomoto,
Pays '447, and Pays '656.
We do not reach the provisional rejection of claims 1-13, 18, 20, 22-
30, 32, and 62---65 over claims 1-59 and 63---66 of copending Application
No. 14/251,373.
REVERSED
10