Ex Parte Weber et al

Patent Trial and Appeal Board

Mar 12, 2013

11352643 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT WEBER and NISHITH PATEL

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Appeal 2012-002460
Application 11/352,643
Technology Center 1600
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Before DONALD E. ADAMS, LORA M. GREEN, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal
1
under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
The Real Party in Interest is L’Oreal S.A.
2 Claims 21-26 are also pending, but stand withdrawn from consideration.
(App. Br. 2.)
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Application 11/352,643

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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to a process for making a nail polish
varnish with a certain viscosity so that only one coat of polish is needed for
nail coverage. (Spec. [0004] and [0005].)

Exemplary Claim
Claims 1 is independent and is representative of the invention.
Independent claim 1 is reproduced below with disputed limitations in italics:
1. A process for making a nail polish varnish comprising:

(a) providing a gelled nail polish composition having a Brookfield
viscosity of at least about 20 poise, the composition containing:

(i) at least one gelling agent;
(ii) at least one film former;
(iii) at least one solvent; and
(iv) optionally, at least one colorant;

(b) providing at least one chemical viscosity reducing agent; and

(c) combining the gelled nail polish composition, and the at least one
chemical viscosity reducing agent to form a nail polish varnish
having a Brookfield viscosity of at most about 30 poise.

Examiner’s Rejections
1. Claims 1-4, 6-17, 19, and 20 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Busch, Jr. (US Patent 3,864,294, issued Feb. 4,
1975 (the ’294patent)). (Ans. 4.)
2. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the ’294 patent. (Ans. 7.)
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ISSUE 1
§ 102(b) Rejection of Claims 1-4, 6-17, and 19-20
Appellants contend that the claim limitations “a gelled nail polish
composition having a Brookfield viscosity of at least about 20 poise” and “a
nail polish varnish having a Brookfield viscosity of at most about 30 poise”
are not disclosed in the ’294 patent. (App. Br. 5.)

Issue 1: Does the preponderance of the evidence of record support the
Examiner’s finding that the ’294 patent discloses the claim limitations “a
gelled nail polish composition having a Brookfield viscosity of at least about
20 poise” and “a nail polish varnish having a Brookfield viscosity of at most
about 30 poise” as recited in independent claim 1?

ANALYSIS
We are unpersuaded by Appellants’ contention (App. Br. 5-7) that
’294 patent fails to inherently disclose the claim limitations “a gelled nail
polish composition having a Brookfield viscosity of at least about 20 poise”
and “a nail polish varnish having a Brookfield viscosity of at most about 30
poise.”
Appellants contend that the ’294 patent fails to disclose either of the
two claimed Brookfield viscosities, and simply because the ’294 patent
discloses generically, the use of the claimed ingredients, does not mean that
the ’294 patent “inherently possess[es] BOTH the initial and final claimed
Brookfield viscosities” as recited in claim 1. (App. Br. 5, emphasis in
original.)
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However, the Examiner specifically points to the location in the ’294
patent where each claimed composition element recited in claim 1 is
disclosed. (Ans. 10-11.) The Examiner correctly cites to MPEP 2112.01,
which states that where the claimed and prior art products are identical or
substantially identical in structure or composition, or are produced by
identical or substantially identical processes, a prima facie case of either
anticipation or obviousness has been established. In re Best, 562 F.2d 1252,
1255 (CCPA 1977). The composition elements disclosed in the ’294 patent
overlap with the concentration ranges (by weight) identified in Appellants’
Specification. Specifically, Appellants’ Specification teaches the use of a (i)
gelling agent in a 1.0-5.0% range (para [0029]) and the ’294 patent discloses
a 0.5-5.0% range (col. 5 ll. 60-62), (ii) a film former in a 1.0-20% range
(para [0039]) and the ’294 patent discloses a 5.0-25% range (col. 6, ll. 33-
35), (iii) a colorant in a 1.0-25% range (para [0056]) and the ’294 patent
discloses a 0.01-10% range (col. 7 ll. 1-2), (iv) a solvent in a 10-80% range
(para [0045]) and the ’294 patent discloses a 30-85% range (col. 6 ll. 45-46),
and (v) a viscosity reducing agent in a 0.05-0.20% range (para [0064]) and
the ’294 patent discloses a 0.0001-.1% range (col. 6, ll 15-17.) Therefore,
because the claimed composition elements, the combination of the claimed
composition elements, and overlapping concentrations of composition
elements are disclosed in the ’294 patent, the Examiner finds that the
limitation “20 poise viscosity” is inherently disclosed as an intrinsic property
of the composition of the claimed elements. (Ans. 11-12.)
The Examiner also finds that the limitation “30 poise viscosity” of
claim 1 is obtained by combining the gelled nail composition and chemical
viscosity reducing agent. According to the Examiner, the ’294 patent
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discloses this limitation by adding paste composition B with pigmented
Lacquer base B and then adding in orthophosphoric acid. (Ans. 12.)
Orthophosphoric acid reads on “chemical viscosity reducing agent” because
the chemical reducing agents can be “acids or bases” (claim 16). (Id.)
Accordingly, the Examiner has established a prima facia of anticipation.
Appellants have failed to rebut the prima facia case by providing evidence
that the ’294 patent does not inherently possess the characteristics of the
claimed invention.
Appellants also contend that the various compositions disclosed in the
examples section of the ’294 patent contain numerous ingredients outside
the scope of those that are claimed and Appellants have no idea what role
said ingredients play in the initial and final Brookfield viscosities of the
compositions in the ’294 patent. (App. Br. 5.) However, as the Appellants
correctly noted, the use of the transitional phrase “comprising” does not
exclude the presence of other elements. (Id.) Therefore, the Examiner finds
that the ’294 patent renders claim 1 unpatentable. We agree. Accordingly,
we affirm the rejection of claim 1 under 35 U.S.C. § 102(b).
Appellants have not presented any substantive arguments with respect
to dependent claims 2-4, 6-17, and 19-20, thus, these claims fall with
representative claim 1. Accordingly, we affirm the rejection of claims 2-4,
6-17, and 19-20 under 35 U.S.C. § 102(b).

ISSUE 2
§ 103(a) Rejection of Claims 1-20
Appellants contend that the claim limitations “a gelled nail polish
composition having a Brookfield viscosity of at least about 20 poise” and “a
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nail polish varnish having a Brookfield viscosity of at most about 30 poise”
are not taught or suggested in the ’294 patent. (App. Br. 7.)

Issue 2: Does the preponderance of the evidence of record support the
Examiner’s finding that the ’294 patent teaches or suggests the claim
limitations “a gelled nail polish composition having a Brookfield viscosity
of at least about 20 poise” and “a nail polish varnish having a Brookfield
viscosity of at most about 30 poise” as recited in independent claim 1?

ANALYSIS
We are unpersuaded by Appellants’ contention (App. Br. 7-8) that the
’294 patent fails to teach or suggest the claim limitations “a gelled nail
polish composition having a Brookfield viscosity of at least about 20 poise”
and “a nail polish varnish having a Brookfield viscosity of at most about 30
poise.”
Appellants contend the Examiner has “failed to provide a basis in fact
and/or technical reasoning to support a determination that the compositions
of the ’294 [patent] inherently possesses the claimed Brookfield
viscosities.” (App. Br. 7.) Appellants specifically contend that the
composition of the ’294 patent is materially different in terms of its viscosity
from the claimed invention, for the following reasons: (1) the gelled nail
composition in the ’294 patent is such that its initial viscosity is reduced by
virtue of the degree of shear applied to the composition during the
composition's application onto a nail using a brush while the “viscosity of
the claimed invention is NOT reduced via shear, but rather, via the use of the
claimed viscosity reducing agent.” (Id. at 8, emphasis in original; ’294
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patent col. 5, lines 49-58); and (2) contrary to Examiner’s position, the ’294
patent does not disclose the use of a viscosity reducing agent because the
orthophosphoric acid in Examples I and III is present in only trace amounts
(0.02%) (id.).
However, as discussed above, the Examiner finds that the ’294 patent
discloses substantially similar chemical elements as recited in claim 1 in
similar concentration ranges as disclosed by Appellants’ Specification; thus,
the properties Appellants are claiming regarding the viscosity are considered
to be inherently present. (Ans. 14.) The Examiner also finds that the ’294
patent does not teach that its initial viscosity is reduced by virtue of the
degree of shear applied to the composition. (Id. at 15, citing ’294 patent
co1.5, ll. 49-58.) The Examiner further finds that orthophosphoric acid
reads on “chemical viscosity reducing agent” even if it is present in trace
amounts, because the claims as currently recited do not require any weight
percentage for the acidic compound (chemical reducing agent.) (Ans. 16,
emphasis in original.) Further, the concentration range for the
orthophosphoric acid disclosed in the ’294 patent (col. 6, ll. 15-17) overlaps
with the concentration range disclosed in Appellants’ Specification (para
[0064]). Therefore, the Examiner finds that the ’294 patent renders claims 1
obvious. We agree with the Examiner’s findings.
Accordingly, we affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a). Claims 2-20 fall with claim 1.

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Application 11/352,643

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DECISION
The rejections of record are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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