Ex Parte ZHOU et al

Patent Trial and Appeal Board

Aug 10, 2018

14573918 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/573,918 12/17/2014 XianZhi ZHOU
22850 7590 08/14/2018
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.
449451US41 4132
EXAMINER
HELM, CARAL YNNE E
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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):
OBLONPAT@OBLON.COM
tfarrell@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAN ZHI ZHOU, CHUNHUA LI, HY SI BUI,
JEAN-THIERRY SIMONNET, CARL RAICHI, and
GUILLAUME KERGOSIEN
Appeal2017-005435
Application 14/573,918 1
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a nail
treatment system. The Examiner rejected the claims on appeal under 35
U.S.C. § 103(a) as obvious and under 35 U.S.C. § l 12(d) for failing to
further limit a dependent claim. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is L'Oreal. App. Br. 1.
Appeal2017-005435
Application 14/573,918
STATEMENT OF THE CASE
The Specification discloses that "UV gel compositions typically
consist but are not limited to a layer of basecoat for adhesion to the nails,
two color coats to enhance the color and one topcoat for shine and
durability. Each layer of each coat needs to be cured (polymerized) with a
UV or LED Lamp." Spec. ,r 3. The Specification discloses that "[t]he
adhesion of UV gel nail compositions to the nail surface and cohesive force
between the layers of multiple UV gel treatment is so strong that it is
difficult to remove such compositions from nails." Id. ,r 4. This is a
problem because "it is usually required to soak nails with a harsh solvent
such as acetone for at least 10 minutes or more to effect removal" and
"[f]requent and/or prolonged use of such solvents in this manner can damage
nails such as, for example, by making them dry and brittle." Id. In addition,
"the removal process is time-consuming." Id.
The Specification further discloses "proposed solutions to improve the
removal of UV gel nail compositions have focused on altering the
composition of the UV gel layers themselves, for example by including
additives which are soluble in solvents like acetone, ethyl acetate, butyl
acetate, etc. to the layers." Id. ,r 5. This solution is imperfect because "the
use of solvent to remove the composition is still required." Id. Another
proposed solution is to use "a water-based basecoat composition (primer)
prior to the application of UV gel color coat(s) and/or UV gel topcoat,
thereby allowing easy removal of all coats with the use of water. However,
such nail applications have poor wear." Id. ,r 6. Accordingly, "[t]here
remains a need for UV gel compositions that are safe, adhere well to nails
2
Appeal2017-005435
Application 14/573,918
and can be easily and quickly removed with minimum damage to nails." Id.
The Specification discloses "[ t ]he inventive nail treatment system
provides the unique combination ofbasecoat containing a non-UV curable
adhesive latex with a second coat (which preferably is a color coat)
containing both photocrosslinkable urethane (meth)acrylates oligomers and
( meth )acrylate monomers." The Specification asserts that "[ t ]he
compositions of the invention deliver very strong adhesion to the nail and
good wear, while at the same time the treatment system can be easily
removed with the use of warm, soapy water." Id. ,r 8.
Claims 1-18 are on appeal. Claims 1 and 18 are illustrative and read
as follows:
1. A nail treatment system comprising:
( 1) at least one basecoat comprising:
water; and
at least one non-UV curable latex; and
(2) at least one second coat comprising:
at least one photocrosslinkable urethane (meth)acrylate
compound Pl;
at least one photocrosslinkable (meth)acrylate monomer;
and
at least one photoinitiator.
18. The nail treatment system of claim 1, wherein when the
nail treatment system is applied to nails and subjected to
photocrosslinking, the resulting nail coating is removable with
warm, soapy water.
The claims stand rejected as follows.
Claim 18 was rejected under 35 U.S.C. § 112(d) as being of improper
dependent form for failing to further limit the subject matter of the claim
upon which it depends.
3
Appeal2017-005435
Application 14/573,918
Claims 1-10, 12-15, and 18 were rejected under 35 U.S.C. § I03(a)
as obvious over the combination of Lein, 2 Ellingson, 3 and Park. 4
Claim 11 was rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Lein, Ellingson, Park, and Manelski. 5
Claims 16 and 17 were rejected under 35 U.S.C. § I03(a) as obvious
over the combination of Lein, Ellingson, Park, and Kozachek. 6
Claim 18 was rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Lein, Ellingson, Park, and Wei burg. 7
OBVIOUSNESS OVER LEIN, ELLINGSON, AND PARK
Claims 1-10, and 12-15
Appellants argue claims 1-10 and 12-15 together. We designate
claim 1 as representative.
In rejecting claims 1-10 and 12-15 as obvious, the Examiner found
the Lein disclosed "a radiation curable nail gel composition" containing "a
photocrosslinkable urethane acrylate that includes a structural unit of the
form (Pl):
2 Lein, WO 2013/192515 Al, published Dec. 27, 2013 ("Lein").
3 Ellingson et al., US Patent No. 6,306,375 Bl, issued Oct. 23, 2001
("Ellingson").
4 Park, US Patent Publication No. 2012/0103354 Al, published May 3, 2012
("Park").
5 Manelski et al., US Patent Publication No. 2004/0180032 Al, published
Sep. 16, 2004 ("Manelski").
6 Kozachek, US Patent Publication No. 2011/0256079 Al, published Oct.
20, 2011 ("Kozachek").
7 Weiburg et al., US Patent Publication No. 2015/0007846 Al, published
Jan. 8, 2015 ("Weiburg").
4
Appeal2017-005435
Application 14/573,918
along with hydroxyethyl methacrylate (photocrosslinkable methacrylate
monomer), a second urethane methacrylate, and a photoinitiator." Final
Act. 8 4. The Examiner acknowledged, however, that Lein did not disclose a
basecoat. Id. at 5.
The Examiner found that Ellingson disclosed a nail polish basecoat
that is "beneficial to long wear fingernail compositions due to the adhesion it
provides." Id. The Examiner notes that the "mechanism of film formation"
for Ellingson's basecoat "is the evaporation of the volatiles[,] not UV
curing." Id. Ellingson's basecoat may include latex polymers and water.
Id.
The Examiner found that Park disclosed "the application of a UV
curable gel nail composition to nails that is separated from the nail by a pre-
hardened nail enamel basecoat." Id. at 6. Park teaches that the application
of a basecoat "protect[ s] the nail itself from the UV curable overlying gel
nail composition and associated health risks as well as permit[ s] removal of
the nail by conventional nail polish remover." Id.
Based on the combined disclosures of Lein, Ellingson, and Park, the
Examiner concluded:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to employ the basecoat of Ellingson et
al. with the gel nail composition of Lein et al. as a gel nail system.
8 Office Action mailed February 5, 2016 ("Final Act.").
5
Appeal2017-005435
Application 14/573,918
This modification would have been obvious based upon the
teaching by Park that the separation of a gel nail composition
from the fingernail by a layer of non-UV curing nail
enamel/polish protects the nail and facilitates removal with
conventional nail polish removers. This modification would have
been obvious as the application of the same technique to a similar
product in order to yield the same improvement as well as the
combination of prior art elements according to known methods
to yield predictable results. For the basecoat, it follows to select
a preferred film forming polymer coupled with water at taught
proportions or an exemplified basecoat composition. The
addition of a filler, plasticizer, and coalescent to such a basecoat
composition of Ellingson et al., as they suggest, would follow.
Similarly, the selection of the composition of example 11 as the
gel nail composition of Lein et al. would have been obvious
given its choice as a successful example.
Id. at 6-7.
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art and agree that claims 1-10 and 12-15 are
obvious over Lein, Ellingson, and Park. We address Appellants' arguments
below.
Appellants contend that Park discloses a technique where "a nail
applique made of dried nail enamel is applied to a nail. Then, a UV gel nail
polish is applied on top of the nail applique and cured." App. Br. 13.
Appellants explain that Park identified potential disadvantages of using UV
gel nail polishes, "such as nail damage resulting from the UV gel and the
difficulty of removing a UV gel polish from the nails," and solved these
problems with the above described "nail applique technique." App. Br. 14.
Appellants then argue that the skilled artisan "seeking to overcome the
drawbacks associated with the UV gel nail polish disclosed by Lein would
be motivated to use the nail applique technique disclosed by Park" rather
6
Appeal2017-005435
Application 14/573,918
than the basecoat described by Ellingson "as an undercoat for the UV gel
nail polish described by Lein." Id. We are not persuaded.
We agree with the Examiner that it would have been obvious to use a
basecoat together with a UV gel nail polish because Park teaches that the use
of a "non-UV curing [basecoat] protects the nail and facilitates removal with
conventional nail polish removers." Final Act. 6; see also, Park ,r 8. We
further agree with the Examiner that it would have been obvious to use
Ellingson's basecoat rather than Park's basecoat because Ellingson and Park
employ the same technique to similar products and because, as Ellingson
and Park demonstrate, the application of a basecoat to a nail is a known
method that achieves predictable results. Final Act. 6. Park's
exemplification of a particular basecoat does not diminish the teaching of the
cited art regarding the use of a basecoat in connection with a gel nail polish.
As the Examiner aptly points out, "the fact that one type of basecoat is
exemplified [in Park] ... does not mean ... that a different basecoat
composition could not function to protect the fingernail." Ans. 4. This is
true even if there were evidence in the record - which there is not - that
Ellingson's basecoat were somehow inferior to Park's basecoat. In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) ("[J]ust because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes.").
Appellants contend that the topcoat layer describe by Ellingson is not
a UV gel but comprises a "polymer that can be crosslinked using metal ions
and basic groups present in the polymer." App. Br. 14. "Thus, Ellingson
has not demonstrated that the basecoat described therein can be [ used]
successfully with a UV gel nail polish." Id. Appellants then argue that there
7
Appeal2017-005435
Application 14/573,918
is an "insufficient expectation of success in using the basecoat described by
Ellingson as an undercoat for the UV gel nail polish described by Lein" and
the skilled artisan would "not be motivated to make this combination." Id.
We are not persuaded.
As the Examiner explains, "[b ]oth Ellingson et al. and Park et al.
detail a composition that is applied to the nail as a basecoat prior to a
crosslinkable topcoat so as to protect the fingernail." Ans. 5. Appellants
have not identified persuasive evidence suggesting that the skilled artisan
would have considered the basecoat of Ellingson to be incompatible with a
UV-curable topcoat. Accordingly, we agree with the Examiner that "there is
a reasonable expectation that the protective function of the basecoat taught
by Ellingson et al. would still be realized if employed under a different [UV-
curable] topcoat." Id.
Accordingly, we affirm the Examiner's rejection of claim 1 as
obvious over the combination of Lein, Ellingson, and Park. Because they
were not argued separately, claims 2-10 and 12-15 fall with claim 1.
Claim 18
Claim 18 depends from claim 1 and further requires that "when the
nail treatment system is applied to nails and subjected to photocrosslinking,
the resulting nail coating is removable with warm, soapy water."
Appellants argue that Lein, Ellingson, and Park do not provide any
teaching or suggestion to remove the nail coating with warm, soapy water.
App. Br. 16. Appellants further argue that the "facile removal of the
claimed nail treatment system specified in [ c ]laim 18 ... is surprising and
unexpected." Id. at 18.
8
Appeal2017-005435
Application 14/573,918
The Examiner contends that the composition rendered obvious by the
combination of Lein, Ellingson, and Park would necessarily be removable
with warm, soapy water. As evidence, the Examiner relies upon paragraphs
10 and 11 of the Specification, which state:
Furthermore, the presence of non-UV curable adhesive
latex in the basecoat composition additionally enhances the
removability of the inventive treatment system from the nails.
Because the non-UV curable latex is hydrophilic, its exposure to
warm and soapy water results in swelling. This results in
decreased of adhesion between nails and the second and top coats
of the inventive nail treatment system. The reduced adhesion
force allows for easy peeling of the inventive nail treatment from
the nail surface. Starting from the free edge of the nail, the
consumer can easily remove the treatment system of inventive
compositions.
As per this invention, the removal method of the nail
treatment system does not require the use of harsh for nails,
organic solvent, just warm and soapy water.
Spec. ,r,r 10-11. We are not persuaded.
While paragraphs 10 and 11 do suggest that the latex in Appellants'
nail treatment system confers the property that it is removable in soapy
water, they do not establish that the particular basecoats disclosed in
Ellingson necessarily have this property, as would be required to establish
that the composition rendered obvious by the cited art inherently has this
property. In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981) ("Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient."). Indeed, Ellingson discloses that the "film forming polymers of
[its] basecoat compositions are preferably water-insoluble at ambient
temperature and pressure" (Ellingson col. 7, 11. 46-48), which at least
9
Appeal2017-005435
Application 14/573,918
suggests that Ellingson's basecoat may not be removable in warm, soapy
water.
As stated inJn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
"[T]he examiner bears the initial burden ... of presenting a prima facie case
of unpatentability." Appellants have persuaded us that the Examiner has not
carried the burden of establishing that composition rendered obvious by the
combination of Lein, Ellingson and Park would necessarily be removable in
warm, soapy water. Accordingly, we reverse the Examiner's rejection of
claim 18.
OBVIOUSNESS OVER LEIN, ELLINGSON, PARK, AND MANELSKI
The Examiner rejected dependent claim 11 as obvious over the
combination of Lein, Ellingson, Park, and Manelski. Appellants argue that
Manelski "fails to remedy the deficiencies of Lein, Ellingson, and Park."
App. Br. 15. We are not persuaded because we do not identify any
deficiencies in the combination of Lein, Ellingson, and Park. Accordingly,
we affirm the Examiner's rejection of claim 11 as obvious.
OBVIOUSNESS OVER LEIN, ELLINGSON, PARK, AND KOZACHEK
The Examiner rejected claims 16 and 17 as obvious over the
combination of Lein, Ellingson, Park, and Kozachek. Appellants argue that
Kozachek "fails to remedy the deficiencies of Lein, Ellingson, and Park."
App. Br. 16. We are not persuaded because we do not identify any
deficiencies in the combination of Lein, Ellingson, and Park. Accordingly,
we affirm the Examiner's rejection of claims 16 and 17 as obvious
10
Appeal2017-005435
Application 14/573,918
OBVIOUSNESS OVER LEIN, ELLINGSON, PARK, AND WEIBURG
As discussed above, claim 18 depends from claim 1 and further
requires that "when the nail treatment system is applied to nails and
subjected to photocrosslinking, the resulting nail coating is removable with
warm, soapy water." The Examiner rejected dependent claim 18 as obvious
over the combination of Lein, Ellingson, Park, and Wei burg. The Examiner
cited Weiburg as providing evidence that the "concept touted by the
appellant [ washing a nail coating with warm soapy water] was already
contemplated by the prior art." Ans. 6-7. The Examiner does not rely upon
Wei burg to address the above identified deficiency with respect to claim 18.
Accordingly, we reverse the Examiner's rejection of claim 18 as obvious
over the combination of Lein, Ellingson, Park, and Wei burg.
REJECTION UNDER 35 U.S.C. § 112(d)
35 U.S.C. § 112(d) requires that "a claim in dependent form shall
contain a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed." The Examiner contends that claim
18 does not further limit claim 1 because a composition including a non-UV
curable latex would necessarily be removable with warm soapy water, and
thus claim 18 does not further limit claim 1. We are not persuaded because,
for the reasons discussed above, the evidence of record does not support the
Examiner's position that all basecoats including a non-UV curable latex
have this property. Accordingly, we reverse the Examiner's rejection of
claim 18 under 35 U.S.C. § 112(d).
11
Appeal2017-005435
Application 14/573,918
SUMMARY
In summary, we affirm the Examiner's rejection of claims 1-10 and
12-15 under 35 U.S.C. § 103(a) as obvious over the combination of Lein,
Ellingson, and Park.
We affirm the Examiner's rejection of claim 11 under 35 U.S.C.
§ 103(a) as obvious over the combination of Lein, Ellingson, Park, and
Manelski.
We affirm the Examiner rejection of claims 16 and 17 under 35
U.S.C. § 103(a) as obvious over the combination of Lein, Ellingson, Park,
and Kozachek.
We reverse the Examiner's rejection of claim 18 under 35 U.S.C.
§ 103(a) as obvious over the combination of Lein, Ellingson, and Park.
We reverse the Examiner's rejection of claim 18 under 35 U.S.C.
§ 103(a) as obvious over the combination of Lein, Ellingson, Park, and
Weiburg.
We reverse the Examiner's rejection of claim 18 under 3 5 U.S. C.
§ 112(d).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
12