L'OR¿AL

Patent Trials and Appeals Board

Jul 10, 2020

15418017 - (D) (P.T.A.B. Jul. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/418,017 01/27/2017 Christine Marie CRANE 478639US 3661
147747 7590 07/10/2020
Oblon/L'Oreal
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
FALKOWITZ, ANNA R
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
07/10/2020 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):
iahmadi@oblon.com
oblonpat@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 CHRISTINE MARIE CRANE,
ANGELES CLARA FONOLLA-MORENO, OMOTAYO AWOFESOBI,
and ALICE MONIQUE ROSINE LEFEBVRE 1

Appeal 2019-006959
Application 15/418,017
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cosmetic composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as L’Oreal. Appeal Br. 1. We
use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a).
Appeal 2019-006959
Application 15/418,017

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STATEMENT OF THE CASE
The Specification states that “mascaras typically contain wax which is
used to provide body and volume. However, the tackiness of the wax leads
to mascara compositions that clump, apply unevenly, quickly dry the lashes,
smudge, flake and are difficult to remove.” Spec. ¶ 2. The Specification
discloses “compositions for keratinous material (for example, eyebrows
and/or eyelashes” comprising water, a film-forming agent, a volumizing
agent, and emulsifiers having low, intermediate, and high HLB values. Id.
¶ 7. “‘HLB’ refers to the ‘hydrophilic-lipophilic balance’ associated with
emulsifiers.” Id. ¶ 78.
The volumizing agent can be an inert filler or a glyceryl ester of a
fatty acid. Id. ¶ 63. “Particularly preferred as a source of glyceryl esters of
fatty acid in accordance with the present invention is shea butter which
contains, among other things, glyceryl esters of stearic acid (in an amount of
20%–50% by weight of shea butter) and oleic acid (in an amount of 40%–
60% by weight [of] shea butter).” Id. ¶ 71.
Claims 1–6 and 8–20 are on appeal. Claims 1 and 2, reproduced
below, are illustrative:
1. A composition comprising water, at least one dispersion
of film forming particles in aqueous phase, at least one
volumizing agent which is shea butter, and an
emulsification system comprising about 2% to about 6%
of low HLB emulsifier(s), about 2% to about 8% of
intermediate HLB emulsifier(s), and about 1 % to about
8% of high HLB emulsifier(s) by weight with respect to
the total weight of the composition.

2. The composition of claim 1, wherein the composition is a
mascara.
Appeal 2019-006959
Application 15/418,017

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OPINION
Claims 1–6 and 8–20 stand rejected under 35 U.S.C. § 103 as obvious
based on Bolognini2 and Collin.3 Final Action4 4. The Examiner finds that
“Bolognini discloses a mascara composition comprising an emulsifying
system including a gemini surfactant up to 5% by weight of the composition
and a co-emulsifier from about 3% to about 15% by weight of the
composition, a viscosity increasing agent, and a film forming agent.” Id. The
Examiner finds that Bolognini discloses that “particularly preferred gemini
surfactant-containing compositions comprise Ceralution H,” which is
described as containing “behenyl alcohol, glyceryl stearate, glyceryl stearate
citrate and sodium dicocoylethylenediamine PEG-15 sulfate.” Id.
The Examiner finds that Appellant’s Specification describes glyceryl
stearate as a low HLB emulsifier; behenyl alcohol and glyceryl stearate
citrate as intermediate HLB emulsifiers; and sodium
dicocoylethylenediamine PEG-15 sulfate as a high HLB emulsifier. Id. at 5.
The Examiner calculates that using 20% Ceralution H in Bolognini’s
composition, as suggested by Bolognini, would result in amounts of low,
intermediate, and high HLB emulsifiers within the ranges recited in claim 1.
Id. at 5–6.
The Examiner notes that Bolognini does not disclose shea butter as a
volumizing agent, but finds that Collin discloses a mascara composition
“wherein the composition comprises Shea butter oil.” Id. at 5. The Examiner

2 US 2015/0079015 A1, published March 19, 2015.
3 US 2004/0009201 A1, published January 15, 2004.
4 Office Action mailed November 20, 2018.
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Application 15/418,017

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concludes that it would have been obvious “to combine the teachings of
Bolognini et al. and Collin et al. to include a the [sic] shea butter oil in a
mascara composition” because “shea butter is a non-volatile oil that makes it
possible to obtain a very good curling of the eyelashes [0055] as evidenced
by the disclosure of Collin.” Id. at 10.
Appellant argues that “Collin does not teach or suggest shea butter.
Shea butter and shea butter oil are not the same thing. On a fundamental
level, shea butter is solid, shea butter oil is not.” Appeal Br. 3. Appellant
cites “[t]he website page which is exhibit A,” included in the Evidence
Appendix of the Appeal Brief, as “describ[ing] the difference between shea
butter and shea butter oil as follows:
What is the difference between Shea butter and Shea oil?
Shea oil is the liquid version of Shea butter. It is fractionated
from Shea butter by removing some of the stearin. As a result
you get higher levels of fatty acids like oleic and linoleic acid,
and lower levels of stearic acid. Shea oil remains liquid at 20 C.
Appeal Br. 3. Appellant thus argues that “shea butter oil may originally be
associated with shea butter (pre-fractionation), but it is different from shea
butter, and has different properties from shea butter.” Id.
We agree with Appellant that the rejection on appeal is not supported
by a preponderance of the evidence. The Examiner cites Collin as providing
a reason to include shea butter in Bolognini’s composition. Collin discloses
“a composition for coating keratinous fibres comprising a wax and a liquid
fatty phase.” Collin ¶ 1. The composition can be a mascara. Id.
Collin states that the liquid fatty phase comprises a volatile organic
solvent, id. ¶ 37, and “may also contain nonvolatile oils, and in particular
nonvolatile hydrocarbon and/or silicone and/or fluorinated oils.” Id. ¶ 45.
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One nonvolatile hydrocarbon oil that can be included is shea butter oil. Id.
¶ 48.
Collin states that “[t]he nonvolatile oils may be present in the
composition according to the invention in an amount ranging from 0% to 5%
by weight.” Id. ¶ 55. “Advantageously, the composition according to the
invention contains no nonvolatile oil, the composition thus making it
possible to obtain a very good curling of the eyelashes.” Id.
The disclosure pointed to by the Examiner therefore states that
omitting, not including, a nonvolatile oil like shea oil in Collin’s
composition makes it possible to obtain good curling of the eyelashes. Collin
thus does not support the Examiner’s conclusion that it would have been
obvious to include shea butter oil in Bolognini’s composition in order to
obtain good curling of the eyelashes.
In addition, the evidence of record supports Appellant’s position that
shea butter oil is different from shea butter. Appellant’s Exhibit A states that
unrefined shea butter contains approximately 43% stearic acid, 46% oleic
acid, 7% linoleic acid, and 4% palmitic acid, while shea oil5 contains
approximately 27% stearic acid, 59% oleic acid, 9% linoleic acid, and 5%
palmitic acid. Exhibit A, pp. 3–4. Exhibit A also states, as quoted in the
Appeal Brief, that “Shea oil . . . is fractionated from Shea butter by
removing some of the stearin. As a result you get higher levels of fatty acids
like oleic and linoleic acid, and lower levels of stearic acid. Shea oil remains
liquid at 20°C.” Id. at 4.

5 The Examiner does not dispute that Collin’s “shea butter oil” is the same as
Exhibit A’s “shea oil.” See Ans. 5–7.
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Thus, the evidence of record shows that shea oil (or shea butter oil) is
a different product from shea butter. The Examiner points to Appellant’s
Specification, which states that “shea butter . . . contains, among other
things, glyceryl esters of stearic acid (in an amount of 20%–50% by weight
of shea butter) and oleic acid (in an amount of 40%–60% by weight [of]
shea butter).” Ans. 5–6, quoting Spec. ¶ 71. The Examiner reasons that the
“specification discloses shea butter contains glyceryl esters of stearic acid in
an amount form [sic] 20–50% by weight and oleic acid from 40–60% by
weight [0071]. The stearic acid range reads on both the unrefined shea butter
and the shea oil of” Exhibit A. Id. at 6.
However, regardless of what the Specification says about the potential
amounts of stearic acid and oleic acid in shea butter, Exhibit A states that
shea oil is “fractionated from Shea butter by removing some of the stearin.”
Exhibit A, p. 4. Thus, the shea butter oil disclosed by Collin is not
unfractionated shea butter but the product resulting from fractionation of
shea butter.
The Examiner also points to Masters6 as “disclos[ing] that the shea
tree comprises a mixture of edible oils and fats known as shea butter.” Ans.
6. This disclosure, however, does not support a conclusion that Collin’s shea
butter oil meets the claim limitation requiring shea butter.
We conclude that the rejection of claims 1–6 and 8–20 under
35 U.S.C. § 103 based on Bolognini and Collin is not supported by a
preponderance of the evidence, and we therefore reverse it.

6 Masters et al., “Reinforcing sound management through trade: shea tree
products in Africa,” Unasylva 219, Vol. 55, pp. 46–52 (2004)
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–20 103 Bolognini, Collin 1–6, 8–20

REVERSED