L'OREAL

Patent Trials and Appeals Board

Jan 8, 2021

2020003241 (P.T.A.B. Jan. 8, 2021)

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.
15/108,302 06/26/2016 Henri Samain 5289/14US 5356
19148 7590 01/08/2021
Shumaker, Loop & Kendrick, LLP
101 South Tryon Street
Suite 2200
Charlotte, NC 28280-0002
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
01/08/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENRI SAMAIN and FRANCK GIRON
____________

Appeal 2020-003241
Application 15/108,302
Technology Center 3700
____________

Before JUSTIN BUSCH, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–11 and 14–18.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
L’OREAL. Appeal Br. 3.
2 Dependent claims 12 and 13 have been indicated as allowable if rewritten
in independent form. Final Act. 4.
Appeal 2020-003241
Application 15/108,302

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CLAIMED SUBJECT MATTER
The Appellant’s invention generally “relates to makeup application by
transfer” and more particularly relates to a “process for making up an area of
human keratin materials using a makeup device.” Spec. 1, ll. 3, 30–31.
Claims 1, 4, and 11 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (with
added lettered bracketing for reference):
1. A process for making up an area of human keratin materials
using a makeup device comprising
[(a)] - a substrate having at least one transfer surface, and
[(b)] - a coat of cosmetic colouring ink borne by the transfer
surface and obtained by printing, using at least one digital printer, and
[(c)] - a cosmetic coating of a cosmetic composition comprising
an oil, the cosmetic coating being borne by the transfer surface,
[(d)] the cosmetic coating being at least partially superposed on
the coat of ink and laying above and/or below the coat of ink,
[(e)] the process comprising the step of simultaneously
transferring onto the area to be made up all or part of the coat of ink
and all or part of the coating superposed thereon.
Appeal Br. 19 (Claims App.).

REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Dobler et al. (“Dobler”) US 2012/0244316 A1 Sept. 27, 2012
Abergel WO 2006/128737 A1 Dec. 7, 2006

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THE REJECTION
Claims 1–11 and 14–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dobler and Abergel.

OPINION
The Appellant argues the pending claims as a group. See Appeal
Br. 12–15 (arguing independent claims 1, 4, and 11 together), 16–17 (relying
only on those arguments for the dependent claims). We select independent
claim 1 as representative of the group. The remaining claims stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Appellant contends that the Examiner’s rejection of independent
claim 1 is in error because the combination of Dobler and Abergel does not
disclose or suggest the substrate having a coat of cosmetic ink, a cosmetic
coating comprising oil that is at least partially superimposed on and laying
above and/or below the ink coat, and all or part of both the ink coat and
cosmetic coating simultaneously transferring onto an area, as recited in
limitations (b) through (e). See Appeal Br. 12– 15. We disagree.
The Examiner finds, in relevant part, that Dobler teaches a substrate
with a transfer surface bearing a coat of cosmetic ink (element 14) and a
cosmetic coating of a fragrance comprising an oil (element 15), the cosmetic
coating at least partially superimposed on the coat of ink and laying above
and/or below the ink coat, and simultaneously transferring all or part of the
ink coat and cosmetic coating onto an area. See Final Act. 2–3 (citing
Dobler ¶ 61, Fig. 9); see also Ans. 6–7. The Examiner relies solely on
Dobler for teaching these limitations, relying on Abergel “merely as a
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teaching reference to show that screen printing as taught by Dobler and
digital printing were known alternative[s] in the art of cosmetic printing.”
Ans. 5; see also Final Act. 4.
Dobler discloses a “body art transfer device [that] has a base support
with a substantially nonabsorbent surface, and a coating of a body art
composition.” Dobler, Abstract. The device allows a consumer to apply
body art temporarily upon their skin. Id. ¶ 10. “The device also retains,
protects, and transfers a detailed design from a planar substrate onto a
person’s skin.” Id. The body art transfer device “broadly comprises a base
support having a nonabsorbent surface, and a coating of an easily
transferable body art composition coating.” Id. ¶ 11. The formulation of
ingredients share similarities to color cosmetics. Id. ¶ 41. In one
embodiment, the formulation that includes pigments, oils, and waxes is
augmented with fragrance that includes essential oils. See id. In an
embodiment, a textured barrier film applied to the cover forms coated
surface 14 that “may also have porosity that defines a pattern of texture for
retaining liquid fragrance material.” Id. ¶ 60. Figure 9 “shows the
interaction of body art composition with the surface texture in a pattern
similar to” the random dot pattern shown in Figure 8 of the base coating
layer applied to the substrate as the coated surface 14. Id. ¶¶ 60, 61. The
view of Figure 9 (reproduced below) “generally show[s] individual droplets
of fragrance secured within the texture, particularly its surface features.” Id.
¶ 61.
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Figure 9, depicting “in a detailed view the interaction of liquid fragrance
materials with adjoining surface texture.” Id. ¶ 36.
This view is highly magnified, generally showing individual
droplets of fragrance secured within the texture, particularly its
surface features. The base support 3, often paper, provides a
textured mounting surface, as at 14, to which is applied the body
art composition, as at 15, here shown between individual cells of
texture, as at 14. Opposite the mounting surface or texture 14,
the invention has its cover 4a. The features of the texture contact
the cover and seal the gaps between individual textures. The
individual textures modify the behavior of the deposited body art
composition, such as at 15 between two adjacent textures 14, so
as to defeat capillary action and wicking of any oils from the
composition into the base support 3. The textured surface thus
occludes the migration, or flow, of the body art composition from
its application location through the smooth and the textured
surfaces as at 13, 14 and then out of the product sampler. . . . In
an embodiment with two separate films as the cover and base
support, the separate films with the appropriate surface coatings
and textures avoid or retard the capillary infiltration of the body
art composition into the fibers of the sampler. Further, because
the textured surface contains the body art composition, the
inability of the fragrance to flow along with its inherent surface
tension causes the fragrance material to substantially repose and
remain within its locations inside the texture of the barrier
coating supplied upon the textured surface 14. Thus, the base
support and cover create an occlusive, cohesive seal between the
surfaces at each location where body art composition is applied
thus removing the need for any perimeter seal.
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Id. “[T]he end user may execute a clean transfer of the cosmetic from the
applicator to the skin. This is accomplished by applying direct pressure on
the applicator to the skin.” Id. ¶ 63. “The body art transfer device is
uniquely capable of retaining a formulation upon a substrate beneath a cover
and then depositing the formulation in artistic forms upon the skin of a
person.” Id. ¶ 64. As such, Dobler teaches that body art composition 15
applied to textured mounting surface 14 is a formulation that is transferred
upon a person’s skin.
The Appellant’s argument that “the textured surface [14] of DOBLER
does not contain oil such as those recited in the claimed cosmetic coating”
(Appeal Br. 13) is not persuasive of error because the Examiner does not
rely on Dobler’s surface 14 as the cosmetic coating comprising oil. As
discussed above, the Examiner relies on Dobler’s surface 14 as the coat of
ink and on Dobler’s body composition 15 as comprising oil. See Final
Act. 2–3, Ans. 6. The Appellant does not contest the finding that textured
surface 14 contains ink, and we note that Dobler’s composition 15 comprises
a fragrance that includes essential oils. See supra; Dobler ¶¶ 41, 49, 61.
Composition 15 (with the oil) is also borne on the surface when secured
atop/within textured surface 14. See id.
For these same reasons, we are also unpersuaded of error by the
Appellant’s argument that “in pending claim[] 1, . . . in addition to the coat
of cosmetic colouring ink, a cosmetic coating of a cosmetic composition that
contains oil is also borne by the transfer surface. There is absolutely no
mention of such a cosmetic coating in DOBLER.” Appeal Br. 14. As
discussed above, the Examiner relies on Dobler’s body composition 15
containing oil that is borne by mounting surface 14 containing ink. This
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finding is supported. See Final Act. 2–3, Ans. 6, Dobler ¶¶ 10, 11, 41, 60,
61.
We also find unpersuasive of Examiner error the Appellant’s
argument that “the purpose of DOBLER’s textured surface is to defeat
capillary action and wicking of any oils to occlude the migration of the body
art composition out of the transfer device (see DOBLER’s paragraph [061]
evidencing this fact).” Appeal Br. 13; see also id. at 14 (“[i]n pending
claim[] 1 . . . , the coat of ink is in contact with the cosmetic coating of
cosmetic composition containing an oil while in DOBLER the body art
coating is in contact with a surface that repels oil, which deters from
incorporating an oil in such a surface”). Rather, Dobler discloses that the
individual textures prevent the oils from being wicked into the base support
and that textured surface 14 allows body art composition 15 (containing
fragrance oil) to remain within its locations inside the barrier coating, with
base support 3 and cover 4a creating a cohesive seal. See supra; Doblin
¶¶ 41, 49, 61. Textured surface 14 does not repel oil, but creates a barrier
between the formulation containing oil (i.e., ink with fragrance) that is
within textured surface 14 and base layer 3 on the other side of textured
surface 14. See id. ¶ 61.
The Appellant also argues that “in direct contrast to the transfer
features recited in claim[] 1 . . . (i.e., simultaneously transferring onto the
area (P) to be made up all or part of the coat of ink (4) and all or part of the
coating superposed thereon), only DOBLER’s body art coating is intended to
be transferred to the skin.” Appeal Br. 14; see also id. at 15 (“in DOBLER,
only the body art coating is transferred to the skin”). We are not persuaded
of error by this argument. The Appellant does not explain why Dobler’s
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teaching that the retained formulation (comprising textured surface 14
containing ink and body composition 15 containing oil) being deposited
upon skin (see supra; Dobler ¶¶ 41, 49, 61, 63, 64; Ans. 6–7) does not meet
the claimed simultaneous transfer of the coat of ink and the cosmetic coating
comprising oil.
Having not been persuaded of deficiencies in the Examiner’s reliance
on Dobler, and because the Examiner relies on Abergel for teaching only
digital printing, we find unpersuasive of Examiner error the Appellant’s
arguments that Abergel fails to cure the deficiencies of Dobler. See Appeal
Br. 15–16.
For the above reasons, we are not persuaded of Examiner error, and
we sustain the Examiner’s rejection under 35 U.S.C. § 103 of independent
claim 1 and thus also the rejection of claims 2–11 and 14–18 that stands with
that of claim 1.
CONCLUSION
The Examiner’s decision to reject claims 1–11 and 14–18 under
35 U.S.C. § 103 is sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 14–18 103 Dobler, Abergel 1–11, 14–18
Overall
Outcome
1–11, 14–18
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Application 15/108,302

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED