L'OREALDownload PDFPatent Trials and Appeals BoardJan 8, 20212020003241 (P.T.A.B. Jan. 8, 2021) Copy Citation 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 2 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 Appeal 2020-003241 Application 15/108,302 3 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 Appeal 2020-003241 Application 15/108,302 4 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. Appeal 2020-003241 Application 15/108,302 5 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. Appeal 2020-003241 Application 15/108,302 6 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 Appeal 2020-003241 Application 15/108,302 7 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 Appeal 2020-003241 Application 15/108,302 8 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 Appeal 2020-003241 Application 15/108,302 9 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 Copy with citationCopy as parenthetical citation