L'OREAL

Patent Trials and Appeals Board

Nov 18, 2020

2020002372 (P.T.A.B. Nov. 18, 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.
14/432,011 03/27/2015 Philippe Ilekti 445748US99PCT 3092
22850 7590 11/18/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
LAZARO, DOMINIC
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
11/18/2020 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):
OBLONPAT@OBLON.COM
iahmadi@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 PHILIPPE ILEKTI, MAITENA LEURIDAN, and
CHRYSTEL MICHALLET-GEOFFROY1
________________

Appeal 2020-002372
Application 14/432,011
Technology Center 1600
________________

Before DEBORAH KATZ, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies L’OREAL as the real party-in-
interest. App. Br. 2.
Appeal 2020-002372
Application 14/432,011

2
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–4, 7–20, 22, and 23. Specifically,
claims 1–4, 8–12, 15–20, 22, and 23 stand rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Piot (US
5,858,338, January 12, 1999) (“Piot”), T.J. Lin et al., Low Energy
Emulsification II: Evaluation of Emulsion Quality, 29 J. SOC. COSMET.
CHEM., 745–56 (1978) (“Lin”) and Bücheler et al. (US 4,446,127, May 1,
1984).2
Claims 1–4, 7–20, 22, and 23 stand rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Piot, Lin,
Bücheler, and Tournilhac et al. (US 6,793,940 B2, September 21, 2004)
(“Tournilhac”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to an emulsion-type
cosmetic composition for coating keratin fibers. Abstr.

2 Claims 1–4, 8–12, 15–17, 19–20, 22, and 23 were rejected as unpatentable
under the nonstatutory doctrine of obviousness-type double patenting over
claims 1–2, 6–9, 12, and 14 of US 9,980,895 B2, May 29, 2018 (the “’895
Patent.” Similarly claims 1–4, 8–12, 15–17, 19–20, 22, and 23 were
rejected as unpatentable under the nonstatutory doctrine of obviousness-
type double patenting over claims 1–2, 8–12, 15–17, 19–20, 22, and 23 of
US 9,980,895 B2, May 29, 2018 (the “’895 patent”). See Final Act. 2.
Both of these rejections have been withdrawn by the Examiner subsequent
to the filing of terminal disclaimers by Appellant. Ans. 3.
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3
REPRESENTATIVE CLAIM
Claim 22 is the sole independent claim and is representative of
the claims on appeal. Claim 22 recites:
Claim 22. A method for preparing a cosmetic composition,
comprising:
in a first phase,
heating at least one hard wax and optionally
additional wax at a temperature above a melting point of
the hard wax in order to melt the hard wax,
adding an emulsifying system capable of dispersing
at least the hard wax,
adding water, wherein a water content added is
greater than 25% by weight relative to the total weight of
the first phase, and a total content of the emulsifying
system is such that a weight ratio of total wax/emulsifying
system is between 2 and 6,
adding a colorant
optionally adding a compound of thickening nature,
wherein water is not present during said heating of hard
wax to avoid early evaporation, and
emulsifying the first phase with stirring at a
temperature above the melting point of the hard wax;
in a second phase,
placing at least one aqueous phase dispersion of
particles of film-forming polymers in a vessel in which the
temperature is between 0°C and 45°C, the order in which
the first phase and the second phase are prepared being of
no importance;
bringing the first and second phases together by
pouring the first phase, still at a temperature above the
melting point of the hard wax, into the vessel comprising
the second phase having a temperature between 0 and
45°C;
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allowing the temperature of the mixture of the first
and second phases to stabilize at a temperature between
0°C and 45°C; and
optionally adding a preserving system,
wherein the cosmetic composition comprises a
solids content greater than or equal to 42% and wherein
the cosmetic composition comprises a dry matter content
of particles of film-forming polymer(s) greater than or
equal to 10% by weight relative to the total weight of the
composition.

App. Br. 24–25.

ISSUES AND ANALYSES
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims on appeal are prima facie obvious over the cited prior art. We
address the arguments raised by Appellant below.

A. Claims 1–4, 8–12, 15–20, 22, and 23 over Piot, Lin, and Bücheler
Issue 1
Appellant argues that the Examiner erred because Piot teaches away
from the claimed method. App. Br. 7.

Analysis
The Examiner finds that Piot teaches cosmetic eye makeup
compositions comprising a wax micro dispersion. Final Act. 3 (citing Piot
Abstr.). The Examiner points to Examples 6 and 7 of Piot, which teach the
preparation of the cosmetic compositions, in which:
Waxes, surfactants and preservatives are melted and mixed
together at 90°C. The pigments are dispersed in the lipophile
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phase at about 90° C. The polymer is dissolved in water cold.
The aqueous phase is then heated to 90°C. and poured into the
lipophile phase with stirring, all while maintaining the
temperature at about 90°C. until homogeneous. Then the
composition is cooled and optionally passed through a grinder.

Id. at 4 (quoting Piot, col. 14, ll. 4–16). The Examiner finds that Piot
teaches preparation of the “first phase” of claim 22. Id. at 4–5 (citing Piot,
col. 13, l. 41; col. 14, ll. 4–16, Ex. 6–7). Furthermore, the Examiner finds
that Piot teaches the limitation of “adding a colorant.” Id. at 5 (citing Piot
col. 14, ll. 9–10).
The Examiner also finds that Piot teaches “placing at least one
aqueous phase dispersion of particles of film-forming polymers in a vessel in
which the temperature is between 0°C and 45°C, the order in which the first
phase and the second phase are prepared being of no importance” in the
“second phase” of claim 22, and that “the composition is cooled after the
aqueous phase is poured into the lipophile phase and stirred until
homogenous.” Id. at 5–6 (citing Piot col. 14, ll. 15–16). The Examiner
finds that Piot also teaches “allowing the temperature of the mixture of the
first and second phases to stabilize at a temperature between 0°C and 45°C.”
Id. (citing (Piot col. 14, ll. 12–15).
The Examiner finds that, although Piot teaches melting the wax in the
presence of a portion of water before the rest of the water is added (citing
Piot col. 9, ll. 4–17), Piot does not expressly teach the limitation of claim 22
reciting “adding water, wherein a water content added is greater than 25%
by weight relative to the total weight of the first phase.” Final Act. 6.
However, the Examiner finds that Lin teaches withholding a portion of the
emulsion’s external phase and first making an emulsion concentrate at an
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elevated temperature,” in which “[t]he withheld external phase is kept at a
lower temperature and added to the concentrate with mixing during the
second stage (diluting) operation,” Id. at 7 (quoting Lin 745). The
Examiner finds that Lin notes the benefits of low energy emulsification
(“LEE”) include thermal and mechanical energy conservation. Id. at 8
(citing Lin 745–46). The Examiner also finds that Lin teaches that the mean
droplet size of an emulsion is affected by both temperature and percentages
of water withheld for second-stage dilution, which is applicable to both oil-
in-water and water-in-oil emulsions. Id. (citing Lin 748, Fig. 2). The
Examiner finds that Lin further teaches that a comparison between dilution
with an external phases versus dilution with an internal phase demonstrates
that the latter results in finer droplet size. Id. (citing Lin 751).
The Examiner therefore concludes that it would have been prima facie
obvious to a person of ordinary skill in the art to modify Piot’s preparation
of its composition by adding a portion of the external water phase to the
melted wax internal phase, as taught by Lin. Final Act. 9. The Examiner
further concludes that a skilled artisan would have been motivated to do so,
with a reasonable expectation of success, because both Piot and Lin address
similar problems in the art, viz., the formulation of emulsified compositions
suitable for cosmetics, because Lin’s method is “easier to carry out” in oil-
in-water emulsions (quoting Lin, 748), and because Piot’s “aqueous
dispersion of wax particles” is an oil-in-water emulsion. Id. (quoting Piot,
col. 1, ll. 46–50).
The Examiner also finds that Piot does not expressly teach “bringing
the first and second phases together by pouring the first phase, still at a
temperature above the melting point of the hard wax, into the vessel
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comprising the second phase having a temperature between 0 and 45°C.”
Final Act. 6. However, the Examiner finds that Bücheler is directed to a
process for the preparation of pharmaceutical and cosmetic dispersions, and
teaches that “ [d]ilution with the cold outer phase, which corresponds to the
last process step, simultaneously ensures cooling of the emulsion” so that
“[s]pecial heat exchangers (coolers) can be dispensed with” Final Act. 10–
11 (quoting Bücheler, cols. 2–3, ll. 67–2; col. 3, ll. 35–53; Figs. 1–2). The
Examiner also finds that Bücheler teaches organic phases containing solid
hydrocarbons and fatty acid esters as being suitable materials for obtaining
dispersions. Id. at 11 (citing Bücheler col. 2, ll. 40–56).
The Examiner therefore concludes that a person of ordinary skill in
the art would have found it prima facie obvious to modify the teachings of
Piot by forming the melted “[w]axes, surfactants and preservatives” (see
Piot, col. 14, ll. 7-8) with water, as taught by Lin, as an emulsion
concentrate, and to transfer the emulsion concentrate to a diluting kettle
containing the remainder of the cool aqueous phase, as taught by Bücheler.
Final Act. 11. The Examiner concludes that a person of ordinary skill would
have been motivated to combine the teachings of the references as described,
because both Piot and Bücheler are concerned with similar problems in the
art, namely the formulation of emulsified compositions suitable for
cosmetics, and because it would have been well within the skill of an
ordinary artisan to select suitable temperatures for preparing a continuous
aqueous phase and dispersed organic wax phase of an emulsion in which the
organic phase contains solid hydrocarbons and fatty acid esters. Id.
Finally, the Examiner finds Piot does not expressly teach the
limitation of claim 22 reciting “wherein the cosmetic composition comprises
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a dry matter content of particles of film-forming polymer(s) greater than or
equal to 10% by weight relative to the total weight of the composition.”
App. Br. 7. However, the Examiner concludes that it would have been
prima facie obvious to a skilled artisan to modify Piot’s exemplary
embodiment teaching of the film-forming polyvinylpyrrolidone polymer
(Luviskol K90) from 6% to 10% or greater. Final Act. 12 (citing Piot col.
12, ll. 18–19, Ex. 6–7). The Examiner concludes that it would have been
obvious to a person of ordinary skill to make the modification due to Piot’s
broad teachings so as to arrive at a composition in which “[t]he film-forming
polymers are present in the composition generally in an amount ranging
from 0.1 to 25 percent by weight and preferably from 0.2 to 15 percent by
weight.” Id. (citing Piot, col. 7, ll. 11–13).
Appellant argues that Piot teaches away from the claimed method,
because Piot teaches that, in combining two “hot” phases and then cooling
the “whole” together, a stable wax microdispersion is obtained. App. Br. 7
(citing Piot col. 9, ll. 4–16). Appellant contends that Piot’s method of
combining two “hot” phases was performed as a comparative example in
Appellant’s Specification, and was demonstrated to be ineffective. Id.
(citing Spec. 56). According to Appellant, the claimed method achieves
improved properties and benefits compared to the results obtained using
different, comparable methods. Id.
Furthermore, argues Appellant, the comparative examples of Piot
demonstrate inferior results when the method does not include combining
two “hot” phases and then cooling the “whole” together. App. Br. 9 (citing
Piot col. 13, ll. 16–55). Appellant contends that the claimed method’s use of
“high” temperatures for the phase containing wax and “low” temperatures
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for the phase containing the film-forming polymer, and only pouring the first
(fatty) phase (still at a temperature above the melting point of the hard wax)
onto the second (latex) phase, results in a high solids-content composition
having unexpected benefits and properties. Id. at 10. Appellants asserts that
the claimed method achieves different results and properties compared to the
method of Piot, in which two “hot” phases are combined and then the
“whole” is cooled together. Id.
We are not persuaded by Appellant’s argument that Piot teaches away
from the claimed invention. A “teaching away” requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that “[t]he
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed”).
Appellant’s Specification provides three examples of methods in
contrast to Appellant’s claimed method: (1) where the fatty (i.e., Appellant’s
first) phase and aqueous latex (i.e., Appellant’s second) phase are both
heated to 65oC (below the 82.5oC melting point of carnauba wax) and then
combined; (2) adding the aqueous phase to the fatty phase at 30oC; and (3)
incorporating the aqueous phase at 25°C (ambient temperature) into a fatty
phase at 90°C. Spec. 56. Appellant’s Specification indicates that none of
these methods are satisfactory, and that:
Thus, not only is the temperature of the waxy phase important,
observed as having to be above the maximum melting point of
the hard wax(es)…, but it is also essential for the fatty phase to
be poured onto the “cold” latex, regulated (or thermostated) at a
temperature between 0 and 45°C, and not vice versa. It is thus
totally unexpected that, in such a situation, the latex does not
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fluctuate when the hot fatty phase is poured, at a temperature
above 85°C, onto the cold latex, and in addition that the latter is
very well incorporated into the wax particles, then producing a
mascara with a perfectly smooth texture, and which is intensely
black and glossy.

Id.
However, none of the comparative methods disclosed supra is
comparable to the method taught by Piot. Piot teaches:
Preparations 12 and 14 are produced in accordance with the
operating procedures described above for Example 1.
Preparations 11 and 13 are produced by mixing (fatty) phase I
heated to 85° C. [Aqueous] Phase II is prepared by heating water
to 85° C. and adding to it the polymers. The emulsion is produced
by adding phase II to phase I at a temperature of 82° C. Then the
titanium oxide or iron oxide is added. The temperature is
progressively reduced while continuing vigorous stirring of the
paste.

Piot col. 13, ll. 16–24. Piot thus teaches, in contrast to the comparative
methods disclosed in Appellant’s Specification, heating the compositions to
above the melting point of carnauba wax (approximately 82.5oC) and then
combining the two phases at the melting point of the wax. On the contrary,
the method taught by Piot is an alternative to the methods of the comparative
examples disclosed in the Specification. As such, they do not constitute a
teaching away. See In re Dunn, 349 F.2d 433, 438 (C.C.P.A. 1965) (holding
that teaching an alternative or equivalent method, however, does not teach
away from the use of a claimed method). Furthermore, Appellant points to
no teaching or suggestion of Piot that would directly discourage a skilled
artisan from attempting Appellant’s claimed method.
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Because the methods of Piot are not comparable to the methods of the
comparative examples of Appellant’s Specification, we are not persuaded
that a skilled artisan would have been discouraged from following the path
set out in the reference, or would have been led in a direction divergent from
the path that was taken by Appellant. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
We therefore disagree with Appellant that the references teach away
from the claimed invention.

Issue 2
Appellant argues that the Examiner erred in finding that the combined
teachings of the cited references teach the claimed method of “high”
temperatures for the phase containing wax (above the melting point of the
wax) and “low” temperatures for the phase containing the film-forming
polymer (temperature between 0o and 45°C), and pouring the first (fatty)
phase (still at a temperature above the melting point of the hard wax) onto
the second (latex) phase (temperature between 0 and 45°C). App. Br. 10.

Analysis
Appellant argues that Lin teaches withholding a portion of the
emulsion’s external phase, and making an emulsion concentrate at an
elevated temperature, and that the withheld external phase is kept at a lower
temperature (room temperature) and added to the concentrate with mixing
during the second stage. App. Br. 10–11 (citing Lin 745). Appellant asserts
that Lin is silent regarding using a high temperature that is above the melting
point of a wax; the highest temperature mentioned in Lin is 80°C. Id. at 11.
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Appellant argues that Bücheler is also silent with respect to using a
high temperature that is above the melting point of a wax, according to
Appellant, the highest temperature mentioned in Bücheler is 60°C. App. Br.
11 (citing Bücheler col. 3, ll. 35–53). Appellant contends that Lin and
Bücheler at most teach the idea of two phases, where one phase is a “hotter”
phase and the other phase is a “colder” phase, without any teaching or
suggesting that the “high temperature” phase is above the melting point of
the wax, and the “low temperature” phase is between 0o and 45°C.
We are not persuaded by Appellant’s argument. Bücheler teaches:
According to the present invention there is provided a process for
the preparation of a fine-particled, stable, pharmaceutical or
cosmetic dispersion consisting of an aqueous phase and an
organic phase which is insoluble or not completely soluble in
water, in which the entire inner phase is dispersed to a particle
size of 0.1 to 10 μm in only 5 to 40% by volume of the outer
phase for the intended finished dispersion at a temperature above
the liquefaction [i.e., melting] point of the organic phase and of
the aqueous phase, preferably at a temperature between 40° and
180° C., and the dispersion is then diluted, without changing the
particle size, with the remaining 60 to 95% by volume of the
outer phase, the temperature of which outer phase is below the
solidification point of the inner phase.

Bücheler col. 1, ll. 47–60 (emphases added).3 In other words, Bücheler
expressly teaches the addition of a fatty phase (Appellant’s claimed phase 1)
heated to a temperature above the melting point of the wax to an aqueous
phase (Appellant’s phase 2) that is at a temperature cooler than the

3 Bücheler notes that: The “inner phase” is also called the “disperse phase”
and the “outer phase” is also called the “continuous phase”. In cosmetic
dispersions, the outer (continuous) phase is generally the aqueous phase
and the inner (disperse) phase is generally the fatty phase.
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solidification point of the wax. We conclude that a person of ordinary skill
would understand, upon comprehending the teachings of Bücheler, that for a
fatty phase containing carnauba wax, a commonly used wax in cosmetic
preparations (see, e.g., Piot col. 12, ll. 10–23), this would require a
temperature for the fatty phase at least above 82.3oC (the liquefaction
temperature of carnauba wax; see Spec. 56) and a temperature for the liquid
phase at least below 82.3oC. We find that this corresponds to Appellant’s
limitation reciting: “bringing the first and second phases together by pouring
the first phase, still at a temperature above the melting point of the hard wax,
into the vessel comprising the second phase having a temperature between 0
and 45°C.”

Issue 3
Appellant argues that the Examiner erred in failing to properly
consider the comparative examples in Appellant’s Specification and the
evidence of record. App. Br. 13.

Analysis
Appellant argues that, in the Advisory Action, the Examiner has taken
the position that the comparative examples disclosed by Appellant’s
Specification do not sufficiently represent Piot, because Piot involves both a
fatty phase and aqueous phase heated to above the melting point of the wax
(e.g., 90°C). App. Br. 13. According to Appellant, the Examiner allegedly
misses the point that Piot requires a method in which two “hot” phases are
combined and then the “whole” is cooled together, which is not Appellant’s
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claimed method. Id. Therefore, argues Appellant, it would not have been
prima facie obvious to modify the conditions of the Piot method. Id.
Appellant also repeats the argument supra that neither Lin nor
Bücheler discloses or suggests the claimed method of “high” temperatures
for the phase containing wax (above the melting point of the wax) and “low”
temperatures for the phase containing the film-forming polymer (i.e., a
temperature between 0o and 45°C), and pouring the first (fatty) phase (still at
a temperature above the melting point of the hard wax) onto the second
(latex) phase (temperature between 0o and 45°C).
We are not persuaded by Appellant’s arguments. As we have
explained, and as Appellant acknowledges, the comparative examples
disclosed by the Specification are not comparable to the method taught by
Piot, and that Piot, consequently, does not teach away from the claimed
invention. Furthermore, and as we also have explained supra, the Examiner
relies upon Bücheler as teaching the limitation reciting “bringing the first
and second phases together by pouring the first phase, still at a temperature
above the melting point of the hard wax, into the vessel comprising the
second phase having a temperature between 0 and 45°C.” We emphasize
that “one cannot show non-obviousness by attacking references individually
where … the rejections are based on combinations of references.” In re
Keller, 642 F.2d 413, 426 (C.C.P.A. 1981). Rather, “the test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In the appeal before us, we agree with the Examiner that a skilled
artisan would have been motivated to substitute the method of Bücheler for
that of Piot, because Bücheler teaches that, compared to other methods:
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The process according to the invention is thus on a procedure in
which emulsion concentrates with a very high content of disperse
phase are prepared at elevated temperatures and the particle size
distribution, once achieved, is frozen by introducing the
emulsion concentrate into the cold remainder of the aqueous
phase. Surprisingly, it has been found that the finenesss of these
emulsion concentrates is better than, or at least as good as, the
fineness of the low-concentration emulsions prepared by
customary processes.

Bücheler cols. 1–2, ll. 66–7. We consequently affirm the Examiner’s
rejection of claims 1–4, 8–12, 15–20, 22, and 23 upon this ground.

B. Claims 1–4, 7–20, 22, and 23 over Piot, Lin, Bücheler, and Tournilhac
Issue
Appellant argues that the Examiner erred because the combined cited
prior art neither teaches nor suggests the several additional limitations of
dependent claims 7, 13, and 14. App. Br. 17.

Analysis
Claim 7 requires that the hard wax be introduced in the form of a pre-
prepared aqueous microdispersion of particles of the hard wax, and that the
particles of the hard wax and of the film-forming polymer have an average
size expressed as volume-average effective diameter D[4, 3] of less than or
equal to 5 μm. App. Br. 17.
Claim 13 requires the particles of the film-forming polymer to be
selected from the group consisting of synthetic free-radical polymers,
synthetic polycondensate polymers, polymers of natural origin, and mixtures
thereof. App. Br. 17.
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Claim 14 requires that the particles of the film-forming polymer to be
selected from the group consisting of dispersions of acrylic polymers,
dispersions of polyurethane, dispersions of sulfopolyesters, vinyl
dispersions, dispersions of polyvinyl acetate, dispersions of
vinylpyrrolidone/dimethylaminopropylmethacrylamide/lauryldimethyl-
propylmethacrylamidoammonium chloride terpolymer, dispersions of
polyurethane/polyacrylic hybrid polymers, dispersions of core-shell
particles, and mixtures thereof. App. Br. 17–18.
The Examiner finds that Tournilhac is directed to “a cosmetic
composition for coating keratin fibers, comprising a dispersion of particles
in a cosmetically acceptable medium, the particles comprising at least one at
least external supple phase, comprising at least one supple polymer… and at
least one at least internal rigid phase, which is an amorphous material….”
Final Act. 19 (quoting Tournilhac Abstr.).
More specifically, the Examiner finds that Tournilhac teaches that the
particles comprising at least one at least external supple phase and at least
one at least internal rigid phase are “a dispersion of multiphase particles,” in
which “[t]he particles containing rigid and supple phases generally have a
size ranging from 1 nm to 10 μm and preferably ranging from 10 nm to 1
μm.” Final Act. 19 (citing Tournilhac, col. 1, ll. 46–47; cols. 1–7, ll. 44–53).
The Examiner further finds that Tournilhac teaches that the morphology of
the supple and rigid phases of the dispersed particles may be, for example, of
core-shell type, with shell portions completely surrounding the core, but also
of core-shell type with a plurality of cores, or an interpenetrating network of
phases. Id. (citing Tournilhac col. 4, ll. 44–46). The Examiner finds that
Tournilhac further teaches an exemplary composition containing a
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dispersion of multiphase particles. Id. (citing Tournilhac, cols. 18–19, ll.
10–19, Ex. 1).
The Examiner finds that Tournilhac therefore teaches, e.g., a “latex”
or “aqueous dispersion of polymer particles as may be obtained by emulsion
polymerization of at least one monomer.” Final Act. 19 (citing Tournilhac,
col. 5, ll. 29–31).
The Examiner therefore finds that Tournilhac teaches a “dispersion of
multiphase particles’ which ‘have a size ranging from 1 nm to 10 μm and
preferably ranging from 10 nm to 1 μm,’ e.g., ‘latex of core/shell structure
[…] of inner rigid phase (core) formed […] of methyl methacrylate
[…and…] outer supple phase […] of n-butyl acrylate, […].’” Final Act. 19–
20 (citing Tournilhac, col. 18, ll. 12–21, Ex. 1; col. 5, ll. 29–31; col. 1, ll.
46–47; col. 4, ll. 44–46). From these findings of fact, the Examiner reasons
that Tournilhac teaches the following limitations of claims 7, 13, and 14:
1. The “synthetic free-radical polymers" of claim 13;

2. The “dispersions of core-shell particles” of claim 14;

3. The “particles of […] the film-forming polymer […] hav[ing] an
average size expressed as volume average effective diameter D[4,3] of
less than or equal to 5 μm” of claim 7; and

4. The “particles of […] the film-forming polymer” of claims 7–8, 11
and 13–14.

Final Act. 20.
The Examiner concludes that a skilled artisan would have found it
prima facie obvious to modify Piot’s preparation of an eye makeup
composition with the methods of Lin and Bücheler and, further, to have
incorporated a “dispersion of multiphase particles” or “additional film-
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forming polymer[s],” as taught by Tournilhac. Final Act. 22. The Examiner
reasons that a person of ordinary skill in the art would have been motivated
to do so, and with a reasonable expectation of success, because both Piot and
Tournilhac are concerned with similar problems in the art, namely the
formulation of a mascara. Id. Furthermore, reasons the Examiner, it would
have been well within the skill of the ordinary artisan to select suitable film-
forming polymers for incorporation into a mascara: doing so, the Examiner
concludes, amounts to no more than combining prior art elements according
to known methods to yield predictable result. Id.
Appellant argues that Tournilhac teaches that the rigid phase and
supple phase are incompatible, and may be of the core-shell type. App. Br.
18 (citing Tournilhac col. 4, ll. 56–67). Conversely, argues Appellant, Piot
is directed to stable wax microdispersions, in which a wax microemulsion is
formed in a continuous aqueous phase and then cooled to ambient
temperature. Id. (citing Piot col. 1, ll. 46–55, col. 9, ll. 4–17). Appellant
asserts that there would have been no motivation for a person of ordinary
skill in the art to modify the method of Piot with the teachings of Tournilhac
to arrive at the method of claim 22 (or the methods of dependent claims 7,
13, and 14). Id.
The Examiner responds that Tournilhac is relied upon to the extent
that Piot, Lin, and Bücheler do not expressly teach a cosmetic composition
made by a method comprising particular film-forming polymers of a
particular size in order to meet the requirements of claims 7, 13, and 14.
We agree with the Examiner. Appellant first repeats their argument
presented supra, arguing additionally that Tournilhac fails to remedy the
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19
alleged deficiencies of Piot, Bücheler, and Lin. We have explained why we
are not persuaded by Appellant’s arguments in this respect.
With respect to claims 7, 13, and 14, which Appellant argues
separately, Tournilhac teaches that the state of the art is such that
“[c]ompositions for coating the eyelashes, known as mascara, generally
comprise, in a known manner, at least one wax and at least one film-forming
polymer to deposit a makeup film on the eyelashes and coat them.”
Tournilhac col. 1, ll. 20–23. This is consistent with the teachings of Piot and
Bücheler, as we have explained supra. More specifically, Tournilhac
teaches:
[A] composition for coating keratin fibers, comprising a
dispersion of multiphase particles in a cosmetically acceptable
medium, the multiphase particles comprising at least one supple
phase at least on the outside, comprising at least one supple
polymer having at least one glass transition temperature of less
than or equal to 60° C. and at least one rigid phase at least on the
inside, the rigid phase being an amorphous material having at
least one glass transition temperature of greater than 60° C., the
supple polymer being at least partially attached by chemical
grafting onto the rigid phase.

Id. at col 1, ll. 45–56.
Appellant’s dependent claims 13 and 14 recite that “the particles of
the film-forming polymer are selected from the group consisting of,”
respectively, “synthetic free-radical polymers, synthetic polycondensate
polymers, polymers of natural origin, and mixtures thereof” and “dispersions
of acrylic polymers, dispersions of polyurethane, dispersions of
sulfopolyesters, vinyl dispersions, dispersions of polyvinyl acetate,
dispersions of vinylpyrrolidone/dimethylaminopropylmethacrylamide/
lauryldimethyl-propylmethacrylamidoammonium chloride terpolymer,
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20
dispersions of polyurethane/polyacrylic hybrid polymers, dispersions of
core-shell particles, and mixtures thereof.”
Tournilhac teaches that, in addition to the multiphase polymeric
particles, its composition may comprise “additional solid particles
comprising a wax with a hardness ranging from 6.5 MPa to 20 MPa.”
Tournilhac col. 8, ll. 11. Consequently, we find that Tournilhac teaches both
a dispersion of polymer particles and hard wax particle phases, as recited in
claim 22. With respect to the multiphase polymeric dispersions, Tournilhac
teaches:
The supple polymer may be chosen from free-radical polymers,
polycondensates and silicone polymers. The supple polymer may
be chosen from polyacrylics, polymethacrylics, polyamides,
polyurethanes, polyolefins, especially polyisoprenes,
polybutadienes and polyisobutylenes (PIB), polyesters, polyvinyl
ethers, polyvinylthioethers, polyoxides, polysiloxanes and
especially polydimethylsiloxanes (PDMS), and combinations
thereof.
And:
The amorphous material of the rigid phase may be a polymer,
especially a block and/or random polymer. It may be a polymer
chosen from polyacrylics, polymethacrylics such as, for
example, poly((meth)acrylic acid), poly(meth)acrylamides,
polyvinyls, polyvinyl esters, polyolfeins, polystyrenes, polyvinyl
halides, for instance polyvinyl chloride (PVC), polyvinylnitriles,
polyurethanes, polyesters, poly amides, polycarbonates,
polysulfones, polysulfonamides, polycyclics containing a
carbon-based ring in the main chain, for instance polyphenylenes
or polyoxyphenylenes, and combinations thereof.

Tournilhac col. 2, ll. 33–40, 46–63. The italicized passages of Tournilhac
quoted supra correspond to those cited in claims 13 and 14.
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21
We acknowledge that the polymer phase of claim 22 does not
expressly recite multiphasic polymer particles in the polymer phase as taught
by Tournihlac, reciting only “at least one aqueous phase dispersion of
particles of film-forming polymers.” However, Tournilhac teaches that: “In
one embodiment of the invention, the multiphase particles containing rigid
and supple phases are film-forming, and may have a minimum film-forming
temperature (MFF1) of less than or equal to about 30° C.” Tournilhac, col.
4, ll. 33–36. Moreover, with respect to the multiphasic properties of the
polymeric particles, which are not expressly recited in the claims,
independent claim 22 recites: “A method for preparing a cosmetic
composition, comprising…” (Emphasis added). “In the parlance of patent
law, the transition “comprising” creates a presumption that the recited
elements are only a part of the device, that the claim does not exclude
additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech
Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001).
Consequently, we conclude that multiphasic polymer particles are not
excluded.
Finally, with respect to the diameter of the hard wax particles, as
recited in claim 7, the Examiner finds that Piot teaches that: “[t]he particles
of the wax microdispersion have size lower than 1 μm, preferably lower than
0.5 μm,” and “consist essentially of wax or a mixture of waxes.” Final Act.
18 (quoting Piot, col. 1, ll. 59–61). Furthermore, Tournilhac expressly
teaches: “The additional wax present in the composition may be dispersed in
the form of particles in an aqueous medium. These particles may have an
average size ranging from 50 nm to 10 μm and preferably from 50 nm to 3.5
μm.” Tournilhac col. 12, ll. 22–25. Tournilhac further teaches that: “The
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22
particles containing rigid and supple phases generally have a size ranging
from 1 nm to 10 μm and preferably ranging from 10 nm to 1 μm.” Id. at col.
4, ll. 44–46. We consequently agree with the Examiner that the ranges of
particle sizes taught by Piot and Tournilhac encompass the claimed range of
“wherein the particles of the hard wax and of the film-forming polymer have
an average size expressed as volume-average effective diameter D[4,3] of
less than or equal to 5 μm,” as recited in dependent claim 7.
We consequently affirm the Examiner’s rejection of claims 1–4, 7–20,
22, and 23 upon this ground.

CONCLUSION
The Examiner’s rejection of claims 1–4, 7–20, 22, and 23 under 35
U.S.C. § 103 is 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).

AFFIRMED
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 8–12,
15–20, 22–
23
103 Piot, Bücheler, Lin

1–4, 8–12,
15–20, 22–
23

1–4, 7–20,
22–23
103 Piot, Bücheler, Lin,
Tournilhac
1–4, 7–20,
22–23

Overall
Outcome
1–4, 7–20,
22–23