L'OREAL

Patent Trials and Appeals Board

Mar 30, 2022

2022000478 (P.T.A.B. Mar. 30, 2022)

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. 14/409,066 12/18/2014 Gaelle Moneuze 085507-536509 1108 30678 7590 03/30/2022 POLSINELLI PC (DC OFFICE) PO Box 140310 Kansas City, MO 64114-0310 EXAMINER SHIN, MONICA A ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GAELLE MONEUZE and FLORENCE BARRAQUET Appeal 2022-000478 Application 14/409,066 Technology Center 1600 BEFORE DONALD E. ADAMS, JOHN E. SCHNEIDER, and RYAN H. FLAX, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s Final decision to reject claims 1, 3-10, 12-16, and 18-23. We have jurisdiction under 35 U.S.C. § 6(b).2 We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies L’OREAL as the real party in interest. Appeal Br. 2. 2 A Hearing was held for this appeal on March 4, 2022. A copy of the Hearing transcript has been added to the file. Appeal 2022-000478 Application 14/409,066 2 CLAIMED SUBJECT MATTER The claims are directed to a translucent cosmetic composition in the form of an oil-in-water emulsion intended for keratin materials, in particular the skin and the lips, the hair and the nails. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cosmetic composition in the form of an oil-in-water emulsion and being an emulsified gel of translucent appearance having a transmittance of light greater than 25% as measured in the visible range between 400 and 800 nm at ambient temperature and atmospheric pressure using a spectrometer, which composition comprises: (1) a dispersed fatty phase comprising at least one oil; (2) a continuous aqueous phase comprising at least one hydrophilic thickening polymer, wherein the at least one hydrophilic thickening polymer is not amphiphilic; and (3) hydrophobic silica aerogel particles; the ratio of the amount by weight of silica aerogel particles to the amount by weight of oil(s) being greater than 0.06; the composition being free of surfactant(s), wherein the hydrophobic silica aerogel particles are present in a content ranging from 0.001 % to 10% by weight relative to the total weight of the composition and the amount of the fatty phase is 0.1 % to 20% by weight relative to the total weight of the composition. Appeal Br. 28, Claims App’x. Appeal 2022-000478 Application 14/409,066 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sebillote-Arnaud US 5,879,718 Mar. 9, 1999 Ostergaard et al., Next Generation Rheology Control Brings New Formulating Options for Personal Care, Dow Corning Corp. (2012) hereinafter “Ostergaard” Dow Corning VM-2270 Aerogel Fine Particles, Dow Corning Corporation, Product Information, Ref. No. 27-1215B-01 (2007) hereinafter “Dow Corning” REJECTION The Examiner has rejected claims 1, 3-10, 12-16, and 18-23 under 35 U.S.C. § 103(a) as unpatentable over Sebillote-Arnaud in view of Dow Corning as evidenced by Ostergaard. OPINION This is the second time this application has been before us on appeal. In our prior decision we affirmed the Examiner’s rejection of the then pending claims over the same art at issue here. Ex parte Moneuze, Appeal 2018-003723 at 1-2 (May 14, 2019). Appellant subsequently added limitations further defining how translucence is to be measured and what constitutes translucence, and adding limitations calling for specific amounts of aerogel particles and the fatty phase. Compare Appeal Br. 18 with Appeal Br. Appendix C 2. The Examiner finds Sebillote-Arnaud teaches a cosmetic or dermatological composition comprising a surfactant-free, oil-in-water emulsion containing at least one crosslinked poly(2-acrylamido-2- Appeal 2022-000478 Application 14/409,066 4 methylpropanesulphonic acid) polymer neutralized to at least 90%. Final Act. 3. The Examiner finds Sebillote-Arnaud teaches the fatty phase comprises from 0 to 50% of the composition and may contain one or more oils preferably selected from: volatile or nonvolatile silicones, mineral oils, oils of animal origin, oils of plant origin, synthetic oils, fluoro oils and perfluoro oils, and fatty acid esters. Id. at 4. The Examiner finds Sebillote-Arnaud teaches the composition may contain adjuvants common to cosmetics such as thickeners or gelling agents. Id. The Examiner finds Sebillote-Arnaud's Example 3 exemplifies a refreshing fluid composition for greasy skins in the form of a homogenous, stable, translucent fluid comprising volatile silicone in a fatty phase and the crosslinked poly(2-acrylamido- 2-methylpropanesulphonic acid) polymer described above in the aqueous phase. The volatile silicone is in the composition in an amount of 5% by weight of the composition (5g out of the 100g total), and the crosslinked poly(2-acrylamido-2- methylpropanesulphonic acid) polymer is in the composition in an amount of 0.5% by weight (0.5g out of the 100g total) (col.9, lines 1-19). Id. The Examiner finds Sebillote-Arnaud teaches the compositions may be in the form of a gel and may be applied to the skin, the hair, the scalp, the eyelashes, the eyebrows, the nails, or the mucous membranes. Id. at 4-5. The Examiner finds Dow Corning teaches hydrophobic silicon aerogels. Id. at 5. The Examiner finds Dow Corning teaches the aerogel particles can be used as a thickening agent and have advantages such as superior oil and sebum absorption, highly efficient viscosity enhancement of Appeal 2022-000478 Application 14/409,066 5 the oil phase, and fragrance retention. Id. at 5-6. The Examiner finds Dow Corning teaches that the aerogel particles can be incorporated into the oil phase of an emulsion at amounts ranging from 0.5 to 5% of the composition. Id. at 6. With respect to the amounts of aerogel particles and the fatty phase, the Examiner finds the amounts recited in the claims overlaps with the ranges taught in Dow Corning and Sebillote-Arnaud. Id. at 6-7. The Examiner finds that the composition that would result from the combination of the cited references would exhibit the recited translucence. Id. at 7-8. The Examiner concludes One of ordinary skill in the art would have found it prima facie obvious to combine the teachings of the prior art references at the time the instant invention was made to arrive at the instant invention because both prior art references are directed to cosmetic compositions for application to the skin or keratin material (e.g. hair) and components advantageous for such compositions. Specifically, as discussed above, Sebillote- Arnaud’s Example 3, for example, is a refreshing, translucent fluid for greasy skins. In light of Dow Corning’s disclosure that their aerogel fine particles are capable of absorbing nonpolar and polar oils and many lipophilic materials including sebum, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to add Dow Corning’s aerogel fine particles discussed above into Sebillote-Amaud's cosmetic compositions (e.g. Sebillote-Amaud's Example 3), in Dow Corning’s disclosed art recognized amounts, in order to obtain the benefits of the aerogel fine particles discussed above, such as superior oil and sebum absorption. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Sebillote-Arnaud discloses emulsion cosmetic compositions for skin care and hair care and allows for the inclusion of adjuvants into their compositions, and Dow Appeal 2022-000478 Application 14/409,066 6 Corning discloses that their aero gel fine particles are used in emulsions, in particular added to the oil phase, and find applications in skin care and hair care. Id. at 6. Appellant contends Sebillote-Arnaud does not teach or suggest the inclusion of hydrophobic silica aerogel particles or a translucent oil-in-water emulsified gel. Appeal Br. 9. Appellant points to the Declaration of Ms. Barraquet,3 where she demonstrates that the composition in example 3 of Sebillote-Arnaud is in fact opaque and not translucent. Id. at 9-10. Appellant also contends that the composition reported in Example 3 of Sebillote- Arnaud is not a gel. Id. at 13. Appellant contends that the addition of the silica aerogel in the claimed ratio results in transforming an opaque composition into a translucent composition and that this result is unexpected. Id. at 14. Appellant contends one skilled in the art would not have been motivated to combine the teachings of the references to produce a translucent gel. Id. at 15. Appellant contends that the composition of Sebillote-Arnaud and the aerogel particles of Dow Corning are both opaque and that one skilled in the art would not have expected the combination of the two to result in a translucent composition. Id. at 15-16. Appellant contends the Examiner is improperly relying on inherency in that the Examiner has not given a basis in fact or technical reasoning why the inherent characteristic necessarily flows from the teachings of the prior art. Id. at 19-20. 3 Declaration Under 37 C.F.R. § 1.132, filed October 14, 2019 (“Barraquet Decl.”). Appeal 2022-000478 Application 14/409,066 7 We adopt the Examiner’s findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection. We find the Examiner has established a prima facie showing that the subject matter of the claims would have been obvious over Sebillote-Arnaud combined with Dow Corning to a person of ordinary skill in the art at the time the invention was made. Appellant has not responded with evidence showing, or persuasively argued, that the Examiner’s determinations on obviousness are incorrect. Only those arguments made by Appellant in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). We have identified claim 1 as representative, and Appellant argues all claims together as a group; therefore, all claims fall with claim 1. We address Appellants’ arguments below. We have considered Appellant’s arguments with respect to the teachings of Sebillote-Arnaud and are not persuaded that the rejection is in error. Although we agree with Appellant that Ms. Barraquet’s declaration shows that example 3 of Sebillot-Arnaud appears to produce (according to her team’s efforts) an opaque composition, that does not demonstrate the rejection is improper. The rejection is based on the combination of Sebillote- Arnaud and Dow Corning. Thus, the question is whether the combination of the references would result in a translucent composition. Given that the Examiner has provided good reasons the ordinarily skilled artisan would have made the proposed combination of references and would have reasonable expected success (Final Action 6-7), and that the proposed combination the references would result in a composition meeting all the claim limitations other than the resulting translucent appearance, the burden Appeal 2022-000478 Application 14/409,066 8 shifts to the Appellant to show that the combination would not have the recited properties. After a prima facie case is made out under § 103, the burden shifts to the applicant to show a difference between the prior art compounds and the claimed compound, as the PTO lacks the resources to do experimental comparisons. In re Best, 562 F.2d 1252, 1254-55, (CCPA 1977) (“[M]ere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art.”). In addition, as the Examiner points out Although the cited prior art references do not explicitly disclose that using a specific SS/O ratio will provide a translucent appearance to an opaque emulsion, the fact that Appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, note MPEP 2141(11): “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” Furthermore, while Appellant may have discovered a new property resulting from using a specific SS/O ratio (i.e. providing a translucent appearance to an opaque emulsion), note MPEP 2112(1): “‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” Appeal 2022-000478 Application 14/409,066 9 Ans. 12-13. We are similarly unpersauded by Appellant’s argument that the rejection errs because Example 3 of Sebillote-Arnaud is not a gel. Appeal Br. 13. Sebillote-Arnaud teaches repeatedly that its compositions can be formulated as gels. Sebllote-Arnaud col. 6, ll. 1-4, ll. 15-17. With respect to Appellant’s argument regarding lack of motivation to combine the references, we note that the inventors’ motivation is not controlling. “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Here, we agree with the Examiner that one skilled in the art would have been motivated to add the silica aerogel particles of Dow Corning to the composition taught by Sebillott-Arnaud to improve the absorption of lipophilic materials such as sebum, reduce volatility of volatile fluids and thicken the oil phase of the composition. See Down Corning. Moreover Sebillote-Arnaud teaches the addition of thickening agents. Sebillote-Arnaud col. 5, ll. 39-49. Appellant also asserts that the invention achieves unexpected and surprising results. See Appeal Br. 14. This appears to be unsupported attorney argument, as no evidence, such as from the Specification itself, a declaration, or otherwise, is cited as so characterizing the results claimed or presented in the Specification. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (explaining that appellant bears the burden of establishing evidence to rebut a prima facie case of obviousness); Knorr v. Pearson, 671 Appeal 2022-000478 Application 14/409,066 10 F.2d 1368, 1373 (CCPA 1982) (“[A]rguments of counsel cannot take the place of evidence lacking in the record.”). Based on the foregoing we conclude that a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of the pending claims would have been obvious to one of ordinary skill in the art at the time the invention was made over Sebillote-Arnaud combined with Dow Corning. CONCLUSION The Examiner’s rejection is affirmed. More specifically, the rejection of claims 1, 3-10, 12-16, and 18-23 under 35 U.S.C. § 103(a) as unpatentable over Sebillote-Arnaud in view of Dow Corning as evidenced by Ostergaard is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-10, 12- 16, 18-23 103 Sebillote-Arnaud, Dow Corning, Ostergaard 1, 3-10,12- 16, 18-23 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