L'OREAL

Patent Trials and Appeals Board

Jul 28, 2021

2021001390 (P.T.A.B. Jul. 28, 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.
15/322,675 12/28/2016 Valerie PAGE 480771US 1031
22850 7590 07/28/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SASAN, ARADHANA
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
07/28/2021 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 VALERIE PAGE, SOPHIE GUILBAUD, and
CELINE DEMARCQ1
Appeal 2021-001390
Application 15/322,675
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
ULRIKE W. JENKS, 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 anticipated or 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.
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STATEMENT OF THE CASE
“The invention relates. . . to the cosmetic field, and especially to the
field of caring for and/or making up keratin materials, especially the skin,
the lips, the hair or the nails, preferably the skin.” Spec. 1:7–9.
Claims 1–30 are on appeal. Claim 1, reproduced below, is illustrative:
Claim 1: An anhydrous composition comprising: based
on a total weight of the composition,
from 3% to 15% by weight of at least one lipophilic
gelling agent;
from 10% to 50% by weight of fillers including at least
5% by weight of a first filler and at least 5% by weight of a
second filler different from the first; and
from 40% to 85% by weight of at least one fatty phase;
wherein the first filler and the second filler are selected
from the group consisting of spherical cellulose particles,
powders of an N-acylamino acid comprising a C8–C22 acyl
group, polyamide particles, and spherical porous silica
particles.

The claims stand rejected as follows:
Claims 1–4, 7, 8, 11, 16, 17, 22, 24, and 25 under 35 U.S.C.
§ 102(a)(1) as anticipated by Tournilhac2 (Final Action3 2);
Claims 1–8, 11, 16, 17, and 22–26 under 35 U.S.C. § 103 as obvious
based on Tournilhac (Final Action 7);
Claims 1–9, 11, 13–18, and 22–27 under 35 U.S.C. § 103 as obvious
based on Tournilhac and Horino4 (Final Action 10);

2 US 2004/0096472 A1; pub. May 20, 2004.
3 Office Action mailed May 8, 2019.
4 US 2006/0034788 A1; pub. Feb. 16, 2006.
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Claims 1–8, 10, 11, 16, 17, and 22–26 under 35 U.S.C. § 103 as
obvious based on Tournilhac and Kurisaki5 (Final Action 14);
Claims 1–18 and 22–27 under 35 U.S.C. § 103 as obvious based on
Tournilhac, Horino, and Kurisaki (Final Action 16);
Claims 1–8, 11, 16, 17, 19, 22–26, and 28 under 35 U.S.C. § 103 as
obvious based on Tournilhac and Ansmann6 (Final Action 19); and
Claims 1–26, 29, and 30 under 35 U.S.C. § 103 as obvious based on
Tournilhac, Horino, Kurisaki, and Ansmann (Final Action 23).
OPINION
Anticipation
Claims 1–4, 7, 8, 11, 16, 17, 22, 24, and 25 stand rejected as
anticipated by Tournilhac. The Examiner finds that “Tournilhac teaches
anhydrous cosmetic compositions” comprising, among other things, “at least
one filler,” including “lauroyl lysine (which is an N-acylamino acid
comprising a C8-C22 acyl group), polyamide powders, silica ([0139]); and
Example 9 discloses the use of lauroyl lysine at 5%, fumed silica at 2.3%,
and polyurethane silica powder at 8%, each % by weight ([0199]).” Final
Action 3. The Examiner also finds that Tournilhac discloses use of filler(s)
in an amount of 0.1–60% by weight, and that the fillers in Tournilhac’s
Example 9 meet claim 1’s requirement of two fillers present in an amount of
at least 5% each. Id. at 4–5.
Appellant argues that “[t]he Examiner has relied upon par. 139 and
example 9 in Tournilhac as disclosing the required combination of fillers of

5 US 5,024,831; iss. June 18, 1991.
6 US 2010/0183536 A1; pub. July 22, 2010.
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the invention compositions. This is not the case.” Appeal Br. 8. Appellant
argues that Tournilhac’s paragraph 139 “simply identifies a laundry list of
possible fillers” and “par. 139’s generic disclosure of fillers cannot lead one
of ordinary skill in the art to the required combination of fillers of the
invention compositions.” Id. at 8–9.
Appellant argues that Tournilhac’s Example 9 “does not contain the
required combination of fillers of the invention compositions. Contrary to
the Examiner’s assertions, this example does not [contain] spherical porous
silica particles. Rather, it contains fumed silica, which is not porous.” Id. at
9. Appellant also argues that Tournilhac’s Example 9 composition contains
“a ‘plastic powder’ (D-400) which is a polyurethane compound containing
minimal silica. No evidence has been presented by the Examiner that . . . the
silica in D-400 is spherical porous silica as required in the claims.” Id.
We agree with Appellant that the Examiner has not shown that
Tournilhac discloses a composition meeting all of the limitations of claim 1;
in particular, the recited combination of fillers. As Appellant has pointed
out, the Examiner relies on Tournilhac’s paragraph 139 and Example 9 for
the disclosure of the combination of fillers recited in instant claim 1. Neither
of the cited passages of the reference, however, supports a rejection for
anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008) (“[U]nless a reference discloses . . . all of the limitations
arranged or combined in the same way as recited in the claim, it cannot be
said to prove prior invention of the thing claimed and, thus, cannot anticipate
under 35 U.S.C. § 102.”).
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Tournilhac lists fillers that can be used in its compositions. The list
includes silica (but not spherical porous silica particles), polyamide powders,
and lauroyllysine, but it also includes numerous other suitable fillers such as
talc, mica, kaolin, laponite, starch, boron nitride, and more. See Tournilhac
¶ 139. Thus, to arrive at the composition of instant claim 1 based on the
description in Tournilhac’s paragraph 139, a skilled artisan would have to
pick polyamide powders and lauroyllysine from the list of potential fillers,
and use at least 5 wt% of each, then combine them with the other
components of claim 1. Such a disclosure is not sufficient to anticipate a
claimed invention, because reaching a combination encompassed by claim 1
requires picking and choosing from among Tournilhac’s list of fillers. See
Net MoneyIN, 545 F.3d at 1371 (To anticipate “it is not enough that the prior
art reference . . . includes multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.”); In re Arkley, 455
F.2d 586, 587 (CCPA 1972) (“Such picking and choosing may be entirely
proper in the making of a 103, obviousness rejection . . . but it has no place
in the making of a 102, anticipation rejection.”)
Tournilhac’s Example 9 also fails to disclose the combination of
fillers required by claim 1. The exemplified composition includes fumed
silica, lauroyllysine, and a “[p]olyurethane-silica powder sold under the
name Plastic Powder D-400.” Tournilhac ¶ 199. The Examiner has
conceded, however, that neither the fumed silica nor the polyurethane-silica
powder in this composition are the spherical porous silica particles recited in
claim 1. See Final Action 10 (“Tournilhac does not expressly disclose
spherical porous silica microparticles.”).
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Thus, the composition of Tournilhac’s Example 9 contains only one
of the specific fillers recited in instant claim 1 (lauroyllysine, an N-
acylamino acid comprising a C8–C22 acyl group; Spec. 11:22–23). Claim 1,
however, requires at least two different fillers chosen from spherical
cellulose particles, powders of an N-acylamino acid comprising a C8–C22
acyl group, polyamide particles, and spherical porous silica particles.
In summary, the Examiner has not identified a disclosure in
Tournilhac that meets claim 1’s requirement for
from 10% to 50% by weight of fillers including at least
5% by weight of a first filler and at least 5% by weight of a
second filler different from the first; . . .
wherein the first filler and the second filler are selected
from the group consisting of spherical cellulose particles,
powders of an N-acylamino acid comprising a C8-C22 acyl
group, polyamide particles, and spherical porous silica
particles.
The Examiner therefore has not shown that Tournilhac anticipates instant
claim 1 by disclosing a composition meeting all of the claim limitations.
Claims 2–4, 7, 8, 11, 16, 17, 22, 24, and 25 depend from claim 1. We
therefore reverse the rejection under 35 U.S.C. § 102(a)(1).
Obviousness
All of the claims stand rejected under 35 U.S.C. § 103, as follows:
a) Claims 1–8, 11, 16, 17, and 22–26 based on Tournilhac;
b) Claims 1–9, 11, 13–18, and 22–27 based on Tournilhac and
Horino;
c) Claims 1–8, 10, 11, 16, 17, and 22–26 based on Tournilhac
and Kurisaki;
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d) Claims 1–18 and 22–27 based on Tournilhac, Horino, and
Kurisaki;
e) Claims 1–8, 11, 16, 17, 19, 22–26, and 28 based on
Tournilhac and Ansmann; and
f) Claims 1–26, 29, and 30 based on Tournilhac, Horino,
Kurisaki, and Ansmann.
In each case, the rejections are applied to claim groups that include
independent claim 1. However, in each of the § 103 rejections, the Examiner
only provides rationales for the obviousness of certain dependent claims
based on the cited reference(s). See Final Action 7–27. Thus, the record
lacks any reasoned explanation to support a conclusion of obviousness with
respect to claim 1, the only independent claim, and “dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
To the extent that the Examiner’s § 103 rejections combining Horino
and/or Kurisaki with Tournilhac could be applied to claim 1, we find the
Examiner’s articulated rationales inadequate to support a rejection of claim 1
for obviousness. With respect to Horino, the Examiner finds that the
reference discloses a “cosmetic compris[ing] a powder of porous spherical
silica,” and reasons that a skilled artisan “would have been motivated to
substitute the fumed silica of Tournilhac with the porous spherical silica
microparticles of Horino” because “[t]he simple substitution of one known
element (the porous spherical silica microparticles of Horino et al.) for
another (the fumed silica of Tournilhac to obtain predictable results is
obvious.” Final Action 10–11.
We do not find this rationale persuasive. First, the Examiner has not
disputed Appellant’s position that fumed silica is nonporous. See Ans. 8.
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Thus, the Examiner’s reasoning requires replacing a nonporous silica
component with porous silica particles, and the Examiner has not pointed to
evidence showing that such a substitution would yield predictable results.
Second, even if Tournilhac’s fumed silica was replaced with spherical
porous silica particles, the resulting composition would include only 7.3
wt% of the fillers recited in instant claim 1 (2.3 wt% spherical porous silica
particles and 5 wt% lauroyllysine), while claim 1 requires at least 10 wt% of
the recited fillers. The proposed substitution therefore would not meet the
limitations of claim 1.
With regard to Kurisaki, the Examiner finds that Kurisaki “disclose[s]
a powdery cosmetic containing cellulose powder” (Final Action 14) and
reasons that
[o]ne of ordinary skill in the art would have been
motivated to combine the fillers (including lauroyl lysine . . . at
5%, fumed silica at 2.3%, and polyurethane silica powder at
8%) taught by Tournilhac with the spherical cellulose
microparticles taught by Kurisaki et al. because both references
are drawn to anhydrous cosmetic compositions and it is obvious
to combine prior art elements according to known methods to
yield predictable results. Please see MPEP 2141. One of
ordinary skill in the art would have found it obvious to combine
various fillers known to be used in anhydrous cosmetic
compositions.
Id. at 15 (emphasis added).
However, the Examiner has not pointed to evidence showing that a
person of ordinary skill in the art would have recognized Kurisaki’s
spherical cellulose powder as a filler suitable for use in Tournilhac’s
composition. Tournilhac lists various suitable fillers (¶ 139) but does not
include cellulose or derivatives thereof.
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For its part, Kurisaki does not describe its spherical cellulose powder as
a filler, but as a “constitutional pigment.” Kurisaki 3:27–31. Kurisaki states
that its powder is not made simply of cellulose, but “compris[es] a spherical
cellulose powder coated, impregnated, or chemically linked with at least one
high molecular weight moisture retaining substance.” Id. at 1:59–61.
Kurisaki states that the “‘high molecular weight moisture retaining
substance’ . . . mean[s] a substance which changes the oil absorption
characteristics and water absorption characteristices [sic] inherent in the
powder.” Id. at 2:38–42. “Therefore, the high molecular weight moisture
retentive substance is necessary to stably maintain the functional
characteristics of the powder, which renders polyhydric alcohols, such as
propylene glycol and glycerin, known as a low-molecular weight humectant,
unsuitable for use in the present invention.” Id. at 2:47–52.
Given Kurisaki’s description of its modified cellulose powder, not as
a simple filler, but as necessary to maintain the functional characteristics of
Kurisaki’s powder, and as having changed oil and water absorption
characteristics compared to those inherent in cellulose powder, which makes
it unsuitable for use with certain other cosmetic components, the evidence
does not support the Examiner’s reasoning that it would be obvious to add
Kurisaki’s powder to Tournilhac’s composition with the expectation that it
would act as an additional filler.
Thus, we conclude that the evidence of record does not support a
conclusion that the composition of claim 1 would have been obvious based
on Tournilhac combined with either Horino or Kurisaki. Ansmann was cited
by the Examiner for its disclosure relating to the fatty phase, not the fillers,
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of claim 1, and therefore does not make up for the deficiencies of
Tournilhac.
For the reasons discussed above, we reverse all of the rejections under
35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7, 8,
11, 16, 17,
22, 24, 25
102(a)(1) Tournilhac 1–4, 7, 8,
11, 16, 17,
22, 24, 25
1–8, 11, 16,
17, 22–26
103 Tournilhac 1–8, 11,
16, 17, 22–
26
1–9, 11,
13–18, 22–
27
103 Tournilhac, Horino 1–9, 11,
13–18, 22–
27
1–8, 10, 11,
16, 17, 22–
26
103 Tournilhac, Kurisaki 1–8, 10,
11, 16, 17,
22–26
1–18, 22–
27
103 Tournilhac, Horino,
Kurisaki
1–18, 22–
27
1–8, 11, 16,
17, 19, 22–
26, 28
103 Tournilhac, Ansmann 1–8, 11,
16, 17, 19,
22–26, 28
1–26, 29,
30
103 Tournilhac, Horino,
Kurisaki, Ansmann
1–26, 29,
30
Overall
Outcome
1–30

REVERSED