Naoto Sugimoto et al.

Patent Trials and Appeals Board

Feb 8, 2022

2021002277 (P.T.A.B. Feb. 8, 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. 13/980,418 07/18/2013 Naoto Sugimoto 4130-002US 6416 61275 7590 02/08/2022 The Marbury Law Group, PLLC 11800 Sunrise Valley Drive 15th Floor Reston, VA 20191 EXAMINER PROSSER, ALISSA J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 02/08/2022 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): ptonotices@marburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte NAOTO SUGIMOTO, KAVITA PATEL, and HIROKO ABE1 ________________ Appeal 2021-002277 Application 13/980,418 Technology Center 1600 ________________ Before ERIC B. GRIMES, JOHN G. NEW, and RACHEL H. TOWNSEND, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the term “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.142. Appellant identifies L’OREAL as the real party-in- interest. App. Br. 1. Appeal 2021-002277 Application 13/980,418 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 16, 18, 19, 23, 25-31, and 33 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of over Narebski et al. (WO 2008/077962 A1, July 3, 2008) (“Narebski”), as evidenced by TRS, Interpolymer Cosmetic Ingredient Safety Dossier for Syntran 5760 1-2 (January 4, 2005) (“TRS”), The Dow Chemical Company, Product Safety Assessment, Aminomethyl Propanediol 1-7 (revised October 14, 2014) (“Dow”), and Omura et al. (US 2009/0081142 A1, March 26, 2009) (“Omura”). Claims 16, 18, 19, 23, 25-31, and 33 also stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of over Bodelin et al. (US 2005/0229332 A1, October 20, 2005) (“Bodelin”) and Pays et al. (US 2006/0078520 A1, April 13, 2006), as evidenced by the American Chemical Society, SciFinder® Syntran 5760, CAS Registry Number: 470456-33-8 (2014) (“CAS”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to a cosmetic composition for eyelashes such as a mascara. Spec. Abstr. REPRESENTATIVE CLAIM Independent claim 16 is representative of the claims on appeal and recites: Appeal 2021-002277 Application 13/980,418 3 16. A cosmetic composition for eyelashes, comprising: at least one anionic surfactant chosen from fatty acid salts derived from 2-amino-2-methyl-1,3-propanediol in combination with at least one C16-C24 fatty acid; at least one wax; and at least one film-forming polymer present in the form of particles dispersed in an aqueous phase, wherein the at least one film-forming polymer is selected from the group consisting of vinyl(co)polymers, (meth)acrylic (co)polymers, urethanes (co)polymers, and mixtures thereof; wherein the at least one film-forming polymer is present in an amount of dry matter ranging from 10% to 30% by weight, relative to the total weight of the cosmetic composition; wherein the weight ratio of the at least one anionic surfactant chosen from fatty acid salts derived from 2-amino-2- methyl-1, 3-propanediol in combination with the at least one C16- C24 fatty acid to the at least one film forming polymer ranges from 0.10 to 0.15; and wherein the cosmetic composition is capable of being removed as a tube with water at a temperature of about 40°C without smudging. App. Br. 12. ISSUE AND ANALYSIS We agree with and adopt the Examiner’s findings, reasoning, and conclusion that the claims are obvious over the cited prior art. We address below the arguments raised by Appellant. Appeal 2021-002277 Application 13/980,418 4 A. Section 103(a) Rejection over Narebski Issue Appellant argues that the Examiner erred by failing to show that Narebski teaches or suggests the composition having the recited weight ratio of the at least one anionic surfactant to the at least one film forming polymer (i.e., the “R-value”) of 0.10 to 0.15. App. Br. 8. The Examiner’s Findings and Conclusions The Examiner finds that Narebski teaches, in its Example 6, an aqueous mascara composition comprising 1% stearic acid and palmitic acid (C18 and C16 fatty acids, respectively), 0.2% aminomethylpropanediol (a synonym for 2-amino-2-methyl-1,3-propanediol or AMPD (see Dow 1)) and 20% styrene/acrylates/ammonium methacrylate copolymer, butylene glycol, and sodium laureth-12 sulfate (combined). Final Act. 5 (see Narebski 38). The Examiner also finds Example 6 further comprises carnauba wax. Id. The Examiner points to TRS as showing that the styrene/acrylates/ ammonium methacrylate copolymer, butylene glycol, and sodium laureth-12 sulphate combination of Narebski’s Example 6 is Syntran® 5760, which comprises 38-39% acrylate copolymers. Final Act. 5. The amount of styrene/acrylates/ammonium methacrylate copolymer in Example 6 on a dry basis is therefore about 0.385 x 20, or approximately 7.7 wt%. Id. The Examiner next points to Appellant’s Specification as disclosing that Syntran® 5760 is an aqueous dispersion of film-forming polymers. Final Act. 5 (citing Spec. 9; Narebski 25 (describing Syntran® 5760 as an aqueous dispersion of film-forming polymers)). Appeal 2021-002277 Application 13/980,418 5 The Examiner further points to Appellant’s Specification as disclosing that a surfactant is obtained by mixing stearic acid (fatty acid) with 2-amino- 2-methyl-1, 3-propanediol. Final Act. 5 (citing Spec. 9; Narebski 19 (describing mixing C16-C30 fatty acids with aminomethyl-1,3-propanediol to form an anionic surfactant)). The Examiner notes that the Specification also discloses that the weight ratio “R” is defined as the amount of AMPD in combination with the C16-C24 fatty acid divided by the amount of the film- forming polymer. Id. at 6 (citing Spec. 24). The Examiner therefore reasons that Example 6 of Narebski teaches a weight ratio R of anionic surfactant to film-forming polymer of (0.2 + 1)/(0.385*20), or about 0.15. Id. (citing MPEP § 2144.05(I)). Analysis Appellant argues that, by the Examiner’s calculations, the weight ratio R of the at least one anionic surfactant in combination with the at least one C16-C24 fatty acid (i.e., aminomethylpropanediol + stearic acid and palmitic acid) to the film-forming polymer in Example 6 of Narebski is (0.2 + 1.0) / 7.7 or 0.156, and is therefore outside the claimed range. App. Br. 7. Appellant asserts that, contrary to the Examiner’s findings, Appellant need not show the criticality of the claimed R-value, because the only cited composition in Narebski for which such value may be calculated does not fall within the claimed range. Id. Appellant contends that, although the Examiner concludes that a prima facie case of obviousness exists because the weight ratio of 0.156 is close to the claimed range of 0.10-0.15, the Examiner failed to demonstrate or even assert that such weight ratio is close enough such that “one skilled in Appeal 2021-002277 Application 13/980,418 6 the art would have expected them to have the same properties.” App. Br. 7 (quoting MPEP § 2144.05(I)). Appellant argues further that the Examiner’s findings, with respect to the broader teachings of Narebski encompassing ranges that overlap the claimed R-value range, are generalizations without any support because the R-value is defined by specific parameters in the claims. Id. (citing Final Act. 7-8, 14). We are not persuaded by Appellant’s arguments upon this point. As an initial matter, TRS teaches that the concentration of acrylate copolymers in Syntran® 5760 is “38 - 39%.” TRS 1. If we take the upper end of that small range, we calculate an R-value of 0.153. Dropping the insignificant digit from the value, we calculate an R-value of 0.15, which is within the claimed range. More importantly, “a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). We are not persuaded by Appellant’s arguments that a difference in the R value of 0.006 between the upper end of the claimed range of R values and that calculated by the Examiner would be sufficient such that a person of ordinary skill in the art would have expected the composition of Narebski to have different properties from the claimed composition. Nor has Appellant adduced any evidence to suggest any such critical difference in the properties of the claimed composition and that taught by the prior art. See In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Appeal 2021-002277 Application 13/980,418 7 applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product .… Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively,[ ] the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In the absence of any evidence that a 0.006 difference in R values would affect the properties of the composition, we are not persuaded by Appellant’s argument. B. Section 103(a) Rejection over Bodelin and Pays Issue Appellant argues that the Examiner erred by failing to show that the combination of Bodelin and Pays teach the composition having the claimed R-value of 0.10 to 0.15. App. Br. 7. The Examiner’s Findings and Conclusions The Examiner finds that Bodelin teaches a keratin fiber coating composition, such as a mascara, intended to be applied to the eyelashes and comprising at least one ionic surfactant and at least one nonionic surfactant with a hydrophilic-lipophilic balance (“HLB”) of greater than or equal to 8 at 25°C and a solids content in excess of 40 wt%. Final Act. 9 (citing Bodelin Abstr., ¶¶ 3, 4, claim 1). The Examiner finds that Bodelin’s coating composition “charges,” or thickens and volumizes, the keratin fibers or eyelashes. Id. (citing Bodelin Abstr., ¶¶ 7, 18). Appeal 2021-002277 Application 13/980,418 8 The Examiner finds that Bodelin teaches at least one ionic surfactant may be at least one anionic surfactant such as a C16 to C30 fatty acid salt derived from amines, e.g., triethanolamine stearate and 2-amino-2-methyl-1, 3-propanediol stearate; the ionic surfactant may be present from 0.01 to 30 wt%, from 0.1 to 15 wt%, or from 0.5 to 10 wt%. Final Act. 9-10 (citing Bodelin ¶¶ 62-64, 72, 77, Example 1, claims 18-23; and quoting MPEP § 2144.05(I)). The Examiner finds that Bodelin teaches at least one nonionic surfactant with an HLB of greater than or equal to 8 at 25°C, e.g., oxyethylenated and/or oxypropylenated ethers of glycerol. Final Act. 10 (citing Bodelin ¶¶ 41-42, 43-53, claims 15-16). The Examiner finds that Bodelin further teaches that the one or more nonionic surfactants with an HLB of less than 8 at 25°C may be combined with at least one nonionic surfactant with an HLB of greater than or equal to 8, e.g., saccharide esters and ethers. Id. (citing Bodelin ¶¶ 54-56, 57-59). The Examiner also finds that Bodelin teaches that the composition may comprise a wax or a mixture of waxes. Id. (citing Bodelin ¶¶ 79, 80-128, claims 8-14). The Examiner finds that Bodelin teaches that its composition may comprise at least one film-forming polymer present from 0.1 to 60 wt%, from 0.5 to 40 wt%, or from 1 to 30 wt% (solids content). Final Act. 10 (citing Bodelin ¶¶ 130-132, claims 26-29). The Examiner finds that Bodelin teaches that its film-forming polymer may be present in the composition in the form of particles dispersed in an aqueous phase or in a non-aqueous solvent phase (lattice or pseudolattice), such as the aqueous acrylic dispersions sold as Syntran® 5760, which is a styrene/acrylate/ ammonium methacrylate copolymer. Id. (citing Bodelin ¶¶ 176-177; see Appeal 2021-002277 Application 13/980,418 9 also CAS). With respect to the claimed range of R-values, the Examiner finds that the weight percentages of anionic surfactants and film-forming polymer, cited supra, encompasses Appellant’s claimed range of R from 0.10 to 0.15, and establishes prima facie obviousness. Id. The Examiner acknowledges that Bodelin does not expressly teach or exemplify an embodiment comprising 2-amino-2-methyl-1, 3-propanediol in combination with at least one C16-C24 fatty acid and 10 to 30 wt% (Dry basis) of at least one aqueous dispersion of film forming polymers, wherein the weight ratio of the anionic surfactant to the polymer is 0.10 to 0.15. App. Br. 11. The Examiner concludes, however, that it would have been obvious to a person of ordinary skill in the art to formulate a mascara composition comprising at least one ionic surfactant that is 2-amino-2- methyl-1, 3-propanediol stearate and at least one-film forming polymer in the form of acrylic particles at the concentration ranges taught by Bodelin, because the selection of a known material based on its suitability for its intended use is prima facie obvious. Id. at 11-12. The Examiner acknowledges that Bodelin does not expressly teach or exemplify an embodiment comprising at least one film-forming polymer present in the form of particles dispersed in an aqueous phase wherein the polymer is a styrene-(meth)acrylic and (meth)acrylic copolymer as required by the elected embodiment of claim 16. Final Act. 12. The Examiner points to Pays as teaching cosmetic compositions for making up keratin fibers or mascaras which are capable of resisting water (waterproof) by means of the presence of at least one lattice or pseudolattice, but which can nevertheless be easily removed having an aqueous continuous phase and comprising at least one aqueous dispersion of particles of a polymer, at least one Appeal 2021-002277 Application 13/980,418 10 polyelectrolyte and at least one surfactant with an HLB of greater than or equal to 6, the said polymer being present in a solids content of greater than or equal to 5 wt%. Id. (citing Pays Abstr., ¶¶ 1, 4-8). The Examiner finds that Pays teaches that lattices or pseudolattices are advantageous for imparting water resistance to the cosmetic compositions and may comprise aqueous acrylic dispersions such as Syntran® 5760. Id. (citing Pays ¶¶ 106, 128, Table 1). The Examiner finds that Pays teaches that solids content of the aqueous dispersion of particles of a polymer is greater than or equal to 5 wt%, 7 wt%, 10 wt%, or especially less than 50 wt%, 30 wt%. Id. (citing Pays ¶ 129). The Examiner finds that the polyelectrolyte, particularly sodium polyacrylate or acrylamide/AMPD copolymer, can be adjusted such that the removability is effectively improved while at the same time not being detrimental to the water resistance of the composition. Id. at 12-13 (citing Pays ¶¶ 52-53). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to formulate the thickening/volumizing mascara of Bodelin with at least one-film forming polymer that is an aqueous acrylic dispersion such as Syntran® 5760, because Pays teach such lattices or pseudolattices are advantageous for imparting water resistance to cosmetic compositions. Final Act. 13. The Examiner reasons that there would have been a reasonable expectation of success in combining the references, because Bodelin teaches the film-forming polymer may comprise Syntran® 5760. Id. Appeal 2021-002277 Application 13/980,418 11 Analysis Appellant argues that the weight ratio range of at least one anionic surfactant chosen from fatty acid salts derived from 2-amino-2-methyl-1, 3- propanediol in combination with at least one C16-C24 fatty acid to at least one film-forming polymer taught by Bodelin is too broad to render the claimed ratio obvious. App. Br. 7-8. Appellant contends that the Examiner’s reliance on the broad teachings of Bodelin present a “situation analogous to the obviousness of a species when the prior art broadly discloses a genus,” as contemplated by MPEP § 2144.05. Id. at 8 (citing In re Baird, 16 F.3d 380 (Fed. Cir. 1994); In re Jones, 958 F.2d 347 (Fed. Cir. 1992); MPEP § 2144.08). Appellant contends, by way of example, that the calculated weight ratio ranges of Bodelin for the full extent of the disclosed ranges of anionic surfactant (0.01 wt%-30 wt%) and film-forming polymer (0.1 wt%-60 wt%) is 0.000167-300. App. Br. 8. According to Appellant, even at the narrowest disclosed ranges of anionic surfactant (0.5 wt%-10 wt%) and film-forming polymer (1 wt%-30 wt%), the resulting weight ratio range is 0.0167-10, which is still far broader than the weight ratio range of about 0.10 to 0.15 now recited in claim 16. Id. Appellant also points particularly to the only Example of Bodelin, which includes 0.8 wt% of 2-amino-2-methyl-1, 3-propanediol, 6.6 wt% of stearic acid, 2.4 wt% of triethanolamine, and 0.25 wt% of polymers, which may be film forming. App. Br. 8. Appellant argues that this Example does not satisfy the recited range of 10-30 wt% for the film-forming polymer. Id. Further, the weight ratio range of the anionic surfactant to the film-forming polymer in the exemplary embodiment taught by Bodelin is 39.2. Id. Appeal 2021-002277 Application 13/980,418 12 Appellant asserts that since such a weight ratio is well above the claimed range of 0.10 to 0.15, a person of ordinary skill in the art would not reasonably have expected the same properties under MPEP § 2144.05(1). Id. Appellant argues further that, regardless of whether Pays teaches or suggests the element for which it is cited, Pays nevertheless fails to teach or suggest “wherein the at least one film-forming polymer is present in an amount of dry matter ranging from 10% to 30% by weight, relative to the total weight of the cosmetic composition” and “wherein the weight ratio of the at least one anionic surfactant chosen from fatty acid salts derived from 2-amino-2-methyl-1,3-propanediol in combination with the at least one C16- C24 fatty acid to the at least one film forming polymer ranges from 0.10 to 0.15,” and therefore fails to cure the alleged deficiencies of Bodelin. App. Br. 8-9. We are not persuaded by Appellant’s arguments. We acknowledge that the teachings of Bodelin cover a range of R-values, but those values entirely encompass the range of R-values recited in the claims. Nevertheless, the mere fact that a prior art reference teaches a multitude of effective alternatives generally does not per se defeat a prima facie case of obviousness where an applicant seeks to claim one of those alternatives. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that a claimed combination of compounds obvious over reference that described more than 1,200 combinations, for use for the same purpose); see also In re Susi, 440 F.2d 442, 445 (C.C.P.A. 1971) (obviousness rejection affirmed where prior art disclosure was “huge, but it undeniably include[d] at least some of the compounds recited in appellant’s generic Appeal 2021-002277 Application 13/980,418 13 claims and it is of a class of chemicals to be used for the same purpose as appellant’s additives”). However, Appellant has again provided no evidence of the criticality of the claimed range that might distinguish the properties of the claimed invention in the eyes of a person of skill in the art from those compositions with similar ingredients that are close to, but do not overlap, the claimed composition. See In re Best, 562 F.2d at 1255. Furthermore, because we agree with the Examiner that Bodelin teaches the limitations disputed by Appellant, Appellant’s arguments that Pays fails to teach or suggest these limitations is moot. Issue 3 Appellant argues that the Examiner erred by failing to show that the references teach or suggest the cosmetic composition capable of being removed as a tube with water at a temperature of about 40°C without smudging. App. Br. 9. Analysis Appellant submits that Narebski (as evidenced by TRS, Dow, and Omura), as well as the combination of Bodelin (as evidenced by CAS) and Pays, fail to teach or suggest a cosmetic composition that is “capable of being removed as a tube with water at a temperature of about 40°C without smudging” as recited in claim 16. App. Br. 9. Specifically, Appellant contends that, regardless of whether the Declaration of Naoto Sugimoto, submitted February 19, 2020 (the “Sugimoto Declaration”) demonstrates unexpected results, it nevertheless provides clear evidence that the compositions taught in Narebski and Bodelin that are cited by the Examiner Appeal 2021-002277 Application 13/980,418 14 are not capable of being removed as a tube with water at a temperature of about 40 °C without smudging. Id. (citing Sugimoto Decl. ¶¶ 12-15.) Appellant points out that a “limitation at issue necessarily must be present” in order to be inherently disclosed by prior art, and is not satisfied by mere possibilities. PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014)). As such, the inherency findings set forth by the Examiner regarding this limitation are improper, as well as rendered inapplicable. Id. The Examiner responds that the Sugimoto Declaration compares the removal of composition A, which is comparable to Example 1 of Table 1 of Appellant’s Specification to Comparative Composition C, which is taken from Example 6 of Narebski. Ans. 11 (citing Sugimoto Decl. ¶ 12). The Examiner finds that Mr. Sugimoto concluded that Composition A was removed as a tube without smudging while Comparative Composition C was removed as a mixture of a tube and liquid and smudged. Id. (citing Sugimoto Decl. ¶ 14). The Examiner finds, however, that independent claim 16 is not limited to Composition A, and Composition A has not been rejected over Comparative Composition C. Ans. 11. The Examiner reasons that, because the Declaration is silent with respect to Bodelin, Appellant cannot persuasively allege that the Sugimoto Declaration provides evidence that compositions taught in Bodelin do not possess the claimed properties. Id. The Examiner further finds that the finding that the prior art compositions inherently possess the claimed properties is predicated on the prior art rendering obvious all of the elements of the instantly claimed compositions. Ans. 11. The Examiner reasons that it is axiomatic that the Appeal 2021-002277 Application 13/980,418 15 properties of a composition flow from the ingredients thereof, and that Composition A requires all of the elements of the instantly claimed compositions. Id. We are not persuaded by Appellant’s arguments. The Sugimoto Declaration makes a direct comparison between Composition A (Example 1 of Appellant’s Specification (see Spec. Table 1) to Comparative Composition C which is taken from Example 6 of Narebski. Sugimoto Decl. ¶ 12. However, the single sample of Sugimoto taken from Appellant’s Table 1 is not commensurate with the scope of the claim, which recites a range of constituents, e.g., “film-forming polymer …[ ] present in an amount of dry matter ranging from 10% to 30%.” Furthermore, Example 6 of Narebski is not commensurate with the full scope of the teachings of Narebski. For instance, with respect to the film-forming polymer ingredient, Narebski teaches: The optionally modified film-forming polymer of natural origin can be present in the composition according to the invention at a dry matter level ranging from 0.1% to 30% by weight relative to the total weight of the composition, preferably 0.5% to 20% by weight, and more preferably 1% to 10% by weight relative to the total weight of the composition. Narebski, 21. In Example 6 of Narebski (Comparative Composition C of the Sugimoto Declaration), the weight percent of the film-forming copolymer is 20 wt%. However, Narebski teaches weight percentages up to 30%; increasing the weight percentage of the film-forming copolymer would thus increase the value of the denominator of the R-value, and consequently bring it into the claimed range. Appeal 2021-002277 Application 13/980,418 16 Similarly, Narebski teaches anionic surfactants, including stearic acid and palmitic acid (C18 and C16 fatty acids, respectively) in the following concentrations: The compositions according to the invention can contain emulsifying surfactants present in particular in a proportion ranging from 0.1 to 40% and more preferably from 1% to 10% by weight, relative to the total weight of the composition. The surfactants used within the framework of the present invention amphoteric can be anionic, cationic, non-ionic or amphoteric. However, generally, the choice of at least one anionic surfactant is favoured. Narebski 18-19. In Example 6 of Narebski (Comparative Composition C of the Sugimoto Declaration), the concentration of the anionic surfactant is 1.0 wt%. However, Narebski expressly contemplates a range of surfactant concentrations, which a person of ordinary skill could select to correspond to the claimed R-values. In other words, the single study of the Sugimoto Declaration, which employs single exemplary compositions from Appellant’s Specification and from Narebski does not represent the full scope of the teachings of Narebski, which overlap with the recited limitations of the claims or of the scope of the claims. We are consequently not persuaded by the testimony of the Sugimoto Declaration that the range of constituents taught by Narebski that overlap with those of the claimed composition would not have the properties of being “capable of being removed as a tube with water at a temperature of about 40°C without smudging,” as recited in the claims. Appeal 2021-002277 Application 13/980,418 17 To be sure, Narebski is silent with respect to the disputed limitation. Nevertheless, recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 1023 (C.C.P.A. 1979); see also In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (holding that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). Finally, neither Appellant nor the Sugimoto Declaration address the teachings and suggestions of Bodelin and Pays with respect to these claimed properties of Appellant’s invention. Arguments not raised in the Appellate Brief are considered waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (holding that “the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not”); see also 37 C.F.R. § 41.37(c)(1)(iv) (“[A]ny arguments or authorities not included in the appeal brief … will be refused consideration by the Board”). 3. Unexpected results Issue Appellant argues that the Examiner erred because the Sugimoto Declaration demonstrates unexpected results sufficient to overcome the Examiner’s prima facie conclusion of obviousness. App. Br. 9. Appeal 2021-002277 Application 13/980,418 18 Analysis Appellant points to the Sugimoto Declaration, which includes a description of the removability tests, the results, and the basis for the Declarant’s opinion that a skilled artisan would not have predicted such difference in removal properties based on the teachings of the cited references. App. Br. 9-10 (citing Sugimoto Decl. ¶¶ 12-19). Appellant asserts that for these reasons it is sufficient on its face to show that the difference between the claimed invention and the compositions of the prior art is unexpected, contrary to the Examiner’s findings. Id. Furthermore, argues Appellant, Composition A, described in the Declaration and corresponding to Example 1 of Appellant’s Specification, is commensurate with claim 16, includes at least one film-forming polymer selected from the group consisting of vinyl(co)polymers, (meth)acrylic (co)polymers, urethanes (co)polymers, and mixtures thereof is in the claimed amount of from 10% to 30% relative to the total weight of the cosmetic composition (i.e., 14 wt%). App. Br. 10. Additionally, Appellant asserts, Composition A has a weight ratio of the at least one anionic surfactant chosen from fatty acid salts derived from 2-amino-2-methyl-1 ,3- propanediol in combination with the at least one C16-C24 fatty acid to the at least one film forming polymer of 0.13, which is within the claimed range of 0.10 to 0.15. Id. In contrast, Appellant contends, Comparative Composition C, as described in the Declaration, which includes at least one film-forming polymer selected from the group consisting of vinyl(co)polymers, (meth)acrylic (co)polymers, urethanes (co)polymers, and mixtures thereof in an amount of from 7.6-7.8 wt%. App. Br. 10. Appellant argues that Appeal 2021-002277 Application 13/980,418 19 Comparative Composition C has a weight ratio of at least one anionic surfactant chosen from fatty acid salts derived from 2-amino-2- methyl-1 ,3- propanediol in combination with the at least one C16-C24 fatty acid to the at least one film forming polymer of 0.153 to 0.158, which is outside the scope of claim 16. Id. We are not persuaded that the Sugimoto Declaration is sufficiently probative of unexpected results to overcome the Examiner’s prima facie conclusion of obviousness. As an initial matter, Composition A is not entirely commensurate with the scope of Appellant’s claim 16, because claim 16 recites a range of possible constituents and Composition A is but a single embodiment within that range. Furthermore, and as we have explained, Comparative Composition C, which is taken from Example 6 of Narebski, is only a single embodiment of the possible range of constituents disclosed by Narebski; Narebski teaches ranges of constituents of its compositions that overlap the range of concentrations recited in the claims. Neither Appellant nor the Sugimoto Declaration have provided evidence of record to show that the compositions of Narebski that fall directly within the claimed ranges lack the functional properties recited in the claims. We are consequently not persuaded by Appellant’s arguments, and we affirm the Examiner’s rejection of the claims. CONCLUSION The rejection of claims 16, 18, 19, 23, 25-31, and 33 as unpatentable under 35 U.S.C. § 103(a) is affirmed. Appeal 2021-002277 Application 13/980,418 20 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) (2020). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 18, 19, 23, 25-31, 33 103(a) Narebski 16, 18, 19, 23, 25-31, 33 16, 18, 19, 23, 25-31, 33 103(a) Bodelin, Pays 16, 18, 19, 23, 25-31, 33 Overall Outcome 16, 18, 19, 23, 25-31, 33