SHISEIDO COMPANY, LTD.

Patent Trials and Appeals Board

Jul 28, 2021

2020006719 (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.
15/206,639 07/11/2016 Shun KUBOTA WINGR.P040 7408
28752 7590 07/28/2021
NOLTE LACKENBACH SIEGEL
LACKENBACH SIEGEL BUILDING
1 CHASE ROAD
SCARSDALE, NY 10583
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
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):
ayoung@NLS.law
docketing@nls.law
patdoc@lsllp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte SHUN KUBOTA, HIDEO HATA, MALYN CONCINA,
MICHELLE LOU, HIDEKI TAKAHASHI, JULIE SHOWN,
and YOSUKE IKEBE

_________________

Appeal 2020-006719
Application 15/206,639
Technology Center 1600
_________________

Before ERIC B. GRIMES, DEBORAH KATZ, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review2, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–15. We have jurisdiction under 35

1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as Shiseido Company Ltd. (Appeal Br. 1.)
2 We consider the Final Office Action issued January 31, 2019 (“Final
Act.”), the Appeal Brief filed March 23, 2020 (“Appeal Br.”), the
Examiner’s Answer issued on September 1, 2020 (“Ans.”), the Reply Brief
filed September 24, 2020 (“Reply Br.”) in reaching our decision.
Appeal 2020-006719
Application 15/206,639

2
U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF
REJECTION.
The claims are directed to oil-in-water emulsified cosmetics wherein
the oil phase has a dispersed powder. (Spec. ¶ 1.) Claim 1, reproduced
below, is illustrative of the claimed subject matter:
An oil-in-water type emulsified cosmetic composition,
comprising:
an aqueous phase;
1 to 40% by mass of an oily phase dispersed in the
aqueous phase; and
a powder dispersed in the oily phase;
wherein the oily phase comprises:
(a) volatile hydrocarbon oil and
(b) non-volatile hydrocarbon oil
in a combined amount of 40% by mass or more with respect to
the total oil content;
wherein the blending ratio of said (b) non-volatile hydrocarbon
oil to said (a) volatile hydrocarbon oil, [(b)/(a)], is within the
range of 0 to 2.5; and
wherein the powder has a surface hydrophobized by a treatment
with a metallic soap consisting of a higher fatty acid and a
divalent metal, or by a composite treatment with a higher fatty
acid and a divalent metal hydroxide.
(Appeal Br. 9.) Appellant’s claim 1 recites an emulsified cosmetic
composition that comprises a powder dispersed in the oily phase. The
surface of the powder is hydrophobized by one of two treatments: (i) a
metallic soap consisting of a higher fatty acid and a divalent metal or (ii) a
higher fatty acid and a divalent metal hydroxide composite. Appellant’s
Appeal 2020-006719
Application 15/206,639

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independent claims 103 and 124 recite substantially similar limitations with
respect to the hydrophobized treatment of the powder. (Appeal Br. 10, 11.)
The Examiner made the following rejections of the claims, each under
35 U.S.C. § 103:
Claims References Final
Office
Action
Citation
1 1–5, 9, 13 Yoshimura,5 Adachi,6 Vet Way,7
Kohler8
3–6
2 6, 7 Yoshimura, Adachi, Vet Way,
Kohler, Kiyoshi9
7–8
3 8, 10–12, 14, 15 Yoshimura, Adachi, Vet Way,
Kohler, Cecchini10
8–10

3 We note, for the purposes of the event of continued prosecution, that
independent claim 10 recites the same subject matter as dependent claim 8.
4 We note, for the purposes of the event of continued prosecution, that
independent claim 12 is a duplicate of dependent claim 11.
5 Yoshimura et al., US Patent Application Publication 2011/0236447 A1,
published September 29, 2011.
6 Adachi et al., International Patent Application Publication WO
2013/118836 A1, published August 15, 2013. We rely on the machine
translation, which is of record.
7 Vet Way Limited, Liquid Paraffin Product Safety Data Sheet (2003),
available at http://www.vamerpharma.com/HCP/
liquid%20paraffin%20safety%20datasheet.pdf (accessed October 12, 2017).
8 Kohler et al., “Colour chart: Establishing the causes of colouring in iron
oxide pigments,” European Coatings Journal, pp. 24–28 (2014), available at
http://bayferrox.com/uploads/tx_lxsmatrix/ecj_2014_01_koehler.pdf.
9 Kiyoshi et al., EP 0036199 B1, published July 11, 1984.
10 Cecchini et al., “Silicone Alternatives In Personal Care” (2010), available
at https://www.happi.com/issues/2010-11/view_features/siliconealternatives-
in-personal-care/ (accessed October 13, 2017).
Appeal 2020-006719
Application 15/206,639

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Obviousness under 35 U.S.C. § 103
The Examiner finds that Yoshimura discloses or suggests the
particular hydrophobized treatment of the powder recited in the independent
claims. (Final Act. 4.) According to the Examiner,
Yoshimura et al. . . . teach the inclusion of a powder dispersed
in the oily phase having a surface hydrophobized by a treatment
with a metallic soap consisting of a higher fatty acid and a
divalent metal or by a composite treatment with a higher fatty
acid and a divalent metal hydroxide (e.g. paragraphs 0076,
0079–0081).
(See Final Act. 4).
Appellant argues that Yoshimura fails to teach the use of a metal soap
derived from a divalent metal for powder hydrophobization. (See Appeal
Br. 5, citing Yoshimura ¶ 81.) Appellant argues that claim 1 specifically
requires “a powder having a surface hydrophobized by a treatment” with: (i)
a metallic soap consisting of a higher fatty acid and a divalent metal or “by a
composite treatment with” (ii) a higher fatty acid and a divalent metal
hydroxide. (Appeal Br. 5.)
We agree with Appellant. Yoshimura teaches that powder additives
in a cosmetic emulsion “may be hydrophobized” by using “one or more
substances such as higher fatty acids, surfactants (including any of anionic,
cationic, and nonionic surfactants), metal soaps, oils and fats, waxes,
silicones, fluorides, hydrocarbons, [and] dextrin fatty acid esters.” (See
Yoshimura ¶ 81.) As Appellant argues, we find no indication or suggestion
that Yoshimura’s “metal soap” consists solely of a higher fatty acid and a
divalent metal. We are further persuaded that Yoshimura does not disclose
or suggest limiting the list of powder-hydrophobizing substances to a higher
fatty acid and a divalent metal hydroxide composite treatment.
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Application 15/206,639

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Because a reversal of the rejection under 35 U.S.C. § 103 over
Yoshimura is dispositive of all of Appellant’s pending claims, we need not
reach the Examiner’s other rejections. Accordingly, we reverse the
Examiner’s rejections of claims 1–15 under 35 U.S.C. § 103.
Definiteness under 35 U.S.C. § 112(b)
We enter a new ground of rejection of claims 1–15 as being indefinite
under 35 U.S.C. § 112(b). In particular, claim 1 requires that “the oily phase
comprises: (a) volatile hydrocarbon oil and (b) non-volatile hydrocarbon oil”
and “the blending ratio of said (b) non-volatile hydrocarbon oil to said (a)
volatile hydrocarbon oil, [(b)/(a)], is within the range of 0 to 2.5.”
Appellant’s claims 10 and 12 recite substantially similar limitations with
respect to the blending ratio range for hydrocarbon oil components [(b)/(a)].
(Appeal Br. 10, 11.)
Under 35 U.S.C. § 112(b), Appellant’s claims must particularly point
out and distinctly claim the subject matter the applicant regards as the
invention. The statutory language of particularity and distinctness indicates
that claims must be cast in clear, and not vague or ambiguous, terms. If,
instead, “a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
The independent claims are unclear as each claim is amenable to two
plausible claim constructions: (1) as requiring the non-volatile hydrocarbon
oil or (2) as encompassing 0% non-volatile hydrocarbon oil. In other words,
the claims positively recite non-volatile hydrocarbon oil as a component of
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Application 15/206,639

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the oily phase, but the claimed [(b)/(a)] ratio of 0 encompasses instances in
which (b), i.e., the non-volatile hydrocarbon oil, is not present.
Accordingly, we reject claims 1–15 for being indefinite under 35
U.S.C. § 112(b).

Conclusion
Upon consideration of the record and for the reasons given, we
REVERSE the Examiner’s rejections.
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed New
Ground
1–5, 9, 13 103(a) Yoshimura,
Adachi, Vet
Way, Kohler
1–5, 9, 13
6, 7 103(a) Yoshimura,
Adachi,
Kiyoshi, Vet
Way, Kohler
6, 7
8, 10–12,
14, 15
103(a) Yoshimura,
Adachi,
Cecchini, Vet
Way, Kohler
8, 10–12,
14, 15

1–15 112(b) Indefiniteness 1–15
Overall
Outcome
1–15 1–15

We have also entered a new ground of rejection for claims 1–15
pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a]
new ground of rejection ... shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant:
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Application 15/206,639

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WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two
options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record
. . . .

(emphasis added).
REVERSED
37 C.F.R. § 41.50(b)