SHISEIDO COMPANY, LTD.

Patent Trials and Appeals Board

Nov 23, 2020

2020002460 (P.T.A.B. Nov. 23, 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.
15/501,989 02/06/2017 Yuki SUGIYAMA IWAHA.P010 5965
28752 7590 11/23/2020
NOLTE LACKENBACH SIEGEL
LACKENBACH SIEGEL BUILDING
1 CHASE ROAD
SCARSDALE, NY 10583
EXAMINER
WORSHAM, JESSICA N
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
ayoung@lsllp.com
docketing@nls.law
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKI SUGIYAMA, HIROHITO SHIRAKAMI, and
KAZUYUKI MIYAZAWA1
Appeal 2020-002460
Application 15/501,989
Technology Center 1600

Before ERIC B. GRIMES, FRANCISCO C. PRATS, and LILAN REN,
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
material for use in cosmetics, and a method of making it. The claims have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Claims 17–28 are on appeal. Claims 17 and 21, reproduced below, are
illustrative (emphasis added to disputed limitation):
17. A raw material, for cosmetics, comprising:

1 Appellant identifies the real party in interest as Shiseido Company Ltd.
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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Application 15/501,989

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a core-corona microgel dispersion that is obtained by the radical
polymerization of:
(A) a polyethylene oxide macromonomer having chemical
formula (1),

wherein R1 is an alkyl group having 1 to 3 carbon atoms, n is a
number of 8 to 200 and X is H or CH3;
(B) a hydrophobic monomer having chemical formula (2),

wherein R2 is an alkyl group having 1 to 3 carbon atoms, and R3
is an alkyl group having 1 to 12 carbon atoms; and
(C) a cross-linking monomer having chemical formula (3),

wherein R4 and R5 are independent alkyl group having 1 to 3
carbon atoms, and m is a number of 0 to 2; and
(i) a mole ratio of said polyethylene oxide macromonomer
versus said hydrophobic monomer is in the range of 1/10
to 1/250 (mole/mole);
(ii) said cross-linking monomer is in the range of 0.1 to 1.5%
by weight relative to said hydrophobic monomer;
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(iii) said hydrophobic monomer is a monomer composition
comprising at least one C1 to C8 methacrylic acid ester;
(iv) a solvent used for said radical polymerization is a mixed
solvent of water and at least one polyol selected from the
group consisting of dipropylene glycol, 1,3-butylene
glycol, and isoprene glycol, and
(v) said mixed solvent of water and polyol has a water versus
said polyol ratio that is in the range of 90/10 to 10/90%
by mass at 20°C.

21. A production method of raw material for cosmetics
consisting of a core-corona microgel dispersion comprising:
the step of a radical polymerization of:
(A) a polyethylene oxide macromonomer having chemical
formula (1),

wherein R1 is an alkyl group having 1 to 3 carbon atoms, n is a
number of 8 to 200 and X is H or CH3;
(B) a hydrophobic monomer having chemical formula (2),

wherein R2 is an alkyl group having 1 to 3 carbon atoms, and R3
is an alkyl group having 1 to 12 carbon atoms; and
(C) a cross-linking monomer having chemical formula (3),
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Application 15/501,989

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wherein R4 and R5 are independent alkyl group having 1 to 3
carbon atoms, and m is a number of 0 to 2; and
(i) a mole ratio of said polyethylene oxide macromonomer
versus said hydrophobic monomer is in the range of 1/10
to 1/250 (mole/mole);
(ii) said cross-linking monomer is in the range of 0.1 to 1.5%
by weight relative to said hydrophobic monomer;
(iii) said hydrophobic monomer is a monomer composition
comprising at least one C1 to C8 methacrylic acid ester;
(iv) a solvent used for said radical polymerization is a mixed
solvent of water and at least one polyol selected from the
group consisting of dipropylene glycol, 1,3-butylene
glycol, and isoprene glycol, and
(v) said mixed solvent of water and polyol has a water versus
said polyol ratio that is in the range of 90/10 to 10/90%
by mass at 20°C.
OPINION
Claims 17–28 stand rejected under 35 U.S.C. § 103 as obvious based
on Sugiyama.2 Final Action3 3. The Examiner finds that Sugiyama teaches a
copolymer produced by polymerizing the same monomers that are recited in
instant claims 17 and 21. Id. Appellant does not dispute that the monomers
disclosed in Sugiyama are the same as those recited in the instant claims. See
Appeal Br. 3.

2 Sugiyama et al., WO 2013/094298 A1, published June 27, 2013. The
Examiner cites the English translation that was filed March 5, 2018.
3 Office Action mailed February 15, 2019.
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The Examiner finds that Sugiyama’s “microgel is formed by carrying
out the radical polymerization in a water-ethanol mixed solvent,” rather than
a water-polyol mixed solvent as recited in the instant claims. Final Action 4.
However, the Examiner finds that Sugiyama discloses that “water soluble
alcohols, thickeners, etc. commonly used in cosmetics, quasi-drugs etc. can
be blended into the water phase of the [oil-in-water emulsified] composition,
as well as humectants, chelating agents, preservatives, pigments, etc.” Id.
“The water soluble alcohol includes . . . polyhydric alcohols” such as 1,3-
butylene glycol or dipropylene glycol. Id.
The Examiner concludes that
[i]t would have been well within the purview of the skilled
artisan to substitute one effective solvent material for another
since Sugiyama et al. specifically states that one or more
alcohols may be combined with water to form the solvent, i.e.,
ethanol is not required. Since the various alcohols are deemed
functional equivalents by Sugiyama et al., it would have been
obvious to use dipropylene glycol or 1,3-butylene glycol in the
same amount as cited for ethanol.
Id.
Appellant argues that “Sugiyama does not present glycols as
alternatives to ethanol in the polymerization reaction” but “makes it clear
that ethanol, specifically, is the solvent to be used in the polymerization.”
Appeal Br. 3–4. Appellant argues that “[t]he passage cited by the Examiner
is found in a subsection clearly entitled, ‘Regarding the water phase
ingredients used in the oil-in-water emulsified composition of the present
invention.’ In other words, Sugiyama is teaching that the glycols are
formulation solvents, not polymerization solvents.” Id. at 3.
In response, the Examiner points out that “[c]laim 17 is directed to a
raw material comprising a core-corona microgel dispersion obtained by the
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polymerization of component[s] A, B, and C using a water and polyol
polymerization solvent. The solvent is present in the formation of the
polymer, but does not contribute to the polymerization reaction.” Ans. 3–4.
The Examiner reasons that “[t]he type of solvent is irrelevant in the final
product of the claimed invention since it is not a reactant in the
polymerization reaction and is not present in the final product.” Id. at 4.
With respect to the product claims on appeal, we agree with the
Examiner that Sugiyama supports a prima facie case of obviousness. As
Appellant notes, “[c]laim 17 is a product-by-process claim.” Appeal Br. 1.
“If the product in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985).
Appellant has not pointed to evidence in the record showing that a
core-corona microgel dispersion made by radical polymerization using
ethanol as a solvent differs structurally from a core-corona microgel
dispersion made by radical polymerization using one of the solvents recited
in claim 17. The Specification, in fact, indicates that the resulting product is
the same regardless of the solvent used. For example, the Specification states
that “[i]n Production Examples 1 to 4, wherein water-ethanol, water-
dipropylene glycol, water-1,3-butylene glycol, or water-isoprene glycol was
used as the polymerization solvent, a white cloudy dispersion was obtained
after polymerization.” Spec. ¶ 109. Similarly, the Specification states that
“[i]n Production Examples 6 to 14, wherein water-dipropylene glycol, water-
1,3-butylene glycol, or water-isoprene glycol was used as the polymerization
solvent . . . and in Production Example 16, wherein the polymerization
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solvent was water/ethanol = 90/10, a white cloudy dispersion was obtained
after polymerization.” Id. ¶ 114.
The evidence of record therefore supports the Examiner’s conclusion
that the product of instant claim 17 is not patentably distinguishable from the
product disclosed by Sugiyama. We affirm the rejection of claim 17 under
35 U.S.C. § 103. Claims 18–20, 25, and 26 fall with claim 17 because they
were not argued separately. 37 C.F.R. § 41.37(c)(1)(iv) (2018).
However, we agree with Appellant that Sugiyama does not support a
prima facie case of obviousness with regard to the method of claim 21.
Sugiyama states that “the present invention provides the aforementioned
corona-core microgel emulsifying agent wherein the following conditions
(C) and (D) are added for radical polymerization.” Sugiyama ¶ 22.
Condition (D) states that “[t]he water-ethanol mixed solvent has a volume
ratio at 20°C of water : ethanol = 90–30 : 10–70.” Id. (emphasis added).
Sugiyama further discussed preferred ratios of water:ethanol (see id. ¶¶ 48–
50) but the Examiner has not pointed to any disclosure in Sugiyama of
polymerizing its monomers in a solvent mixture comprising water and
dipropylene glycol, 1,3-butylene glycol, or isoprene glycol, as claimed.
Rather, the Examiner points to Sugiyama’s disclosure that “the water
phase ingredients used in the oil-in-water emulsified composition of the
present invention” can include water-soluble alcohols, including polyhydric
alcohols such as 1,3-butylene glycol or dipropylene glycol. Final Action 4,
citing Sugiyama ¶¶ 75–82. The oil-in-water emulsified composition,
however, is made after polymerization of the core-corona microgel. See
Sugiyama ¶ 57 (“The corona-core microgel emulsifying agent of the present
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invention emulsifies the oil phase ingredients and the water phase
ingredients to form an oil-in-water emulsified composition.”).
Therefore, Sugiyama’s suggestion to include polyhydric alcohols such
as 1,3-butylene glycol or dipropylene glycol in its final composition is not a
suggestion to carry out polymerization of its monomers using a polyhydric
alcohol as a solvent. We reverse the rejection of claim 21, and dependent
claims 22–24, 27, and 28 under 35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–28 103 Sugiyama 17–20, 25,
26
21–24, 27,
28

TIME PERIOD FOR RESPONSE
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-IN-PART