Christopher Michael. Macneill et al.

Patent Trials and Appeals Board

Oct 4, 2019

14979313 - (D) (P.T.A.B. Oct. 4, 2019)

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.
14/979,313 12/22/2015 Christopher Michael MACNEILL 463150US99 5364
22850 7590 10/04/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
10/04/2019 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 CHRISTOPHER MICHAEL MACNEILL, XIANZHI ZHOU,
TSANG-MIN HUANG, ALINE AUDE GUIMONT, CHUNHUA LI,
HY SI BUI, and RONNI LYNN WEINKAUF
____________

Appeal 2018-007183
Application 14/979,313
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
RYAN H. FLAX, Administrative Patent Judges.

FLAX, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a nail composition. Appellant1 appeals the Examiner’s rejection of
claims 1–4, 10–13, 15, and 17–19 under 35 U.S.C. § 103 is appealed.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” herein refers to the “applicant” as defined by 37 C.F.R. § 1.42.
Appellant identifies itself, “L’Oréal,” as the real party-in-interest. Br. 2.
2 Oral argument was heard on September 24, 2019; a transcript of the
hearing will be made a part of the record in due course.
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STATEMENT OF THE CASE
The Specification states that “[t]he present invention relates to nail
compositions comprising at least one dispersion of acrylic polymer particles
and at least one inorganic gelling agent.” Spec. ¶ 1. At times, the
Specification refers to the dispersion of acrylic polymer particles as an oily
dispersion and to the gelling agent as a silica. The Specification states that
the invention meets the needs for “a UV gel product which has one or more
of the following properties (preferably, all of the following properties):
good water-resistance, good wear and/or good adhesion, without prolonging
the amount of time needed for removal from nails.” Id. ¶ 6.
Independent claim 1, reproduced below, is representative:
1. A nail composition comprising at least one
photocrosslinkable compound, at least one photoinitiator, at least
one dispersion of acrylic polymer particles, and at least one
inorganic gelling agent,
wherein the at least one dispersion of acrylic polymer
particles comprises 80% to 100% by weight of C1-C4 alkyl
(meth)acrylate and of 0 to 20% by weight of ethylenically
unsaturated acid monomer, relative to the total weight of the
polymer in a hydrocarbon based oil.
Br. 13 (Claims Appendix). Dependent claims narrow the components of
claim 1 to specific compounds and amounts. Claims 2 and 15 further
require a specific range of ratios (20:1 to 1:5) of the polymer dispersion
particles and gelling agent.
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The following rejection is on appeal:
Claims 1–4, 10–13, 15, and 17–19 stand rejected under 35 U.S.C.
§ 103 over Lein,3 Viala,4 Farcet,5 and L’Alloret.6 Final Action 5–6.
DISCUSSION
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.
[Once] . . . that burden is met, the burden of coming forward with evidence
or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Arguments made by Appellants in the Appeal Brief have
been considered (no Reply Brief was submitted); arguments not so-presented
are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017); see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.”).
“The combination of familiar elements [or steps] according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “One way
for a patent applicant to rebut a prima facie case of obviousness is to make a
showing of ‘unexpected results,’ i.e., to show that the claimed invention
exhibits some superior property or advantage that a person of ordinary skill

3 WO 2013/192515 Al (published Dec. 27, 2013) (“Lein”).
4 WO 2015/022438 Al (published Feb. 19, 2015); see US 2016/0213596 A1
(published July 28, 2016, in English, as the related counterpart U.S.
published application) (“Viala”).
5 US 2011/0243864 A1 (published Oct. 6, 2011) (“Farcet”).
6 FR 11 61453, publication No. FR 2 983 719 (registered Dec. 12, 2011); see
EPO/Google-produced machine-generated English translation (“L’Alloret).
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in the relevant art would have found surprising or unexpected.” In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995). First, “[t]he evidence presented to rebut a
prima facie case of obviousness must be commensurate in scope with the
claims to which it pertains.” In re Dill, 604 F.2d 1356, 1361 (CCPA 1979);
see also In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with [the] scope of the
claims.”). Second, “[t]o be particularly probative, evidence of unexpected
results must establish that there is a difference between the results obtained
and those of the closest prior art, and that the difference would not have been
expected by one of ordinary skill in the art at the time of the invention.”
Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977
(Fed. Cir. 2014); see also In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”). Third, “[m]ere improvement in properties does not
always suffice to show unexpected results. In our view, however, when an
applicant demonstrates substantially improved results . . . and states that the
results were unexpected, this should suffice to establish unexpected results in
the absence of evidence to the contrary.” In re Soni, 54 F.3d at 751
(emphasis original). However, “‘differences in degree’ of a known and
expected property are not as persuasive in rebutting obviousness as
differences in ‘kind’—i.e., a new property dissimilar to the known
property.” Bristol-Myers, 752 F.3d at 977.
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With these standards in mind, we address the Examiner’s rejection
and Appellant’s arguments there-over.
The Examiner determined that the claims would have been obvious
over the combination of Lein, Viala, Farcet, and L’Alloret. Final Action 5–
11 and Answer 3–12 (collectively citing Lein ¶¶ 9, 16, 33, 37, 40, 43, 50–51;
Viala ¶ 99; Farcet ¶¶ 7–8, 17–19, 37, 47, 51, 117–119, 171–176, 180–181;
L’Alloret 5, 22, 28, 30, 35). To summarize, the Examiner determined that
Lein disclosed a nail composition having all the elements recited by claim 1
except for the dispersion of acrylic polymer particles (Lein disclosed
urethanes, hydroxyls, a photoinitiator, and thixotropic gelling agents). For
the specific types of gelling agents and amounts thereof, as recited in the
dependent claims, the Examiner cited and, combined with Lein, the Viala
(nail varnish) disclosure of 0–20% of, e.g., Aerosil R972, Aerosil R974,
CAB-O-SIL TS-610, or CAB-O-SIL TS-720.
For the acrylic polymer dispersion, the Examiner further cited the
disclosures of Farcet and L’Alloret, which disclosed the advantages of
including a polymer dispersion in cosmetics (including in nail compositions)
and the particular polymer dispersion components, as claimed.
As confirmed at oral argument, there is no real dispute that the cited
prior art combination discloses each element of the claims or that each
reference would be analogous art (nail cosmetics). Appellant argues that
Lien discloses that nail compositions were found to have stability issues and,
therefore, there would not have been motivation to casually add components
to Lein’s composition for fear of destabilizing the composition. See Appeal
Br. 4–5. Appellant also argues that it has presented evidence of unexpected
results sufficient to overcome the Examiner’s case for obviousness. Id. at 6–
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11. In support of this argument Appellant submitted the MacNeill
Declaration,7 which explained Examples 10 and 11 in the Specification and
contended they provide sufficient evidence that the claimed invention
produced a nail gel composition that was unexpectedly easier to remove than
comparative compositions, while maintaining good cosmetic qualities.
MacNeill Declaration ¶¶ 5–16. Appellant also raises a separate argument
that claims 2 and 15, which require a ratio of from 20:1 to 1:5 for the
dispersion and gelling agent components, would not have been obvious over
the cited art.
Appellant’s arguments are not persuasive for the reasons below.
Regarding Appellant’s argument over whether Lein would or would
not have been modified over stability concerns, as noted by the Examiner,
Lein explains that omitting tin from its compositions maintains stability and
Lein also expressly invites the addition of other typical ingredients found in
commercial nail polish. See Lein ¶¶ 33, 40. It is not disputed that Lein and
each of the other cited prior art references relate to ingredients for cosmetic
nail compositions and the components of these other references could be
included in Lein’s composition without also introducing unwanted tin.
Because Lein invites their incorporation, the skilled artisan would have had
reason to do so for the advantages expressed in the references.
As for Appellant’s arguments that the 20:1 to 1:5 (claims 2, 15) ratio
range for the claimed dispersion and gelling agent components is a
patentable distinction, the Examiner points out that the amounts of these
components taught in the cited prior art would result in ratios of the

7 Declaration Under 37 C.F.R. § 1.132, dated Aug. 1, 2017 (“MacNeill
Declaration”).
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components overlapping the claimed range. See, e.g., Answer 5 (polymer
particles included in compositions at 5–40 wt.%, citing Farcet ¶¶ 172–173),
id. at 4 (thixotropic agent included in composition at 0.1–10 wt.%, and ≥0 to
≤20 wt.%, see Lein ¶¶ 49–51, and Viala ¶¶ 98– 99, respectively); see also id.
at 11–12 (discussing claims 2 and 15). We find this to be correct.
Appellant’s evidence of unexpected results is not sufficient to
overcome the Examiner’s prima facie case for obviousness. While
Appellant has presented some evidence of improvements with an
embodiment falling within the scope of the invention over comparative
examples, the evidence is (1) not commensurate in scope with the claims,
(2) does not clearly compare the results achieved in the invention with the
closest prior art, and (3) does not clearly show an improvement in kind
versus a mere improvement by degree so as to be particularly persuasive.
See In re Dill, 604 F.2d at 1361; Bristol-Myers Squibb, 752 F.3d at 977; and
In re Soni, 54 F.3d at 751.
The Examiner takes issue with the style of experiment described in
the Specification at Examples 10 and 11 and as discussed by the MacNeill
Declaration. The Examiner determined that the evidence was too subjective
and the methods not scientific enough to draw reliable conclusions
therefrom. See Answer 9–11. We do not necessarily share these concerns,
although a more scientific methodology, controlling for a single variable,
using a significant number of samples, would make it easier to discern
actual, substantial improvements in one or a range of samples versus
comparative samples.
Our concern is that looking at Example 10, which includes the data
cited by Appellant as showing unexpected improvements, it is not possible
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to discern what might be the closest prior art or results achieved therewith,
thus, it is not apparent whether a real comparison is made between the
invention and the closest prior art. Dr. MacNeill did not identify the closest
prior art in his declaration nor did the Appeal Brief.
At oral argument, Appellant suggested that “Comparative 3” might be
representative of Lein (the closest prior art). First, on the record before us
we do not know whether this is correct and, second, even assuming
arguendo “Comparative 3” did represent Lein, the results of “Inventive 1”
are only marginally better than those of “Comparative 3”––a score of 4
versus 3 (presumably, pretty easy to pierce versus easy to pierce, i.e., one
and two respective steps below the best score of 5, “very easy” to pierce, and
two and three respective steps above the worst score of 1, “very difficult” to
pierce, per Spec. ¶ 227). Improvements were shown in each comparative
sample (adding oily dispersion in No. 2 or silica agent in No. 3) over a
baseline nail composition having no dispersion or silica, thus, these
comparative samples (prior art, if equated to Lein) show that adding such
components would have been expected to improve a nail composition’s
removability. That combining the two together further improved the
composition in this same way would also, logically, be expected.
Most critically, the “Inventive 1” sample relates to a single, specific
embodiment having 48.17% bis-HEMA IPDL, 10.58% di-HEMA
trimethylhexyl dicarbomate, 25.45% tetrahydrofurfuryl methacrylate, 1.6%
butyl acetate and acryalates copolymer, 10% oil dispersion (having 31%
solids content; a dispersion in isododecane of polymethyl acrylate particles
stabilized with an isobornyl acrylate/methyl acrylate (85/15)), 3.2% ethyl
trimethylbenzoyl phenylphosphinate, and 1% silica dimethyl silyate. Claim
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1, on the other hand, includes any photocrosslinkable compound, any
photoinitiatior, any gelling agent, and some C1-C4 alkyl (meth)acrylate
polymer as 80–100% of a dispersion in any hydrocarbon based oil. The
“Inventive 1” sample may fall within the scope of this claim, but there is no
persuasive evidence before us on appeal that this single example provides an
adequate basis to conclude that the entirety of the scope of claim 1 would
have similar results. The MacNeill Declaration does not support that this
single sample is commensurate in scope with, and representative of the
scope of claim 1, but suggests that small changes in components may result
in significant changes in the composition’s properties. See MacNeill
Declaration ¶¶ 8–11 (only the single combination of specific polymer
dispersion and specific film former worked, while other film formers failed).
Thus, we find the evidence of record is not commensurate in scope with the
claims.
We discern no error in the Examiner’s determinations, which we
conclude presented a prima facie case for the claims’ obviousness over the
cited prior art combination. We have considered Appellant’s arguments
over the rejections in their entirety, but find them unpersuasive on the record
on appeal.
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CONCLUSION
In summary, the obviousness rejection of claims 1–4, 10–13, 15, and
17–19 is affirmed.
Claims Rejected Basis Affirmed Reversed
1–4, 10–13, 15,
17–19
§ 103 Lein,
Viala, Farcet,
L’Alloret
1–4, 10–13, 15,
17–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED