COATEX

Patent Trials and Appeals Board

Dec 30, 2020

2020002232 (P.T.A.B. Dec. 30, 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.
15/291,504 10/12/2016 Renaud SOUZY 477028US99DIV 5064
22850 7590 12/30/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
BERRIOS, JENNIFER A
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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):
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 RENAUD SOUZY, JEAN-MARC SUAU,
YVES KENSICHER, and OLIVIER GUERRET
____________

Appeal 2020-002232
Application 15/291,504
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to methods of thickening a formulation with a direct aqueous
emulsion of a polymer consisting of certain ingredients. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Coatex SAS as the real party in
interest. Appeal Br. 2. Herein, we refer to the Final Action mailed May 21,
2019 (“Final Act.”); Appellant’s Appeal Brief filed October 2, 2019
(“Appeal Br.”); Examiner’s Answer mailed November 25, 2019 (“Ans.”);
and Appellant’s Reply Brief filed January 27, 2020 (“Reply Br.”).
Appeal 2020-002232
Application 15/291,504

2
STATEMENT OF THE CASE
The Specification states that:
[t]he present invention concerns a process for thickening a
composition, preferably a cosmetic composition, through the
use of a direct emulsion in water, which is alkali-swellable, of a
polymer of the ASE [i.e., Alkali-Swellable Emulsion] or HASE
[i.e., Hydrophobically modified Alkali-Swellable Emulsion]
type, which is both rich in acrylic acid and which has a certain
quantity of AMPS [i.e., 2-acrylamido-2-methylpropane sulfonic
acid].
Spec. 11–18.2 The Specification indicates “the expression ‘alkali swellable
polymer’ . . . signifies that the polymer is capable, when the medium is
alkaline, of incorporating a quantity of water such that there is formation of
a gel and therefore an increase of viscosity.” Id. at 4:24–27. However, the
Specification notes “[i]t is sought, very naturally, to thicken [cosmetic]
formulations in a pH range matching that of skin, i.e., at values of between 5
and 7,” which is not alkaline. Id. at 1:31–34.
The Specification describes some prior “technical solutions to this
problem.” Spec. 2:1. One of these is the “back-acid” technique, which
involves “introducing a surfactant and an alkali-swellable acrylic copolymer
into an aqueous medium.” Id. at 2:26–32 (citing WO 01/76552 A2,
published Oct. 18, 2001). A “thickening effect” occurs when the polymer’s
“carboxylic acid groups are neutralized” before adding acid back to reduce
the pH, “the role of the surfactant being to maintain the thickening effect,
even when the pH is reduced.” Id. According to the Specification, the use
of surfactants in back-acid technique and other prior approaches to
formulating at lower pH is problematic because they “constitute additional

2 We herein cite to Appellant’s Specification filed October 12, 2016.
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Application 15/291,504

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formulation additives which make the formulation more complex, and which
can interact with the surfactants already contained in the formulation,
sometimes creating undesirable effects (notably phase separation, or the
formation of residual insolubles).” Id.at 2:21–25.
The Specification states that the process and polymers in the present
application “enable a formulation to be thickened, without . . . introducing
new surfactants, or organic solvents other than water, into the formulation.
In addition, it is possible to activate the thickening phenomenon in a pH
zone of between 5 and 7, without using the ‘back-acid’ technique.” Id. at
4:1–4.
Claims 1, 6–11, 13, 14, 16, 17, and 20–25 are on appeal and can be
found in the Claims Appendix of the Appeal Brief. Claim 1 is the only
independent claim. It reads as follows:
1. A method for thickening a formulation, the method
comprising:
contacting the formulation with a direct aqueous emulsion
of a polymer, followed by
regulating a pH of the formulation to a value between 5
and 7, thereby forming a thickened formulation, wherein the
emulsion is free from surfactants and organic solvents other
than water and the polymer consists, expressed as a content by
weight of monomers therein, of:
e) from 20% to 60% by weight of acrylic acid and,
optionally, methacrylic acid, wherein a content by weight of
acrylic acid compared to a total weight of acrylic and methacrylic
acid is at least 50%,
f) from 40% to 80% by weight of ethyl acrylate, butyl
acrylate, methyl methacrylate, or any combination thereof,
g) from 0.05% to 22% by weight of 2-acrylamido-2-
methylpropane sulfonic acid, and
h) from 0 to 1 % by weight of at least one cross-linked
monomer.
Appeal 2020-002232
Application 15/291,504

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Appeal Br. 21.
The following rejections are before us for review:
I. Claims 1, 6, 8–11, 13, 16, 17, and 20–23 under 35 U.S.C. § 103 as
unpatentable over Greenblatt3, Nakayama,4 and Miles;5
II. Claims 1, 6, 8–11, 13, 14, 16, 17, and 20–23 under 35 U.S.C. § 103
as unpatentable over Greenblatt, Nakayama, Miles, and Rieger;6 and
III. Claims 1, 6–11, 13, 16, 17, and 20–25 under 35 U.S.C. § 103 as
unpatentable over Greenblatt, Nakayama, Miles, and Sonnabend.7
Appeal Br. 8.
All three rejections are premised on the same combination of
Greenblatt, Nakayama, and Miles as applied to independent claim 1. See
Final Act. 5–10. For this reason, we analyze the obviousness rejections
together, focusing on claim 1 as representative. The issue before us is
whether a preponderance of the evidence supports Examiner’s conclusion
that the cited prior art renders the method of claim 1 obvious.
Analysis
Examiner finds that “Greenblatt teaches a direct polymer emulsion in
water” that is “useful for controlling the viscosity of aqueous systems to
which the solutions are added.” Final Act. 5. Examiner premises the
rejection of claim 1 on a polymer consisting of the monomers taught in “Run
10 in Table 1 of Greenblatt.” Id. According to Examiner, Run 10

3 US 6,063,857, issued May 16, 2000 (“Greenblatt”).
4 US 2003/0082220 A1, published May 1, 2003 (“Nakayama”).
5 US 2,118,566, issued May 24, 1938 (“Miles”).
6 Surfactants in Cosmetics 1–3 (Martin M. Rieger et al. eds., 2nd ed. 1997)
(“Rieger”).
7 US 4,384,096, issued May 17, 1983 (“Sonnabend”).
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Application 15/291,504

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exemplifies a direct polymer emulsion wherein the polymer is
prepared in the presence of water and in the absence of
surfactants and other organic solvents and is derived from a
monomer mixture of ethyl acrylate (EA, 52%), methacrylic acid
(MAA, 42%) and AMPS (6%), this monomer mixtures reads on
the polymer of instant claim 1 wherein 40-80% is EA and 0.05-
22% is A[MP]S.
Id. Examiner finds it would have been prima facie obvious to substitute the
methacrylic acid in Run 10 with acrylic acid because Greenblatt teaches both
are “preferred anionic monomers” thus “showing them to be functionally
equivalent.” Id. Thus, Examiner concludes that the polymer emulsion in
Run 10 suggests a polymer consisting of the ingredients recited in claim 1.
Id. at 5–6.
Regarding the other limitations of claim 1, Examiner points to
Greenblatt Example 3, which “teaches a paper coating composition and then
addition of the composition of Greenblatt (aqueous emulsion polymers),
reading on ‘contacting the formulation with a direct aqueous emulsion of a
polymer’ to create a thickening effect.” Final Act. 7. Examiner
acknowledges that “Greenblatt does not teach regulating the pH to be 5-7.”
Id. For that limitation, Examiner relies on Miles, which “teaches that the
skin generally has a pH ranging from 4-7” and, therefore, “it is beneficial to
include in a cosmetic a buffer substance or compound in an amount
sufficient to maintain the preparation at a definite pH comparable to the
normal pH of the skin.” Id. at 7–8. Based on this teaching, Examiner
concludes:
It would have been prima facie obvious to one of ordinary skill
in the art at the time the invention was made to modify the
teachings of Greenblatt and Nakayama with those of Miles and
add a buffered substance or compound to the skin cosmetic
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compositions of Greenblatt in amounts sufficient to ensure that
the composition of Greenblatt has a pH ranging from 4-7,
preferably about 5.5, ensuring that the pH of the skin remain
within normal range (slightly acidic), as Miles teaches that the
normal pH of the skin is its greatest protection against bacteria
found in the air and the pH of the skin normally ranges from 4-
7, for most people a normal pH is 5.5. Absent evidence to the
contrary one of skill in the art would have a reasonable
expectation of success as . . . Greenblatt, Nakayama and Miles
teach[] cosmetic composition suitable for topical application.
Id. at 8.
Among other things, Appellant argues that Examiner’s prima facie
case is flawed because:
Miles is directed only to the pH of skin — not to the pH
dependency of the thickening effect of a given polymer. That is,
while it may generally be true that compositions that come into
contact with the skin are preferably pH neutral or slightly
acidic, there is nothing in Miles that would have predicted, in
the presently claimed method using the presently claimed direct
aqueous emulsion of a polymer, that regulating the pH of a
treated formulation to a value between 5 and 7 would have
formed a thickened formulation.
Appeal Br. 14. Appellant points out that the thickening method Examiner
relies on in Greenblatt Example 3 taught regulating the pH of the
formulation to 8.5–9. Id. According to Appellant, “[t]he high pH used in
Greenblatt is completely different from, and not suggestive of, the pH of the
present method, where the pH of the formulation is regulated to a value
between 5 and 7, thereby forming a thickened formulation.” Id. For this
reason, Appellant contends that Examiner has not shown that one of
ordinary skill in the art would have reasonably expected that a thickened
formulation under the conditions recited in claim 1. See Reply Br. 8
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(asserting that adjusting to the recited 5 to 7 pH range “would not have been
obvious to do with a reasonable expectation of success” and that “[t]o the
contrary, as explained in the Spec., a surfactant-free composition would
have been expected to not have a thickening effect after reducing the pH”).
After reviewing the full record before us, we determine that
Appellant has the better position. Miles, the only reference Examiner relies
upon for the pH range limitation, is silent with respect to polymer
thickening agents of the type recited in claim 1. Therefore, while Miles
may provide a rationale for formulating a cosmetic at a pH range between 5
and 7, that fact does not suggest that a skilled artisan would have
reasonably expected that Greenblatt’s polymer emulsions could be used to
thicken a formulation within that pH range. To the contrary, both
Greenblatt and Nakayama suggest that such emulsions provide a thickening
effect at alkaline pH, and not within the pH range recited in claim 1. See
Greenblatt 1:20–35 (teaching HASE polymers “are typically provided as
aqueous latex dispersions at low pH with low viscosities” that thicken when
neutralized with “concentrated bases such as sodium hydroxide or
ammonium hydroxide”); Nakayama ¶ 17 (explaining that an alkali-soluble
polymer emulsion thickener “is a low viscosity polymer aqueous
dispersion” that “increases viscosity . . . by the addition of an alkali agent”).
The only example of a thickening method in Greenblatt, i.e.,
Example 3, is consistent with these teachings. Greenblatt Example 3
teaches that the formulation “pH was adjusted to 8.5–9 with ammonia”
before adding the polymer to thicken it. Greenblatt 7:16–17. Thus, while
we agree with Examiner’s reasoning that it would have been prima facie
obvious to substitute acrylic acid for the methacrylic acid in Greenblatt Run
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Application 15/291,504

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10,8 Examiner has not established a prima facie showing for claim 1 as a
whole, which additionally requires “regulating” the pH “to a value between
5 and 7” to form a “thickened formulation” through the addition of a
polymer emulsion that is “free from surfactants.” Specifically, Examiner
has not sufficiently articulated findings demonstrating that a skilled artisan
would have reasonable expected that Greenblatt’s surfactant-free, polymer
emulsions could be successfully used to thicken a formulation within the
pH range recited in claim 1.
For this reason, Examiner’s rejections of claim 1 are not supported by
a preponderance of the evidence. The rejections of the other claims are
premised on the same combination of Greenblatt, Nakayama, and Miles for
the limitations of independent claim 1. Accordingly, we reverse those
rejections for the same reason.

8 We are unpersuaded by Appellant’s arguments that Run 10 in Greenblatt
Table 1 is an error or a comparative example. See Appeal Br. 5–12.
Nothing in Greenblatt suggests an error in Table 1. In addition, Greenblatt
specifically annotates those runs that describe a “Comparative Sample.”
Greenblatt 5 (Table 1). Run 10 is not designated as such. Accordingly, we
agree with Examiner that a skilled artisan would understand Run 10 to
describe “an inventive embodiment.” Ans. 10. We also agree with
Examiner’s reasoning that it would have been obvious to use acrylic acid in
place of the methacrylic acid in Run 10 because Greenblatt teaches the two
“are functionally equivalent.” Id. at 11.
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Application 15/291,504

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 8–11,
13, 16, 17,
20–23
103 Greenblatt,
Nakayama, Miles
1, 6, 8–11,
13, 16, 17,
20–23
1, 6, 8–11,
13, 14, 16,
17, 20–23
103 Greenblatt,
Nakayama, Miles,
Rieger
1, 6, 8–11,
13, 14, 16,
17, 20–23
1, 6–11,
13, 16, 17,
20–25
103 Greenblatt,
Nakayama, Miles,
Sonnabend
1, 6–11,
13, 16, 17,
20–25
Overall
Outcome
1, 6–11,
13, 14, 16,
17, 20–25

REVERSED