Ex Parte Atis et al

Board of Patent Appeals and Interferences

Mar 26, 2009

10449150 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BALANDA ATIS
and
WEI WU,
Appellants
____________________

Appeal 2008-5342
Application 10/449,1501
Technology Center 1600
____________________

Decided: March 27, 20092
____________________

Before CAROL A. SPIEGEL, DONALD E. ADAMS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL

1 Application 10/449,150 (the disclosure of which is cited as "Spec” or also
referred to as the “’150 application” or “’150 specification”), filed 2 June
2003, claims benefit under 35 U.S.C. § 119 of the 31 May 2002 filing date
of provisional application 60/384,162. The real party in interest is L'Oréal
of Paris, France (Appeal Brief filed 9 January 2008 ("Br.")).
2 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. Statement of the Case
Appellants appeal under 35 U.S.C. § 134 from an Examiner's final
rejection of claims 1-18 and 26-31. Claims 19-25, the only other pending
claims, have been withdrawn from consideration (Br. 2; Ans.3 2). We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The subject matter on appeal is directed to a composition comprising
a liquid fatty phase comprising (i) a polyheteroatom structuring polymer and
(ii) a film-forming polyester and method of use thereof. Claim 1 is
illustrative and reads (Br. 11):
1. A composition comprising:
a liquid fatty phase, which comprises at least
one structuring polymer having a polymer skeleton
with at least one hydrocarbon-based repeating unit,
and at least one heteroatom; and
at least one film-forming polyester.

The Examiner has rejected claims 1-18 and 26-31 as unpatentable
under 35 U.S.C. § 103(a) over the combined teachings of Pavlin,4 Cincotta,5
and Drechsler6 (Ans. 3).

3 Examiner's Answer mailed 8 April 2008 ("Ans.").
4 U.S. Patent 5,783,657, Ester-Terminated Polyamides of Polymerized Fatty
Acids Useful in Formulating Transparent Gels in Low Polarity Liquids,
issued 21 July 1998, to Pavlin et al. ("Pavlin").
5 U.S. Patent 6,706,674 B2, Nonaqueous Hair Styling Composition and
Method of Use, issued 16 March 2004, based on application 09/764,942,
filed 17 January 2001, to Cincotta et al. ("Cincotta").
6 U.S. Patent 6,406,683 B1, Transfer Resistant Cosmetic Compositions,
issued 18 June 2002, based on application 08/732,946, filed 17 October
1996, to Drechsler et al. ("Drechsler").
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Appellants have argued the patentability of claims 1-18 and 26-31 as a
single group (Br. 4-9). Therefore, we decide this appeal on the basis of
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
At issue is whether Appellants have shown the Examiner erred in
concluding that Cincotta and/or Drechsler would have motivated one of
ordinary skill in the cosmetic art to add a film-forming polyester to the
composition of Pavlin; and, if not, whether the Appellants' evidence of
unexpected results, the Atis Declaration,7 is sufficient to overcome the
Examiner's prima facie conclusion of obviousness.
II. Findings of Fact ("FF")
The following findings of fact are supported by a preponderance of
the evidence of record.
[1] The '150 application describes a composition comprising a liquid fatty
phase containing a polyheteroatom structuring polymer, e.g., a
polyamide resin described by Pavlin, for example "Uniclear 100," and
a film-forming polyester, e.g., a trimethylpentanediol/adipic
acid/glycerin crosspolymer polyester, for example "Lexorez® 200,"
said to be useful in cosmetic formulations for making up skin and/or
hair (Spec. ¶¶ 7, 9, 50-56, 63, 102, and 130-132).
[2] The composition of the '150 application is said to provide long-
wearing cosmetics, e.g., mascara, lipstick, face powder, shampoo, hair
conditioning, and skin care products, which are pliable, comfortable,
and resist transfer when the product comes into contact with skin, a
cup, paper, handkerchief, etc. (Spec. ¶¶ 5, 6, 10, and 11).

7 Declaration under 37 C.F.R. § 1.132 by co-inventor, Balanda Atis, dated 8
March 2007 ("Atis Decl.").
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[3] Pavlin discloses compositions comprising a liquid fatty phase
containing a polyheteroatom structuring polymer as recited in claim 1
(Pavlin abstract; 2:24-50; see also Spec. ¶ 50).
[4] The compositions of Pavlin are useful as gelling agents in a variety of
personal care products including cosmetics, make-up, and hair care
products (Pavlin abstract; 3:31-39).
[5] The compositions of Pavlin do not contain a film-forming polymer.
[6] Balanda Atis testified that two mascara compositions were prepared
as described in Example 1 of the '150 specification, one containing
both a representative structuring polymer and a representative
polyester film-former, i.e., Example 1 of the Invention, and the other
containing water in place of the polyester film-former, i.e.,
Comparative Example (Atis Decl. ¶ 7).
[7] Example 1 of the '150 specification used Uniclear 100 as a polyamide
resin structuring polymer and Lexorez 200 as the polyester film-
former (Spec. ¶ 40).
[8] According to Mr. Atis (Atis Decl. ¶¶ 8-9),
These mascara compositions were then tested for
water-resistance, an indicia of long-wear. The
composition is applied to three samples of 30 knots
straight Caucasian hair …then dried at room
temperature for … one hour. The made-up
samples are immersed in … water, for one hour.
The three samples are moved to and fro five times
over a Wypall L40 type square wipe from
Kimberley-Clark. The intensity of black deposited
by the sample was then assessed. …
These results coupled demonstrate that the
combination of structuring polymer and film-
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forming polyester had significantly less transfer
when compared to the composition missing the
film forming resin. …
[9] Cincotta discloses that hair care products, such as styling gels, may
include various enhancing additives, including film formers (Cincotta
3:8-19).
[10] For example, according to Cincotta, polyesters can be used to aid in
providing gloss and adherence to hair surface and to impart water
resistance properties to the composite polymeric film left on the
surface of hair (Cincotta 8:4-14).
[11] According to Cincotta, one example of a suitable polyester is Lexorez
200, and other examples include, but are not limited to Lexorez 100,
Lexorez TC-8, Lexorez TL-8 and mixtures thereof (Cincotta 8:15-29).
[12] Drechsler teaches that an overcoat or topcoat of film-forming
polyesters may be used to enhance the gloss and shine of cosmetic
compositions (Drechsler 10:39-59; Example 3).
III. Discussion
A. The Examiner's position
The Examiner acknowledges that the compositions of Pavlin lack the
film-forming polyester required by the composition of claim 1 (Ans. 3).
However, the Examiner concluded that it would have been obvious to add a
film-forming polyester to the composition of Pavlin in view of Cincotta's
teachings at column 8, lines 4-29, of the advantages of the claimed polyester,
e.g., forms a film on the hair and provides water resistant properties (Ans. 8-
9). The Examiner relies on Drechsler as teaching that the polyester of claim
1 has been used in the cosmetic art (Ans. 6).

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B. Appellants' position
Appellants argue that given the number of possible optional additives
available for inclusion in cosmetic compositions of the prior art, there is no
motivation to select a film-forming polyester other than hindsight
reconstruction of the claimed composition (Br. 5 and 9). Appellants further
argue that Cincotta relates to hair care products, not to transfer resistant
make-ups, e.g., lipsticks and mascaras (Br. 5). Finally, Appellants argue that
the Atis Declaration demonstrates that compositions containing both the
structuring polymer and the film-forming polyester are surprisingly more
transfer resistant than compositions lacking the film-forming polyester (Br.
6-8). Appellants emphasize that the film-forming polyester disclosed in
Cincotta is only an optional ingredient and, therefore, provides no indication
that it would result in a transfer-resistant make-up composition (Br. 8).
C. Legal principles
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of a claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). This requirement prevents the use of "the inventor's
disclosure as a blueprint for piecing together the prior art to defeat
patentability – the essence of hindsight." Ecolochem, Inc. v. So. Cal. Edison
Co., 227 F.3d 1361, 1371-72 (Fed. Cir. 2000) (quoting In re Dembiczak, 175
F.3d 994, 999 (Fed. Cir. 1999)). Furthermore, as explained in In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971), “Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning ….” Reconstruction is proper if it relies on ordinary skill at the
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time of the invention and not on knowledge gained solely from the
applicant’s disclosure. Id.
Moreover, the motivation to combine the teachings of the prior art
need not be identical to that of Appellants. In re Dillon, 919 F.2d 688, 693
(Fed. Cir. 1990).
When the Examiner has met the initial burden of showing a prima
facie case of patentability, the burden then shifts to Appellants to rebut. In
re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005). Then, patentability is
determined in view of the entire record. Id. However, "[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 1970).
D. Analysis
Here, the Examiner expressly articulated his reasons for adding a
film-forming polyester to the cosmetic compositions of Pavlin, i.e., Cincotta
teaches that film-forming polyesters form films on hair and provide water
resistant properties to the composition (Ans. 8-9; FF 4, 5, and 10). Cincotta
expressly suggests adding a film-forming polyester to hair care products,
such as styling gels (FF 9-10), which contain gelling agents, such as
disclosed by Pavlin (FF 4). Thus, the Examiner's reasons for combining the
teachings of Pavlin and Cincotta do not rely on knowledge gained solely
from the disclosure of the '150 specification. Therefore, Appellants'
arguments directed to a lack of motivation to combine and impermissible
hindsight reconstruction are not persuasive of Examiner error.
As to the arguments that Cincotta relates to hair care products, not to
transfer-resistant make-up products, e.g., lipsticks and mascaras, the
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composition of claim 1 is not so limited. Indeed, as noted by the Examiner
(Ans. 7), method claim 30 recites applying the composition of claim 1 to the
“skin and/or hair.” Moreover, "[a]n intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates." Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003). Therefore, this argument is not persuasive of Examiner error.
Finally, as pointed out by the Examiner (Ans. 10), the comparative
testing relied upon in the Atis Declaration is not commensurate in scope
with the composition of claim 1, e.g., only one specific combination of one
specific structuring polymer and one specific film-forming polyester was
tested. There is no evidence that all combinations of structuring polymers
and film-forming polyesters covered by the claims would have the same
properties as shown for the one example in the Atis Declaration. Moreover,
since the mascara compositions of the Atis Declaration were tested for
water-resistance (FF 8) and Cincotta teaches that polyesters can provide
adherence to hair surfaces and impart water resistance properties (FF 10),
the results of the comparative testing shown in the Atis Declaration may not
be unexpected. Therefore, the Atis Declaration is insufficient to overcome
the Examiner's prima facie conclusion of obviousness.
E. Conclusion
Appellants have not shown the Examiner erred in concluding that
Cincotta and/or Drechsler would have motivated one of ordinary skill in the
cosmetic art to add a film-forming polyester to the composition of Pavlin;
and, the Atis Declaration is insufficient to overcome the Examiner's prima
facie conclusion of obviousness. Therefore, we sustain the rejection of
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claims 1-18 and 26-31 under § 103(a) over the combined teachings of
Pavlin, Cincotta, and Drechsler.

IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 1-18
and 26-31 as unpatentable under 35 U.S.C. § 103(a) over the combined
teachings of Pavlin, Cincotta, and Drechsler is AFFIRMED, and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED

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