Ex Parte Belli et alDownload PDFPatent Trial and Appeal BoardMay 24, 201610479344 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/479,344 0510512004 Emmanuelle Belli 22850 7590 05/26/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 245877USOPCT 6194 EXAMINER PURDY, KYLE A ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 05/26/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMMANUELLE BELLI and AUDREY GILLES Appeal2013-003209 Application 10/479,344 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and ROBERT A. POLLOCK, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. § 134 involving claims to a cosmetic composition packaged with a propellant in an aerosol device. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as L 'Oreal (see App. Br. 2). Appeal2013-003209 Application 10/479,344 Statement of the Case Background "Styling products are usually used to construct and structure the hairstyle and give it long-lasting hold. To do this, film-forming polymers are introduced into a cosmetically acceptable medium" (Spec. 1, 11. 10-13). "However, certain polymers result in hardening of the hair and/or a sticky nature. As a result, the hair is often stuck together, and the hair shape is destroyed upon disentangling" (Id. at 11. 14--17). "To overcome these drawbacks, it has already been proposed to use solid powder in cosmetic compositions" (Id. at 11. 18-20). "The Applicant has found ... that by selecting silicate particles as solid particles, it is possible to obtain good cosmetic properties and to obtain styling without making the hair sticky or overloading it" (Spec. 2, 11. 13-17). The Claims2 Claims 1-5, 7-12, 16-19, 23-32, 34--41, 45, and 46 are on appeal. Claim 1 is representative and reads as follows: 1. A composition comprising a propellant and a liquid cosmetic composition, wherein the liquid cosmetic composition comprises, in a cosmetically acceptable medium: (i) 0.1 to 0.8 % by weight solid particles comprising at least 10% by weight of at least one silicate, and (ii) from 0.5 to 8% by weight of the total composition of at least one surfactant; wherein said solid particles comprise less than 1 % by weight of aluminum. 2 Claims 6, 13-15, 20-22, 33, and 42--44 were cancelled (see Arndt. 5/9/2013 2-8). 2 Appeal2013-003209 Application 10/479,344 The Issues3 A. The Examiner rejected claims 1-5, 7-12, 16-19, 23, 25-32, 34--41, and 45 under 35 U.S.C. § 103(a) as obvious over Midha,4 Fleury,5 Sakaya,6 and Laponite7 (Ans. 4---6). B. The Examiner rejected claims 24 and 46 under 35 U.S.C. § 103(a) as obvious over Midha, Fleury, Saka ya, Laponite, and Bolich, Jr. 8 (Ans. 7-8). A. 35 U.S.C. § 103(a) over Midha, Fleury, Sakaya, and Laponite The Examiner finds that Midha teaches "hair cosmetic compositions for enhancing volume" that comprise a "non-ionic surfactant ... equivalent to about 0.3% by weight of the liquid mousse formulation. Laponite XLS is ... about 0.5% by weight of the liquid formulation" and propellant (Ans. 4). The Examiner relies on Sakaya and Laponite®XLS as evidence that Laponite XLS is composed of silicate particles (Ans. 5). The Examiner acknowledges that "Midha fails to teach using a surfactant in an amount of between 0.5-8% by weight of the composition" (Ans. 5). The Examiner finds that Fleury teaches an aerosolized mousse that comprises nonionic surfactants "in an amount between 0.05-50% by weight of the composition" (Ans. 5---6). 3 The obviousness-type double patenting rejection over US 10/479, 170 is moot in view of the abandonment of that application. 4 Midha et al., US 2002/0034486 Al, published Mar. 21, 2002. 5 Fleury et al., US 6,030,630, issued Feb. 29, 2000. 6 Sakaya et al., US 5,631,755, issued May 20, 1997. 7 Laponite®XLS product sheet (2002). 8 Bolich, Jr., et al., US 6,635,240 Bl, issued Oct. 21, 2003. 3 Appeal2013-003209 Application 10/479,344 The Examiner finds it obvious to "adjust the amount of surfactant because in doing so would aid in stabilizing and dispersing ingredients that would otherwise be difficult to solubilize but provide a desirable emollient benefit. ... Fleury teaches using about 2% of a surfactant as being useful for stabilizing an aerosolized mousse composition" (Ans. 6). The issues with respect to this rejection are: (i) Does the evidence of record support the Examiner's conclusion that Midha, Fleury, Sakaya, and Laponite render claim 1 obvious? (ii) If so, have Appellants presented evidence of secondary considerations, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of non-obviousness? Findings of Fact 1. Midha teaches "leave-in hair cosmetic compositions, comprising non-spherical microparticles exhibiting a mean particle size of less than about 100 µm in its longest dimensions, a water-soluble or water- swellable polymer, and an aqueous carrier" (Midha i-f 6). 2. Midha teaches a mousse formulation in Example 10 compnsmg: In a sanitized 4L beaker, 2835.80 g of water is added and heated to 125° F+/- 5° F. With mechanical stirring at about 400 rpm, 90.00 g of Polyquatemium-4, 3.00 g of Disodium EDTA, and 0.12 g of Citric Acid is added to the water. Ingredients are mixed for 15 minutes or until completely dissolved. Solution is stopped from being heated and 7.50 g of C9-11Pareth8 and 15.00 g of Propylene Glycol is added to the solution, with continuous stirring. When the batch temperature is under 110° F., 21.22 g ofDMDM Hydantoin, 1.20 g of Panthenol, 2.70 g of Panthyl Ethyl Ether, 2.4 g of Keratin amino acids, 0.15 g of Myristyol Hydrolyzed Collagen and 4.50 g of perfume are 4 Appeal2013-003209 Application 10/479,344 added. Mechanical stirring is ended and 16.41 g of Laponite XLS™ microparticles are manually stirred into the solution. pH of the solution is measured and adjusted by adding Citric Acid, with a target of 5.85+/-0.45. Mousse product is produced by filling cans with 171.13 g of this solution and 16.1 g of Propellant A-46. (Midha ii 278). 3. Midha teaches that the "compositions of the present invention may further contain an additional conditioning agent selected from the group consisting of ... cationic surfactants ... The additional conditioning agents herein are preferably used at levels by weight of the composition of from about 0.01 % to about 10%" (Midha ii 176). Midha teaches that "[a]mong the cationic surfactants useful herein are those corresponding to the general formula (I)" (Midha ii 189). 4. Fleury teaches that "[ w ]hen the cosmetic compositions are in the form of . .. mousses, the preferred solvents comprise \'l/ater . ... The mousses and the aerosol sprays can also use any propellant capable of generating the products in the form of a mousse or fine, uniform spray" (Fleury, col. 8, 11. 1-9). 5. Fleury teaches These cosmetic compositions can also contain surfactants which serve to disperse, emulsify, dissolve or stabilize various compounds used for their emollient or wetting properties. The surfactants are used in these compositions in concentrations ranging from 0.05 to 50% by weight of the preparation. Anionic, nonionic, cationic, zwitterionic or amphoteric surfactants or mixtures of these surfactants are thus found. (Fleury, col. 10, 11. 1-8). 5 Appeal2013-003209 Application 10/479,344 6. The Styling Mousse in Example 12 of Fleury is reproduced below: \Vatef Pmduc" of O!liC of Exampks 1-S c· i:)('.OC~ n1p hv{j k1.c.e~-~~t{~ Srn:fam1 methyl Gkyl wi.uak DMDl\-1. hvdi1.~'ltDin. Db·:.xyiatro fro>.tegyl ~.k:nhol F,-;i grn.n.:t~ Pro~'.lk:~.'lt gr~s Dis.()Jium EU!J\ (Fleury, col. 18, 11. 10-24). D .. 5 7. Laponite teaches that Laponite®XLS comprises sodium magnesium silicate (see Laponite 1 ). Principles of Law "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417. Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 4--6; FF 1-7) and agree that claim 1 is rendered obvious by Midha, Fleury, Sakaya, and Laponite. We address Appellants' arguments below. Prima F acie Case Appellants contend that "[ t ]here is simply no nexus between these two patents other than the allegations in the rejection. In fact, there is no disclosure in Midha for the purpose or necessity of surfactants in the claims" 6 Appeal2013-003209 Application 10/479,344 (App. Br. 6). Appellants contend that "one of skill would understand that in the types of compositions Midha describes, surfactants are not needed or if included, would be at very low levels (compared to what is claimed or described by Fleury)" (App. Br. 6). We do not find this argument persuasive because Midha teaches inclusion of C9-11 Pareth 8 into the mousse composition (FF 2). The Examiner finds, and Appellants do not dispute that C9-11 Pareth 8 is a nonionic surfactant. (Ans. 9, App. Br. 7.) In addition, as the Examiner notes, "Midha also teaches that their composition may comprise a nonionic ... and cationic surfactant" (Ans. 10), with Midha specifically teaching the inclusion of cationic surfactants in the composition (FF 3). Moreover, Appellants provide no evidence for their statement regarding what "one of skill in the art would understand" regarding surfactants, instead relying solely upon attorney argument. However, "[a]ttomey's argument in a brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Thus, the evidence in Midha supports the Examiner's position that surfactants are ingredients that may be included in the mousse composition (FF 2-3) and Fleury demonstrates a specific mousse composition with 2% sodium methyl oleyl taurate and 0.1 % ethoxylated isostearyl alcohol (FF 6), which the Examiner identifies as surfactants (Ans. 6), as well as overlapping ranges for the amount of surfactant in cosmetic compositions (FF 5). Appellants contend that "the disclosure in Midha without further guidance leads one away from the amount of surfactant in the claims rather 7 Appeal2013-003209 Application 10/479,344 than towards it regardless of what Fleury teaches for an entirely different composition" (App. Br. 8). We are not persuaded. To the extent that Appellants contend Midha teaches away, a teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed"). Appellants do not identify, and we do not find, any teaching in Midha that teaches away from the use of 0.5 % or more surfactant. If instead, Appellants are simply addressing the references separately, "[ n ]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In determining obviousness, furthermore, a reference "must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." Id. Appellants' arguments fail to address the combined teachings of Midha and Fleury. Secondary Consideration Appellants contend that in the attached Rule 13 2 Declaration, it is shown that the inclusion of a specific range of surfactant, i.e., 0.5 to 8% by weight in a composition including a propellant and solid particles with at least 10% by weight of at least one silicate having less than 1 % by weight of aluminum, yields a 8 Appeal2013-003209 Application 10/479,344 composition (see amended claims) with improved characteristics (App. Br. 9). We do not find the Masse9 Declaration persuasive for several reasons. First, the Masse Declaration was unable to compare the results of composition B to the closest prior art, Midha, that also used 0.3% surfactant because "composition B did not yield a mousse and rather a liquid" (Masse Deel. i-f 7). However, Example 10 of Midha clearly indicates that "[ m ]ousse product is produced" (FF 2), demonstrating that the composition is capable of forming a mousse. Because the Masse Declaration does not provide the specific process or complete list of ingredients demonstrating that composition Bis substantially identical to Midha's Example 10 process and composition, there was no proper comparison with the closest prior art. "[A Jn applicant relying on comparative tests to rebut a prima facie case of obviousness must compare his claimed invention to the closest prior art." In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Second, the Masse Declaration is not commensurate in scope with the claims. The Masse Declaration tested only a single surfactant and a single silicate solid particle, but claim 1 encompasses any surfactant whether cationic, anionic, non-ionic, or amphoteric, and any solid particle at least 10% composed of silicate. The Masse Declaration failed to provide evidence to support the stated conclusion that "while I acknowledge that only a single type of surfactant is shown in the above-examples, I believe, 9 Declaration of Virginie Masse, dated May 5, 2011. 9 Appeal2013-003209 Application 10/479,344 based on my knowledge and experience in this field that this effect would be also present with other types of surfactants, generally" (Masse Deel. i-f 15). Lastly, the results of the Masse Declaration do not establish that the differences in the two mousses tested yielded "a new and unexpected result which is different in kind and not merely in degree." In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). The Masse Declaration states that "composition A yielded a mousse that was more airy, lighter and more pleasant to the touch than composition C"; that in 4 models out of 5 "the volume imparted to the hair by composition A was judged to be superior to that imparted by composition C" with average ratings of 2.2 for inventive composition A and 1. 7 for comparative composition C, on a scale of 0 to 5 (Masse Deel. i-fi-1 8, 12, 13). None of these results demonstrates a "difference in kind" sufficient to overcome the strong prima facie case of obviousness. "[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007). Conclusions of Law (i) The evidence of record supports the Examiner's conclusion that Midha, Fleury, Sakaya, and Laponite render claim 1 obvious. (ii) Appellants have not presented evidence of secondary considerations, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of non-obviousness. 10 Appeal2013-003209 Application 10/479,344 B. 35 U.S.C. § 103(a) over Midha, Fleury, Sakaya, Laponite, and Bolich, Jr. Appellants do not separately argue this obviousness rejection. The Examiner provides sound fact-based reasoning for combining Bolich Jr. with Midha, Fleury, Sakaya, and Laponite (see Ans. 7-8). Having affirmed the obviousness rejection of claim 1 over Midha, Fleury, Sakaya, and Laponite for the reasons given above, we also find that the further obvious combination with Bolich, Jr. renders claims 24 and 46 obvious for the reasons given by the Examiner. SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Midha, Fleury, Sakaya, and Laponite. Claims 2-5, 7-12, 16-19, 23, 25-32, 34--41, and 45 fall with claim 1. We affirm the rejection of claims 24 and 46 under 35 U.S.C. § 103(a) as obvious over Midha, Fleury, Sakaya, Laponite, and Bolich, Jr. 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 11 Copy with citationCopy as parenthetical citation