Ex Parte Bitler

Board of Patent Appeals and Interferences

Oct 4, 2011

11199049 (B.P.A.I. Oct. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN P. BITLER
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Appeal 2010-007771
Application 11/199,049
Technology Center 1700
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 5, 6, 9-11, 18, 21-26, 28, 29, 31-36, 39, 40, 42-48,
and 51-53.1 Claims 12, 13, 20, 27, 30, 37, 38, 41, 49, 50, and 54, which are

1 The Appellant’s statement of the status of the claims (Br. 1) and the
Examiner’s correction of the status of the claims (Ans. 2) both include
claim 49 among the claims rejected. However, no rejection is applied to
claim 49. For that reason and because claim 49 includes the same limitation
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all of the other pending claims, stand objected to but allowable if rewritten
in independent form. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims methods for treating human skin, nails and hair.
Claim 5 is illustrative:
5. A method of treating human skin, the method comprising applying to
the skin a thickened oil composition which is free of water and which
comprises
(1) an oil, and
(2) dispersed in the oil, a polymer which
(a) has a crystalline melting point, Tp, and an onset of melting
temperature, To, such that Tp-To is less than Tp0.7,
(b) is soluble in the oil at temperatures above Tp,
(c) has been dispersed in the oil by a process which comprises
(i) dissolving the polymer in the oil at a temperature above
Tp, and
(ii) cooling the solution to crystallize the polymer in the
oil, and
(d) is a side chain crystalline (SCC) polymer which is
substantially free of functional groups;
the composition being at a temperature which is below Tp.

The References
Murui 4,423,031 Dec. 27, 1983
Mougin 5,851,517 Dec. 22, 1998
De La Poterie 6,682,748 B1 Jan. 27, 2004
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 21-26, 31, 33-36, 39, 40, 42, 44-48, and 51-53 over Murui, and

as claim 20 which is not rejected, it appears that, like claim 20, claim 49
stands objected to but allowable if rewritten in independent form.
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claims 5, 6, 9-11, 18, 21-26, 28, 29, 31-36, 39, 40, 42-48, and 51-53 over
De La Poterie or Mougin.
OPINION
We reverse the rejections. We need to address only the independent
claims (5, 18, 21, 28, 31, 39, 42, and 51). Those claims require a side chain
crystalline (SCC) polymer which is either 1) dispersed in oil by dissolving
the polymer in the oil at a temperature above its onset of melting
temperature and cooling the resulting solution to crystallize the polymer in
the oil (claims 5, 21, 31, and 42), or 2) is in the form of a polymer network
in which polymer crystallites are connected to one another by semi-soluble
chains (claims 18, 28, 39, and 51).2
Rejection over Murui
Murui discloses “an eye makeup preparation comprising, as a film-
forming constituent, an aqueous emulsion of at least one copolymer of one
or more alkyl acrylates having from C4 to C18 alkyl groups in the ester
portion and one or more alkyl methacrylates having from C1 to C4 alkyl
groups in the ester portion” (col. 2, ll. 50-55).
The Examiner argues that the Appellant’s disclosures that “[i]n one
preferred embodiment, the SCC polymer consists essentially of units derived
from at least one n-alkyl acrylate or methacrylate in which the n-alkyl group
contains 12 to 50, preferably 16 to 50, carbon atoms” (Spec. 9-11) and that
“[p]referred SCC polymers comprise side chains comprising linear

2 The Appellant believes that the polymer network in which polymer
crystallites are connected to one another by semi-soluble chains results from
dissolving the polymer in oil at a temperature above its onset of melting
temperature and cooling the resulting solution to crystallize the polymer in
the oil (Spec. 6:11-16).
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polymethylene moieties containing 10 to 50, especially 14 to 22, carbon
atoms” (Spec. 5:18-20) indicate that Murui’s copolymer of one or more
alkyl acrylates having from C4 to C18 alkyl groups in the ester portion and
one or more alkyl methacrylates having from C1 to C4 alkyl groups in the
ester portion is crystalline (Ans. 5).
The Appellant argues that the portions of the Appellant’s
Specification relied upon by the Examiner do not mean that all of the
polymers made from monomers having the disclosed number of carbon
atoms are crystalline (Br. 13:14-20). In support of that argument the
Appellant relies upon the Declaration of Steven P. Bitler (the inventor) (filed
April 18, 2007) wherein Bitler states:
[A]n SCC homopolymer which consists essentially of units
derived from one or more n-alkyl acrylates, each of the n-alkyl
groups containing 16 to 50 carbon atoms, will have crystallinity
as defined in the present claims. However, the presence of
other randomly copolymerized units derived from n-alkyl
acrylates or methacrylates containing smaller numbers of
carbon atoms, and/or containing functional groups, reduces (or,
if the amount of the other copolymerized units is too large,
removes completely) the crystallinity. [p. 4, ll. 23-30]
. . .
[I]t is technically incorrect to expect that a copolymer of one of
more alkyl acrylates having from C4 to C18 alkyl groups in the
ester portion and one of more alkyl methacrylates having from
C1 to C4 alkyl groups in the ester portion, as disclosed by
Murui, will meet the requirements of the present claims, or
even have any measurable crystallinity at all.
6D Polymer technologists typically characterize crystalline
polymers by reference to their crystalline melting points, and
amorphous polymers by reference to their glass transition
temperature (Tg). Murui’s reference to the Tg of his polymers
makes it clear, therefore, that he regards all his polymers as
amorphous polymers. [p. 6, ll. 10-19]
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The Examiner argues that “Mr. Bitler’s Declaration argues that the
cited references do not necessarily disclose crystalline polymers, but he is
arguing against his own specification and it is only an opinion, because no
proof is supplied” (Ans. 5).
In the Declaration, Bitler relies upon Murui’s characterization of the
copolymers by their glass transition temperature (col. 3, ll. 48-53; Table 1)
as evidence that the copolymers are amorphous (Decl. 6:16-19). The
Examiner has provided no evidence to the contrary. Also, Bitler challenges
the Examiner’s argument (Ans. 5) that the Appellant’s disclosure of
copolymers which are made from monomers having the disclosed number
carbon atoms and are crystalline (Spec. 5:5-20) indicates that Murui’s
copolymers made from one or more alkyl acrylates having from C4 to C18
alkyl groups in the ester portion and one or more alkyl methacrylates having
from C1 to C4 alkyl groups in the ester portion are crystalline (Decl. 4:23 –
5:3; 6:10-14), and the Examiner has not responded with evidence or
technical reasoning supporting the Examiner’s argument.
The Appellant argues that Murui does not disclose or suggest
copolymer-in-oil dispersions which 1) are made by dissolving them in the oil
at a temperature above Tp and cooling the solution to crystallize the polymer
in the oil, or 2) are in the form of a polymer network in which polymer
crystallites are connected to one another by semi-soluble chains (Br. 15).
The Examiner does not mention those claim requirements in the
explanation of the rejection (Ans. 3). In the Examiner’s response to the
Appellant’s arguments the Examiner argues that “as long as the
compositions recited by the applied references are similar to the
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compositions claimed by applicant, the method of making the compositions
is irrelevant” (Ans. 5-6).
When making an obviousness rejection the Examiner must show that
the claimed subject matter, not just something similar to it, would have been
prima facie obvious to one of ordinary skill in the art. The Examiner has not
shown that Murui would have fairly suggested, to one of ordinary skill in the
art, polymer-in-oil dispersions having the characteristics of polymer-in-oil
dispersions which meet either of the above two claim requirements argued
by the Appellant.
For the above reasons we do not sustain the rejection over Murui.
Rejection over De La Poterie or Mougin
De La Poterie discloses a composition which is suitable for topical
application and contains a liquid fatty phase and at least 2 wt% of a polymer
which is dispersible in the fatty phase (abstract). “The dispersible polymer
is advantageously provided in the form of dispersed particles which are
stabilized at the surface by at least one stabilizing agent” (col. 4, ll. 43-46).
The disclosed stabilizing agents include “acrylates or methacrylates of
C8-C30 alcohols” (col. 9, ll. 19-20).
Mougin discloses a cosmetic, pharmaceutical or hygiene composition
comprising dispersed polymer particles which are surface stabilized with a
stabilizer which can be acrylates or methacrylates of C8-C30 alcohols (col. 1,
ll. 7-9; col. 4, ll. 43-54; col. 5, ll. 1-4).
The Appellant argues (Br. 16):
[De La Poterie and Mougin] do not disclose or suggest that the
polymeric stabilizing agent is present (as in independent
claims 18, 28, 39 and 51): -
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in the form of a polymer network in which polymer
crystallites are connected to one another by semi-soluble
chains.
The references do not disclose or suggest that the stabilizing
agents should be dispersed in an oil by (as in independent
claims 21, 31, 39, 42 and 51): -
(i) dissolving the polymer in the oil at a temperature
above Tp, and
(ii) cooling the solution to crystallize the polymer in the oil.

The Examiner does not address those claim limitations in either the
explanation of the rejection (Ans. 4-5) or the response to the Appellant’s
arguments (Ans. 5-6). Thus, the Examiner has not carried the burden of
establishing a prima facie case of obviousness of the Appellants’ claimed
method over De La Poterie or Mougin. See In re Fine, 837 F.2d 1071, 1074
(Fed. Cir. 1988); In re Piasecki, 745 F.2d 1468, 1472 (CCPA 1984); In re
Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 21-26, 31, 33-36, 39,
40, 42, 44-48, and 51-53 over Murui, and claims 5, 6, 9-11, 18, 21-26, 28,
29, 31-36, 39, 40, 42-48, and 51-53 over De La Poterie or Mougin are
reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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