Ex Parte BUI et al

Patent Trial and Appeal Board

Dec 17, 2012

11972143 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HY SI BUI, ANN MARIE ROHMEYER,
and PADRAIG McDERMOTT
__________

Appeal 2012-002434
Application 11/972,143
Technology Center 1619
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of making up keratinous substrates and to a
composition. The Patent Examiner rejected the claims for obviousness. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2012-002434
Application 11/972,143

2
STATEMENT OF THE CASE
Claims 1-28 are on appeal. Claims 1 and 15 read as follows:
1. A method of making up keratinous substrates involving applying onto
the keratinous substrates a composition comprising:
(a) a block copolymer;
(b) a tackifier;
(c) an alkyl silsesquioxane wax and/or an alkyl silsesquioxane
resin;
(d) a liquid fatty phase; and
(e) optionally, a colorant.

15. A composition comprising:
(a) a block copolymer;
(b) a tackifier;
(c) an alkyl silsesquioxane wax and/or an alkyl silsesquioxane
resin;
(d) a liquid fatty phase; and
(e) optionally, a colorant.

The Examiner rejected claims 1-28 under 35 U.S.C. § 103(a) as
unpatentable over McDermott1 and Caprasse.2
The claims are not separately argued. We select claim 15 as
representative. Claims 1-14 and 16-28 will stand or fall with claim 15.
37 C.F.R. § 41.37(c)(1)(vii).
Arguments not made are waived. See Ex parte Frye, 2010 WL
889747 *4 (BPAI 2010) (precedential) (“If an appellant fails to present
arguments on a particular issue—or, more broadly, on a particular

1 Padraig McDermott, US 2008/0102049 A1, filed Oct. 30, 2006, published
May 1, 2008.
2 Virginie Caprasse et al., US 2007/0149703 A1, filed April 5, 2005,
published June 28, 2007.
Appeal 2012-002434
Application 11/972,143

3
rejection—the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection”).

OBVIOUSNESS
The Issues
The Examiner’s position is that McDermott described a method of
making up a keratinous substrate and a composition comprising a
silsesquioxane polymer. (Ans. 5, citing McDermott ¶¶[0229], [0232], and
[0234].) The Examiner found the only difference between McDermott’s
method and composition and Appellants’ method and composition is that
McDermott “fails to specifically disclose a silsesquioxane wax and/or resin.”
(Id.). The Examiner found this deficiency remedied by Caprasse, which
described a silsesquioxane resin wax composition for use in personal care
products, and taught that the resin wax compositions
improve the durability and substantivity of cosmetics after topical
application to skin, improve the non-transfer of color cosmetic
formulations and have improved compatibility over other silicone
waxes in cosmetic ingredients while also providing other functional
benefits such as moisturization, improved fragrance retention and
delivery of actives, occlusivity and improved feel. Caprasse discloses
the silsesquioxane resin waxes can also act as texture and rheology
modifiers and that the melting points and overall hydrocarbon content
of the silsesquioxane resins can be adjusted to provide varying
aesthetic benefits ([0006]).
(Id., citing Caprasse ¶¶[0001] and [0006].) The Examiner concluded:
It would have been obvious to one of ordinary skill to substitute the
silsesquioxane wax resin composition of Caprasse for the
silsesquioxane polymer of McDermott in view of the advantages the
Appeal 2012-002434
Application 11/972,143

4
wax resin composition provides to a cosmetic formulation as taught
by Caprasse.
(Id. at 6.)
Appellants contend
There is no teaching or suggestion within the four corners of either
[the McDermott] reference, nor the [Caprasse] reference, which would
motivate one of ordinary skill in the art to want to choose
silsesquioxanes, rather than any of the other myriad of silicone film
former candidates disclosed in the [McDermott] patent and then wish
to employ it in combination with the [Caprasse] reference. . . .
This being the case, there is no reason as to why a routineer would
wish to make the critical selection of silsesquioxanes as the silicone
film former, thus arriving at the claimed invention.

(Id. at 5-6.) Appellants also contend:
since neither reference touches upon the compatibility of the
[McDermott] silsesquioxane resin/wax in the [Caprasse] composition,
coupled with the fact that neither reference is even remotely
concerned with extending the time period of shine for its composition,
there exists no basis from which one of ordinary skill in the art might
glean a reasonable expectation of success.

(Id. at 7-8.)
The issues are:
whether a person of ordinary skill in the art would have seen a reason
to use Caprasse’s silsesquioxane wax resin in McDermott’s method and
composition; and, if so,
whether there would have been a reasonable expectation of success in
using Caprasse’s silsesquioxane wax resin in McDermott’s method and
composition.

Appeal 2012-002434
Application 11/972,143

5
Discussion
After considering all the evidence and arguments, we conclude that
the rejection must be affirmed for the reasons set out in the Examiner’s
Answer. We adopt the Examiner’s findings concerning the scope and
content of the prior art as our own, and adopt the Examiner’s reasoning set
out in the “Grounds of Rejection” and “Response to Argument” as our own.
The Examiner properly gave little weight to Appellant’s laundry list
metaphor. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (holding that the prior art’s disclosure of a multitude of
combinations failed to render any particular formulation less obvious). The
Examiner properly supported a finding of motivation for using a
silsesquioxane resin wax with evidence that Caprasse taught its advantages.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (each
reference “must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole”). The Examiner properly based
the conclusion that silsesquioxane resin wax would work in McDermott’s
method and composition on evidence that it worked in Caprasse’s personal
care compositions. See id. (“Only a reasonable expectation that the
beneficial result will be achieved is necessary to show obviousness.”). The
evidence supports the Examiner’s findings and conclusions and the rejection
is therefore affirmed.

SUMMARY
We affirm the rejection of claims 1-28 under 35 U.S.C. § 103(a) as
unpatentable over McDermott and Caprasse.
Appeal 2012-002434
Application 11/972,143

6
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

lp