11193444 (B.P.A.I. Feb. 1, 2012)

Ex Parte Chen et al

Board of Patent Appeals and InterferencesFeb 1, 2012

11193444 (B.P.A.I. Feb. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MICHELLE CHEN, VICTORIA CHOU, and PADRAIG McDERMOTT __________ Appeal 2011-007756 Application 11/193,444 Technology Center 1600 __________ Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to methods for removing make-up. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses “methods for removing long-wear or transfer-resistant make-up compositions … comprising applying to the make-up composition a removal composition comprising at least one oil Appeal 2011-007756 Application 11/193,444 2 soluble film-forming agent and at least one oil” (Spec. 1, ¶ 0001). The Specification discloses that “the oil soluble film forming agent in the removal composition is … most preferably a polyorganosiloxane-containing copolymer comprising at least one hydrocarbon-based moiety comprising an amide group such as, for example, a Nylon-611/dimethicone copolymer” (id. at 43, ¶ 0119). Claims 1, 5-8, and 13-25 are on appeal. Claim 1, the only independent claim, reads as follows: 1. A method for removing a make-up composition from skin or lips, wherein the make-up composition comprises at least one silicone resin and at least one coloring agent, comprising applying to the make-up composition a removal composition comprising at least one nylon-611/dimethicone copolymer and at least one oil and removing the make-up composition from the skin or lips, wherein the removal composition is not in the form of a stick. The Examiner has rejected claims 1, 8, 13, 14, and 16-25 under 35 U.S.C. § 103(a) as being obvious in view of Vatter,1 Cai,2 and Drechsler.3 The Examiner has also rejected claims 5-7 and 15 under 35 U.S.C. § 103(a) as being obvious in view of Vatter, Cai, Drechsler, Petroff,4 and Ferrari.5 Since the same issue is dispositive for both rejections, we will consider them together. The Examiner finds that Vatter discloses “methods of using compositions comprising a dimethicone/vinyl dimethicone copolymer and 1 Vatter, Patent Application Publication US 2002/0015684, Feb. 7, 2002 2 Cai et al., US 6,451,295, Sept. 17, 2002 3 Drechsler et al., US 6,406,683 B1, June 18, 2002 4 Petroff et al., US 5,981,680, Nov. 9, 1999 5 Ferrari et al., WO 03/105788 A2, Dec. 24, 2003 Appeal 2011-007756 Application 11/193,444 3 mineral oil as a makeup remover for the purpose of removing transfer- resistant cosmetics” (Answer 4) but does not teach that its composition comprises a nylon-611/dimethicone copolymer (id.). The Examiner finds that Cai discloses “silicon[e]-polyamide polymers known as nylon 611 dimethicones.… Said polymer is useful as a gelling agent in cosmetics” (id. at 5). The Examiner finds that Drechsler discloses transfer resistant cosmetic compositions that comprise silicone (cyclomethicone MQ) resins and coloring agents (id. at 6). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to incorporate Cai’s nylon-611/dimethicone copolymer into Vatter’s makeup removal composition because “Vatter suggests the inclusion of a silicone gelling agent in the make-up removal composition and nylon 611 dimethicone is a known silicone gelling agent” (id. at 5). The Examiner also concludes that it would have been obvious to one of ordinary skill in the art to use the make-up removal composition suggested by Vatter and Cai to remove Drechsler’s transfer-resistant make- up composition because Vatter discloses removal of transfer-resistant make- up (id. at 6). Appellants contend that it would not have been obvious to substitute Cai’s nylon-611/dimethicone copolymer for Vatter’s silicone gelling agent because Vatter discloses that “not all gelling agents work as makeup removal agents so no motivation would have existed to substitute one gelling agent like a nylon-611/dimethicone copolymer (the makeup removing properties of which were unknown) for Vatter’s specified, limited makeup- removing gelling agent” (Reply Br. 1-2). Appeal 2011-007756 Application 11/193,444 4 We agree with Appellants that the Examiner has not adequately explained why the cited references would have led one of ordinary skill in the art to use a nylon-611/dimethicone copolymer in Vatter’s make-up removal process. Vatter discloses “an oil-based cleansing composition containing a silicone elastomer gelling agent for removal of make-up from the skin” (Vatter, abstract). Vatter discloses that the composition comprises a solvent and a crosslinked siloxane elastomer (id. at 1, ¶¶ 0012, 0013), and that “[a]n essential component of the present invention is a crosslinked organopolysiloxane elastomer” (id. at 2, ¶ 0024). Vatter discloses several kinds of “curable organopolysiloxane composition[s] … can serve as starting material for the crosslinked organopolysiloxane elastomer” (id.): addition reaction-curing organopolysiloxane compositions which cure under platinum metal catalysis …; condensation- curing organopolysiloxane compositions which cure in the presence of an organotin compound …; condensation-curing organopolysiloxane compositions which cure in the presence of an organotin compound or a titanate ester …; peroxide-curing organopolysiloxane compositions … ; and organopolysiloxane compositions which are cured by high-energy radiation. (Id.) Cai discloses that clear antiperspirant or deodorant compositions “can be formed by incorporating … a selected siliconized polyamide into a product formulated with at least one silicone material and at least one non- silicone emollient” (Cai, abstract). Cai discloses that siliconized polyamides that can be used include “‘nylon/dimethicone copolymers’ such as ‘nylon 611/dimethicone copolymer’, where ‘611’ means that the organic portion of Appeal 2011-007756 Application 11/193,444 5 the copolymer has 6 and 11 carbons on either side of the amide group” (id. at col. 15, ll. 22-26). Thus, Vatter discloses that an “essential component” of its cleansing composition is a cross-linked organopolysiloxane gelling agent that is made from a “curable organopolysiloxane composition … as starting material.” Cai does not describe its nylon 611/dimethicone copolymer as cross-linked, nor does it provide any description of the copolymer that shows it to be a cured, cross-linked organopolysiloxane gelling agent made from one of the starting materials disclosed by Vatter. In view of Vatter’s disclosure that its make-up removal composition includes a specific type of cross-linked organopolysiloxane gelling agent as an “essential component,” the Examiner has not adequately explained why a skilled worker would have considered it obvious to replace that gelling agent with a different (nylon 611/dimethicone ) copolymer, based on its use as a gelling agent in a deodorant or antiperspirant composition. We therefore reverse the rejection of independent claim 1 and dependent claims 8, 13, 14 and 16-25. With regard to the rejection based on Vatter, Cai, Drechsler, Petroff, and Ferrari, the Examiner cites Petroff and Ferrari as disclosing or suggesting make-up compositions that contain a nylon-611/dimethicone copolymer, but as discussed above, the Examiner has not adequately explained how the cited references would have suggested a make-up removal composition that comprises a nylon-611/dimethicone copolymer. Thus, the rejection of claims 5-7 and 15 is also reversed. Appeal 2011-007756 Application 11/193,444 6 SUMMARY We reverse the rejection of claims 1, 5-8, and 13-25 under 35 U.S.C. § 103(a). REVERSED lp