13632317 - (D) (P.T.A.B. Jan. 8, 2019)

Ex Parte CHOI et al

Patent Trials and Appeals BoardJan 8, 2019

13632317 - (D) (P.T.A.B. Jan. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/632,317 10/01/2012 23117 7590 01/10/2019 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Kyung Ho CHOI 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. GPK-912-101 1060 EXAMINER VU, JAKE MINH ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 01/10/2019 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYUNG HO CHOI and MIN KYUNG SHIM Appeal 2017-011110 Application 13/632,317 Technology Center 1600 Before JEFFREY N. FRED MAN, JOHN E. SCHNEIDER, and TIMOTHY G. MAJORS, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1, 2 under 35 U.S.C. Â§ 134 involving claims to an expanded urethane foam impregnated with a liquid cosmetic composition. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Amorepacific Corporation (App. Br. 3). 2 We have considered and herein refer to the Specification of Oct. 1, 2012 ("Spec."); Final Office Action of Feb. 22, 2016 ("Final Action"); Appeal Brief of Jan. 26, 2017 ("App. Br."); Examiner's Answer of May 5, 2017 ("Ans."); and Reply Brief of July 5, 2017 ("Reply Br."). Appeal 2017-011110 Application 13/632,317 Statement of the Case Background "Exposure to UV rays from sunlight is a major cause of skin erythema, edema, freckles or skin cancer" (Spec. 1 :23-24). "UV blocking products having various sun protection factors (SPFs) have appeared in the market" (id. at 2:12-14). "However, because the conpositions [sic] are applied to the skin by hand, cosmetic products comprising cosmetic compositions in tube or pump containers cannot give a cold feel due to the heat of hand used to apply them" (id. at 3: 11-15). "In addition, after the use of the cosmetic compositions, the hand should be washed to remove the contamination and stickiness" (id. at 3: 15-17). The Claims Claims 12-22, 29, and 30 are on appeal. Claim 12 is representative and reads as follows: 12. An expanded urethane foam impregnated with a liquid cosmetic composition, wherein the expanded urethane foam has a hardness of 10 to 60 as measured with a durometer hardness tester type F, manufactured by ASKER, and wherein the liquid cosmetic composition has a viscosity of 3,000 to 17,000 cps. The Rejection The Examiner rejected claims 12-22, 29, and 30 under 35 U.S.C. Â§ I03(a) as obvious over Toshitaka3 and Otani4 (Ans. 2-5). 3 Toshitaka et al., JP 2003--012457, published Jan. 15, 2003 (We rely on the machine translation provided by the Examiner). 4 Otani et al., US 6,391,233 Bl, issued May 21, 2002. 2 Appeal 2017-011110 Application 13/632,317 The Examiner finds Toshitaka teaches an "effervescent urethane (see [0007]), which reads on expanded urethane foam, impregnated with cosmetic constituent (see [0008]), which reads on impregnated with a cosmetic composition, wherein the cosmetic composition has a viscosity of 10000 (see [0016])" (Ans. 2). The Examiner acknowledges that Toshitaka does not address the hardness of the expanded urethane foam (see id. at 3). The Examiner finds Otani teaches the ordinary artisan would have known how to measure "physical properties, such as hardness ( see col. 8, line 3 0-46), of porous product ( see title), such as an open cell ( see col. 7, line 42--43) urethane foam" (Ans. 3). The Examiner finds Otani teaches polymers where the "hardness is 67" (id.). The Examiner finds Otani teaches foams made into "puff[ s] for cosmetic use" (id.). The Examiner finds it obvious to "incorporate open cell urethane foam with a hardness of 67 as the foam in TOSHITAKA's foam. The person of ordinary skill in the art would have been motivated to make those modifications, because OTANI teaches a hardness of 67 could be used as puff for cosmetics" (Ans. 3). The Examiner also finds the "hardness of a foam composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize" (id. at 5). The issues with respect to this rejection are: (i) Does a preponderance of the evidence of record support the Examiner's conclusion that the prior art renders claim 12 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? 3 Appeal 2017-011110 Application 13/632,317 Findings of Fact (FF) 1. Toshitaka teaches "a base material which can be used for the cosmetic of the present invention, effervescent urethane resin .... Especially a preferable thing is effervescent urethane resin" (Toshitaka ,r 7). 2. Toshitaka teaches the "cosmetic of the present invention can possess constituent features which a cosmetic usually possesses ... such as the container and puff which hold the base material ... impregnated [with] the cosmetic" (Toshitaka ,r 8). 3. Toshitaka teaches the cosmetic being impregnated into the base material preferably has a viscosity of "1000 to 50000 mPascal/sec,[5J and 3000 to 35000 mPascal/sec" (Toshitaka ,r 6). Toshitaka exemplifies a cosmetic with a viscosity of 10,000 mPascal/sec (see Toshitaka ,r 16). 4. Toshitaka teaches "it is preferable to apply to the charge of face make up, and applying to foundation especially is preferable" (Toshitaka 5. Otani teaches a "porous product thus produced according to the method of the present invention may be used ... as an ear plug, shock absorber, heat-insulating material, filler, puff for cosmetic use" (Otani 7:44-- 47). 6. Otani teaches exemplary porous polymer compositions with hardnesses of 67, 69, and 71 (see Otani 9, table 1). 7. Otani teaches a process for determining "Hardness of a Porous Product," specifically teaching a "sample having a flat surface sized 80 mmx80 mm and a thickness of 20 mm was prepared and measured for its 5 We note that mPascal/sec are exactly equivalent to centipoise. 4 Appeal 2017-011110 Application 13/632,317 ASKER F hardness using an ASKER F-type hardness tester manufactured by KOBUNSHI KEIKI KABUSHIKI KAISHA" (Otani 8:39-44). ~ JJ i 2S 8. Figures 3 and 4 of the Specification are reproduced below: 25 .................................................................................................. . I I ---------------------------------------------------------------~---- O~tirnum !NlrtJness range fl)( oi~ll!!11salliliti .: I o' ! ------------------------Â·---------------------' --------------'----- ~roc-----.c-c----J---f-----,,-'~-- : DDti:num : : ~iSoerumed amauit; : 15 ,....._ _ ____,,, --------------r-- 1 ~.5 , .......... , ......................... ,-~-"'*Â· Â·=-,Â·Â·Â·ii.;:) ---------------t--------------------- Hard~ess of l'lllm Figure 3 illustrates that "the expanded urethane foam with extremely low hardness (i.e., hardness 5) had a poor ability to support the content ... Accordingly, the packability for 15 g of the cosmetic composition was about 8 times as long as the packability of 5 sec at the optimum hardness" (Spec. 27:10-16). Figure 4 illustrates that when the expanded urethane foam had an extremely low hardness (i.e., hardness 5), the dispensed amount of the cosmetic composition per one application was too much ... when the expanded urethane foam had an extremely high hardness (i.e., hardness 80), the dispensed amount of the cosmetic composition per one application was too low. (Spec. 28: 17 to 29:3). 9. Table 11 of the Specification is reproduced below: L.Â·.:1!::