Ex Parte Dempsey et al

Patent Trial and Appeal Board

May 24, 2016

12912478 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/912,478 10/26/2010
27752 7590 05/26/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
James Herman Dempsey
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.
11469M 2132
EXAMINER
TCHERKASSKAYA, OLGA V
ART UNIT PAPER NUMBER
1615
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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES HERMAN DEMPSEY and THOMAS ELLIOT RABE
Appeal2014-004054
Application 12/912,478 1
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a long-lasting cosmetic composition comprising a film
former. Claims 1-11 and 14--20 are on appeal as rejected under 35 U.S.C.
§ 112, second paragraph, § 103(a), and the doctrine of nonstatutory
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 The Real Party in Interest is The Procter & Gamble Company of
Cincinnati, Ohio. Br. 1.
Appeal2014-004054
Application 12/912,478
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 1 and 14 are the appealed independent claims. Claim
1 reads as follows:
1. A cosmetic composition comprising:
a. from 15% to 50%, by weight, of a film former selected
from the group consisting of tall oil glycerides,
pentaerythrityl rosinate, glyceryl rosinate, and the
hydrogenated versions and mixtures thereof;
b. from 0.1 % to 14%, by weight, of a colorant; and
c. from 3% to 15%, by weight, of a wax.
Br. 15 (Claims Appendix). Claim 14 reads as follows:
Id. 16.
14. A mascara composition comprising from 15% to 50%, by
weight, of one or more tall oils.
The following grounds of rejection are on appeal:
A. Claims 4--10 rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. Final Action 3.
B. Claims 1-16 rejected under 35 U.S.C. § 103(a) as unpatentable
over Rabe,2 Kauranen,3 and Maitra. 4 Final Action 4.
2 U.S. Patent Application Pub. No. US 2007/0286824 Al (published Dec.
13, 2007) (hereinafter "Rabe").
3 U.S. Patent Application Pub. No. US 2006/0257333 Al (published Nov.
16, 2006) (hereinafter "Kauranen").
4 U.S. Patent Application Pub. No. US 2007/0140991 Al (published Jun. 21,
2007) (hereinafter "Maitra").
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C. Claims 1 and 17-20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Rabe, Kauranen, Maitra, and Balzarini. 5 Final Action 6.
D. Claims 1-20 provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-20 of
copending U.S. Patent Application No. 12/912,418 (Pub. No. US
2011/0117043 Al, published May 19, 2011).6 Final Action 7.
E. Claims 1-20 provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-20 of
copending U.S. Patent Application No. 12/912,450 (Pub. No. US
2011/0117040 Al, published May 19, 2011). Final Action 8.
DISCUSSION
A. Claims 4-10 rejected under 35 U.S. C. § 112, second paragraph,
as indefinite.
The Examiner determined that claim 4 was indefinite in reciting "the
Flexibility Test," claims 5-7 were indefinite in reciting "the Rub Test," and
claims 8-10 were indefinite in reciting "remains intact." Final Action 3.
A decision on whether a claim is indefinite under 35 U.S.C. § 112,
second paragraph, requires a determination of whether those skilled in the
art would have understood what is claimed when the claim is read in light of
the specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343,
1350 (Fed. Cir. 2010). Appellants argue that the claim terms "the Flexibility
Test" and "the Rub Test" were not indefinite when read in view of the
5 U.S. Patent 5,509,742 to Balzarini (issued Apr. 23, 1996) (hereinafter
"Balzarini").
6 This patent application was abandoned on Feb. 28, 2013.
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Application 12/912,478
Specification, which describes these forms of measurement. Br. 3; see also
Spec. 16-20 (identifying and describing test methods including "Flexibility
Test Method" and "Rub Test Method").
Regarding claim 4, which recites "1.0_according to the Flexibility
Test," we find the Examiner's rejection for indefiniteness supported by the
evidence of record and Appellants' argument unavailing. No specific unit of
measurement, e.g., grams, is assigned to the value recited by claim 4.
However, the "Average Weight Loss" result of the Flexibility Test described
in the Specification is only described in terms of grams of material lost.
Spec. 18. The value "1.0" recited by claim 4 in view of the Specification's
description of "the Flexibility Test" does not make sense because it is
unclear how a person of ordinary skill in the art might follow the described
procedure for this test by first "apply[ing] 40mg +/-2mg" to a test square of
latex and subsequently rubbing off an amount approaching 1.0g.
Appellants' arguments (Br. 2--4) do not offer an explanation. For these
reasons, we find the evidence of record supports the Examiner's
determination that claim 4 is indefinite.
Regarding the recited "Rub Test," of claims 5-7, we find that the
Specification presents a clearer description of this test in view of the claims.
Claims 5-7 recite the composition "scores less than" 4.5, 3.0, and 2.5,
respectively, according to the Rub Test. Although, like claim 4 discussed
above, these claims do not recite a specific unit of measurement for these
values, the Specification describes that the Rub Test achieves measureable
results in terms of illuminant "L" values and the change in illuminant value
of test subjects with respect to a control is Delta L (DL). Spec. 20. We find
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that a skilled artisan would understand that "DL" is the unit of measurement
for the values recited by claims 5-7. Furthermore, unlike claim 4, the values
recited by claims 5-7 are reasonable in view of the Specification, which
describes that "[t]he Avg. DL for compositions of the present invention are
4.00 and less, preferably about 3.00 and less, most preferably about 2.00 or
less." Id. For these reasons, we find a person of ordinary skill in the art
would have understood claims 5-7 when read in light of the Specification
and, so, we reverse the Examiner on this issue with respect to claims 5-7.
On the issue of the claim language "remains intact," Appellants argue
only that this is a "well recognized" term of art. We find this term used in
the Specification once at page 3, line 24, with no explanation as to what the
language means or any method of quantification thereof. Appellants'
arguments (Br. 2--4), again, do not offer an explanation other than to allege
that the term is "well recognized in the art." Br. 3. Therefore, giving the
claims their broadest reasonable interpretation in light of the Specification,
we are left to interpret that a skilled artisan reading claims 8-10 would
understand that the recited language, "the composition, when applied to
eyelashes or eyelids remains intact on the eyelashes or eyelids for more than
[X] hours," means that any amount of the composition so administered must
remain for the recited length of time without loss or wear. Therefore, we
reverse the Examiner on this issue as to claims 8-10.
For the reasons discussed above, the rejection under 35 U.S.C. § 112,
second paragraph, for indefiniteness is reversed with respect to claims 5-10
and is affirmed with respect to claim 4.
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B. Claims 1-16 rejected under 35 U.S. C. § 103 (a) as unpatentable
over Rabe, Kauranen, and Maitra.
FINDINGS OF FACT
FF 1. Rabe disclosed "skin care formulations," which may be
mascara. Rabe i-fi-f 103-105.
FF2. Rabe disclosed skin care preparations comprising
"microparticulate colorants" and "further constituents," such as "film-
forming agents." Id. i-f 106.
FF3. Rabe disclosed an example "Anhydrous Mascara," which
included 2.500 wt.% tall oil glycerides and pentaerythrityl hydrogenated
rosinate, 12.000 wt.% black iron oxide and encapsulated blue pigment
colorants, and 13.5 wt.% camauba and polyethylene wax. Id. i-f 150.
FF4. Rabe disclosed that shortcomings of the prior art sought to be
overcome by its disclosed invention included "color release onto the skin
and clothing" and the "general[] difficult[y] to permanently retain the color
over long periods of time and when subjected to different environments and
conditions." Id. i-fi-1 2-7.
FF5. Kauranen disclosed "skin care products ... for dry and scaling
skin," which may "comprise 1-90% by weight of tall oil fatty acids."
Kauranen Abstract, i122.
FF6. Kauranen disclosed an embodiment where "an oily preparation"
has "about 35-about 50% tall oil fatty acids or their derivatives ... and 0-
30% above mentioned common ingredients used in skin care products." Id.
i133.
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FF7. Kauranen disclosed an example comprising 42.0% tall oil fatty
acids, 3.5% beeswax, and 3.5% titanium dioxide. Id. i-f 44 (Example 1).
FF8. Maitra disclosed "compositions ... for forming a film on a
biological surface which [is] long-lasting, flexible, transfer-resistant, water-
proof, and comfortable to the wearer." Maitra Abstract.
FF9. Maitra disclosed "[t]he biological surface may be ... keratin
fibers (hair, eyelashes, and eyebrows)." Id. i-fi-127 and 34.
FFlO. Maitra disclosed "[s]uitable tackifiers of the present invention
include ... natural or modified rosins such [sic], for example, ... tall-oil
rosin ... [and] glycerol and pentaerythritol esters of natural or modified
rosins, such [sic], for example ... the pentaerythritol ester of hydrogenated
rosin, and the phenolicmodified pentaerythritol ester of rosin." Id. i-f 58.
FFl 1. Maitra disclosed "[w]here the product is a color cosmetic for
the body, such as a lipstick, lip gloss, nail enamel, mascara, foundation, and
the like, the compositions will further comprise one or more coloring
agents." Id. i-f 64.
ANALYSIS
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. The Examiner determined that Rabe disclosed the entirety of claim
1 except for the recited percentage by weight of film former component,
e.g., 15%----50% by weight tall oil glycerides. See Final Action 4--5; see also
FF 1-FF3 (identifying the teachings of Rabe). The Examiner identified that
an objective of Rabe was to provide a long-lasting cosmetic film (e.g., for
mascara) or, put differently, overcome the "general[] difficult[y] to
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permanently retain the color over long periods of time and when subjected to
different environments and conditions." Final Action 5; FF4. The Examiner
determined that one of ordinary skill would look to Kauranen, which also
taught a topical film comprising the same or similar components as Rabe,
e.g., tall oils, wax, and colorants, for further teachings on such compositions.
See Final Action 5---6. The Examiner determined that Kauranen disclosed
increased amounts of components as recited by the claims, but missing from
Rabe, e.g., 15% to 50% by weight tall oil glycerides. Final Action 5; see
also FF5-FF7 (identifying the teachings of Kauranen). The Examiner also
pointed to Maitra, which was also directed to a topical skin cosmetic film
(e.g., mascara) and disclosed using tall oil and pentaerythritol ester of rosine
components to form a long-lasting cosmetic. Final Action 5; see also FF8-
FF11 (identifying the teachings of Maitra). In view of the cited references'
teachings that the claimed ingredients, at the claimed concentrations, were
suitably combined in cosmetic compositions, we find that the Examiner set
forth a well-reasoned, prima facie case for obviousness.
In response, Appellants set forth three arguments. Appellants first
argument is that "[t]he cited references independently or in combination, do
not describe, teach, or suggest '15% to 50%, by weight, of a film former ...
pentaerythrityl rosinate,' as recited in claims 1and20." Br. 5-7. This
argument is without merit.
The claims recite "a film former selected from the group consisting of
tall oil glycerides, pentaerythrityl rosinate, glyceryl rosinate, and the
hydrogenated versions and mixtures thereof," which requires only one
component from this group or a mixture of multiple components of the
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group. So long as the cited references disclose any one of the recited
component choices, e.g., a tall oil glyceride, their failure to teach another is
not significant. See MPEP § 2131.02 ("'A generic claim cannot be allowed
to an applicant if the prior art discloses a species falling within the claimed
genus.' The species in that case will anticipate the genus." Citing In re
Slayter, 276 F.2d 408, 411 (CCPA 1960)).
Next, Appellants argue that "[t]he cited references independently or in
combination, do not describe, teach, or suggest, '15% to 50%, by weight, of
a film former ... tall oil glycerides,' as recited in claims 1, 14, and 20." Br.
7-8. This argument is not persuasive.
Rabe does not teach the recited amount of the film former tall oil
component; for this the Examiner looks to the combined Kauranen
disclosure, which does disclose the recited amount, i.e., 15% to 50% by
weight. In fact, Kauranen discloses an example falling squarely within the
scope of claim 1 at paragraph 44 (i.e., Example 1 comprising 42.0% tall oil
fatty acids (a film former), 3.5% beeswax (a wax), and 3.5% titanium
dioxide (a colorant)). FF7.
Finally, Appellants argue that "[i]t would not have been obvious to
combine the various ingredients recited in references to yield the claimed
invention." Br. 9-12. Appellants argue that the references were
mischaracterized in the rejection, that they teach away from their
combination and disclose films that are unlike the invention because they
can be washed away with soap and water, that they are directed to unrelated
subject matter so as to foreclose their combination, and that impermissible
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hindsight was used to suggest the combination. None of these points is
persuasive. Id.
The references have not been mischaracterized and they are not
directed to dissimilar or unrelated subject matter. As discussed above,
Kauranen is focused on skin treatment and Rabe and Maitra are focused on
cosmetic compositions, but they are each directed to a composition for a
topical film to be applied to skin and disclose an overlapping range of like
components to make the film. See, e.g., Ans. 6-7. "It is prima facie obvious
to combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose . . . . [T]he idea of combining them flows
logically from their having been individually taught in the prior art." In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). "Two criteria have evolved
for determining whether prior art is analogous: (1) whether the art is from
the same field of endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved." In re Clay, 966 F.2d 656, 658-59, (Fed. Cir.
1992). Here, the three cited references disclose using the same materials for
the same purposes to achieve topical films for skin applications. They are
from the same field of endeavor as one another and as the appealed claims.
That Kauranen discloses that a tall-oil-fatty-acid-comprising
"protective film can be washed away with warm water and soap" (Kauranen
i-f 38) neither teaches away from the reference's combination with Rabe and
Maitra nor distinguishes the reference from the appealed claims. Rabe is
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silent on how its disclosed cosmetic is removed and Maitra' s disclosure of
its film being waterproof does not account for removal by water and soap.
Moreover, the appealed claims do not recite that the invention cannot be
removed with soap and water.
Finally, no impermissible hindsight was required to combine the cited
references. "[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). Here, each of the three cited references uses the
primary component of the appealed invention in a composition for the same
or very similar purpose as the appealed claims and as one another. That is,
each reference incorporates a tall oil derivative into a topical skin application
to form a film. It would have been obvious to look to these references in
combination to achieve the over-arching goal among them, which is a
longer-lasting, topical skin composition.
For the reasons above the rejection of claims 1-16 under 3 5 U.S. C.
§ 103(a) over Rabe, Kauranen, and Maitra is affirmed.
C. Claims 1and17-20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Rabe, Kauranen, Maitra, and Balzarini.
FINDINGS OF FACT
FF12. Balzarini disclosed "the invention is shown generally at
numeral 10 and includes, in broadest terms, a mascara applicator 13, [with] a
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mascara reservoir unit 11 [at one end], and a mascara remover unit 15 [at
another end]." Balzarini col. 2, 11. 31-34; Figs. 1, 2, and 4.
ANALYSIS
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. Appellants offer no argument to dispute this rejection that differs
from those of the previous rejection minus the Balzarini reference, other
than to argue that Balzarini fails to cure the alleged defects of the other
references. Br. 13. For the reasons set forth above, the rejection of claims 1
and 17-20 under 35 U.S.C. § 103(a) over Rabe, Kauranen, Maitra, and
Balzarini is affirmed.
D. Claims 1-20 rejected on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claims 1-20 of copending U.S.
Patent Application No. 121912,418.
As indicated above, U.S. Patent Application No. 12/912,418 stands
abandoned. Therefore, we dismiss this double patenting rejection as moot.
E. Claims 1-20 provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-20 of
copending U.S. Patent Application No. 121912,450.
Appellants present no arguments pertaining to the provisional double
patenting rejection, therefore, we sustain the rejection. See MPEP
§ 1205.02, 9th ed., Rev. 7, Mar. 2015 ("If a ground of rejection stated by the
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examiner is not addressed in the appellant's brief, that ground of rejection
will be summarily sustained by the Board."). The rejection is affirmed.
SUMMARY
The rejection of claims 4--10 under 35 U.S.C. § 112, second
paragraph, as indefinite is affirmed as to claim 4 and reversed as to claims
5-10.
The rejection of claims 1-16 under 35 U.S.C. § 103(a) as unpatentable
over Rabe, Kauranen, and Maitra is affirmed.
The rejection of claims 1 and 17-20 under 35 U.S.C. § 103(a) as
unpatentable over Rabe, Kauranen, Maitra, and Balzarini is affirmed
The rejection of claims 1-20 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-20 of
copending U.S. Patent Application No. 12/912,418 is dismissed.
The provisional rejection of claims 1-20 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-20 of copending U.S. Patent Application No. 12/912,450 is affirmed.
TIME PERIOD FOR RESPONSE
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
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