Ex Parte Dempsey et al

Patent Trial and Appeal Board

Feb 9, 2017

13274852 (P.T.A.B. Feb. 9, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/274,852 10/17/2011 James Herman DEMPSEY 4967007US1 6617
143559 7590 02/13/2017
Schwegman Lundberg & Woessner / Coty
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
AHMED, HASAN SYED
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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
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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 RABE1
Appeal 2016-000535
Application 13/274,852
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 semi-permanent mascara composition. Claims 1 and
23-72 are on appeal as rejected under 35 U.S.C. § 103(a) and on the ground
of nonstatutory obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 We understand the Real Party in Interest to be The Procter & Gamble
Company. Br. 1.
Appeal 2016-000535
Application 13/274,852
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is the sole independent claim, is representative, and
reads as follows:
1. A semi-permanent mascara composition, which is an
anhydrous dispersion that has low solubility to soap and water,
the mascara composition comprising:
a. from about 15% to about 35%, by weight, of a film former
comprising tall oil glyceride and pentaerythrityl rosinate;
b. from about 0.1 % to about 14%, by weight, of a colorant;
c. less than about 3%, by weight, of a wax; and
d. a volatile carrier.
Br. 10 (Claims App’x).
The following rejections are on appeal:
Claims 1 and 23-72 stand rejected under 35 U.S.C. § 103(a) over
Blin,2 Hanna,3 and Keene.4
Claims 1 and 21-72 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1-11 and 14-16
of Application No. 12/912,478.5
2 U.S. Patent Application Pub. No. US 2007/0020205 A1 (published Jan. 25,
2007) (hereinafter “Blin”).
3 International Patent Application Pub. No. WO 2007/040517 A1 (published
April 12, 2007) (hereinafter “Hanna”).
4 U.S. Patent Application Pub. No. U.S. 2008/0107615 A1 (published May
8, 2008) (hereinafter “Keene”).
5 U.S. Patent Application Ser. No. 12/912,478 was abandoned Aug. 3, 2016;
therefore, this rejection is dismissed.
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Application 13/274,852
DISCUSSION
The Examiner cites Blin as disclosing a mascara product composed of
0.1% to 40% by weight of a resin, e.g., a mixture of glycerol esterified tall
oil rosin and pentaerythritol esterified rosin acid, 0.5% to 90% by weight of
a volatile carrier, 5% by weight of wax, and 0.01% to 50% by weight of a
coloring agent. Final Action 2-5 (citing Blin, inter alia, at 2, 3, 18, 39-
42, 55, 63, 64, 101, 128, 136, 253, and 257). The Examiner finds Blin
“explicitly teaches a combination of tall oil glyceride and pentaerythrityl
rosinate.” Ans. 2. While we disagree with the Examiner that Blin’s
teaching of tall oil glyceride and pentaerythrityl rosinate as suitable resins
for mascara (see Blin 41 42), and related disclosure the resins may be a
mixture of rosin acids (see id. at 39, 41), are an explicit teaching of a
combination of the two tall oil derivatives recited by claim 1, we do agree
that Blin suggests this combination, which renders it prima facie obvious.
The Examiner cites Keene as disclosing a mascara product composed
of 0.3% to 50% by weight of tall oil rosins and tall oil rosin esters as film
forming agents, 0.1% to 20% by weight of coloring agent, 1% to 95% of a
volatile carrier, and none to 50% by weight wax. Final Action 3^1 (citing
Keene 7, 40, 46, 73, 76, 107, 103, and 104). The Examiner determined
that Keene’s disclosure, particularly regarding wax content, would be
combined with that of Blin because the combination would result in mascara
with good properties, e.g., gloss, staying power, hold, transfer-resistance,
and migration resistance, as discussed in Blin (and also Keene, e.g., ^ 4).
The Examiner cites Hanna as disclosing, inter alia, a long-lasting and
wear-resistant mascara composed of a film former such as pentaerithrytol
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rosinate, 1% to 25% by weight of a colorant, 2% by weight wax, and 5% to
80% by weight of a volatile carrier. Final Action 5 (citing Hanna 2 and 9-
13).
Given the teachings in the cited references, we find the Examiner has
established a prima facie case that claim 1 would have been obvious over
Blin, Keene, and Hanna. We address Appellants’ arguments below.
Appellants argue only with respect to claim 1, which we find representative.
37 C.F.R. § 41.37(c)(l)(iv) (2016).
Appellants argue the film former recited by claim 1 requires tall oil
glyceride and pentaerythrityl rosinate and none of the prior art references
explicitly teaches including both. Br. 2. Although Appellants concede Blin
teaches tall oil glycerides and pentaerythrityl rosinate as options for resins,
along with other materials, Appellants argue that the disclosed list of
components is so great and the potential combinations of listed components
so “exorbitantly numerous” that Blin does not “exemplify the claimed
combination.” Id. We do not find this argument persuasive.
Blin is quite clear, as well as concise, in its disclosure of possible
resin materials and expressly states that the resin can be a rosin, rosin
derivative, and mixtures thereof. Blin 30. Blin discloses its “rosin is a
mixture predominantly comprising organic acids known as rosin acids” and
identifies “tall oil (tall oil rosin)” as one type. Id. ^ 41. Appellants concede
the very next paragraph of Blin (]f 42) teaches tall oil glyceride and
pentaerythrityl rosinate, each for this purpose. Br. 2. “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
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Application 13/274,852
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). The combination
of these two tall oil derivatives is, therefore, suggested by Blin.
Appellants argue Blin teaches away from the claimed invention
because it discloses including at least one wax in amounts of 5% to 20% by
weight, while the claims are limited to no more than 3% wax. Br. 5. This
argument is not persuasive.
A “teaching away” requires a reference to actually criticize, discredit,
or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Here, Blin indicates that 5% to 20% wax is
preferred and makes no mention of what might happen to a mascara if less
than 5% wax were used; the reference certainly does not criticize or
discourage such lower amounts. Blin 136. The Examiner finds that the
skilled artisan would not have expected different properties to result from
5% wax as opposed to the recited 3% wax. Ans. 8. Also, as identified by
the Examiner, Appellants present no evidence to the contrary. Id. Thus,
Appellants argument is not persuasive.
Appellants argue the claimed invention exhibits unexpected results
and identify Rub Test data in the Specification (at 16-23) as evidence
thereof. Br. 7-9. Appellants’ Specification evidence is two-fold, consisting
of a first set of data shown in a table at page 19, directed to a comparison of
embodiments of the invention with benchmark compositions, and a second
set of data in a table at page 21, directed to a comparison of embodiments of
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the invention with comparative compositions disclosed in the prior art.
Br. 8; Spec. 19,21.
The first set of above-referenced evidence compares “inventive
mascara compositions” (prototypes 006, 089, and 017) to six comparative
products attributed to Cover Girl®, Maybelline®, and Tarte® cosmetics
manufacturers. However, Appellants present no specific evidence as to the
compositions of the six comparative products. The Examiner takes issue
(Ans. 12) with this lack of evidence to support the alleged unexpected results
and we agree.
“To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention.” Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
Here, we have no specific evidence that the six comparative mascara
products are the closest prior art or evidence of their compositions to make
that determination. Thus, Appellants’ evidence fails to overcome the prima
facie case for obviousness presented by the Examiner.
The second set of above-referenced evidence compares “inventive
mascara compositions” (prototypes 006, 017, 036, and 089) with three
comparative compositions disclosed by Japanese Patent Application Pub.
No. JP 2009-114099, which are identified in the Specification at Table 2A
(Spec. 20) as including the components of the invention except lacking tall
oil glyceride (and also potentially having more than the claimed limit of
wax, but this is not discussed by the Examiner).
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Application 13/274,852
The Examiner responds to Appellants’ evidence and argument, stating
“a comparison of compositions comprising both tall oil glyceride and
pentaerythrityl hydrogenated rosinate versus a composition lacking tall oil
glyceride does nothing to show unexpected results vis-a-vis the cited prior
art Blin, which contains both tall oil glyceride and pentaerythrityl
hydrogenated rosinate,” thus rejecting Appellants’ evidence. The Examiner
seems to contend that the only appropriate comparison here would be
between a claimed embodiment and Blin’s disclosed composition modified
to actually mix together tall oil glyceride and pentaerythrityl rosinate, that is,
a comparison of a claimed embodiment to the composition suggested, but
not explicitly disclosed, by the prior art (as we note, supra, Blin does not
expressly pair these two components, but merely suggests they can be
combined). Our reviewing court’s predecessor has rejected such a
proposition, however. See In re Chapman, 357 F.2d 418, 422 (CCPA 1966)
(when evaluating evidence of unexpected results, it is improper to require
applicant to compare claimed invention to a modified product merely
suggested by prior art because doing so “would amount to requiring
comparison of the results of the invention with the results of the invention”).
“Mere improvement in properties does not always suffice to show
unexpected results. In our view, however, when an applicant demonstrates
substantially improved results . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995)
(emphasis in original). Here, the results shown in the Specification at Table
2B (Spec. 21) indicate that the “inventive mascara compositions” were ~2 to
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23.5 times more durable in mb testing than the comparative prior art
compositions (comparing the range of average AL of 0.2-1.65 for inventive
compositions to 1.56—4.70 for comparative compositions). Even though
Appellants present no explicit evidence that such results were “unexpected”
or “surprising,” reading the Specification as a whole we understand the
inventors’ included this data to illustrate the surprisingly superior
(substantially improved) durability of the claimed invention (a “new
category of cosmetic” according to the Specification at 2:5) over the prior
art’s similar, but different compositions. We find this to be sufficient (and
unrebutted) evidence of unexpected results to overcome the Examiner’s
prima facie case for obviousness.
SUMMARY
The rejection of claims 1 and 23-72 under 35 U.S.C. § 103(a) over
Blin, Hanna, and Keene is reversed.
The rejection of claims 1 and 21-72 on the ground of nonstatutory
obviousness-type double patenting over claims 1-11 and 14-16 ofU.S.
Patent Application No. 12/912,478 is dismissed.
REVERSED
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