Ex Parte Dempsey et al

Patent Trial and Appeal Board

Feb 9, 2017

12912450 (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.
12/912,450 10/26/2010 James Herman Dempsey 4967.005US1 2070
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
following e-mail address(es):
uspto@slwip.com
slw@blackhillsip.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
Appeal 2015-007996
Application 12/912,450
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
RYAN H. FLAAdministrative 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 method comprising applying a long-wearing mascara
composition to human eyelashes and/or human eyelids. Claims 1, 21—54,
and 56—73 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 affirm.
1 We understand the Real Party in Interest to be The Procter & Gamble
Company. Br. 1.
Appeal 2015-007996
Application 12/912,450
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 method comprising applying to human eyelashes and/or
human eyelids a long-wearing 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 50%, 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. 8 (Claims App’x).
The following rejections are on appeal:
Claims 1, 21—54, and 56—73 stand rejected under 35 U.S.C. § 103(a)
over Blin,2 Hanna,3 and Keene.4 Final Action 2.
Claims 1, 21—54, and 56—73 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims 1—16
of Application No. 12/912,418.5 Id. at 7.
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. 12/912,418 was abandoned Sept. 18,
2012; therefore, this rejection is dismissed.
2
Appeal 2015-007996
Application 12/912,450
Claims 1, 21—54, and 56—73 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims 1—13,
15, and 16 of Application No. 12/912,516.6 Id. at 7—8.
Claims 1, 21—54, and 56—73 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims 1—11
and 14—16 of Application No. 12/912,478.7 Id. at 8.
Claims 1, 21—54, and 56—73 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims 1—17
of Application No. 13/274,852. Id. at 9.
DISCUSSION
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. Only those arguments made by Appellants in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)( 1 )(iv)(2016).
Obviousness Rejection
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
6 U.S. Patent Application Ser. No. 12/912,516 was abandoned June 15,
2012; therefore, this rejection is dismissed.
7 U.S. Patent Application Ser. No. 12/912,478 was abandoned Aug. 3, 2016;
therefore, this rejection is dismissed.
3
Appeal 2015-007996
Application 12/912,450
“explicitly teaches a combination of tall oil glyceride and pentaerythrityl
rosinate.” Ans. 3. While we disagree with the Examiner that Blin’s
teaching of tall oil glyceride and pentaerythrityl rosinate as suitable resins
for its mascara (see Blin || 41—42), and related disclosures that 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 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 3^4 (citing
Keene Tflf 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., 14).
The Examiner cites Hanna as disclosing, inter alia, a long-lasting and
wear-resistant mascara composed of a film former such as pentaerithrytol
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 cite 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.
4
Appeal 2015-007996
Application 12/912,450
Appellants argue only with respect to claim 1, which we find representative;
therefore, all claims fall therewith. 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 139. Blin disclosed its “rosin is a
mixture predominantly comprising organic acids known as rosin acids” and
identifies “tall oil (tall oil rosin)” as one type. Id. 141. Appellants concede
the very next paragraph of Blin (142) 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
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 and would
have been obvious thereover.
5
Appeal 2015-007996
Application 12/912,450
Appellants argue Blin teaches away from the claimed invention
because it disclosed 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 1136. 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 invention provides unexpected results and point
to the Rub Test data in the Specification (at 17, 21—22) as evidence thereof.
Br. 6. This evidence compares “inventive compositions” 1—4 to comparative
products 5—9, which are six products attributed to Cover Girl®, Avon®,
Sephora®, and Maybelline® cosmetics manufacturers. The inventive
compositions are identified in the specification at pages 21—22, but
Appellants do not direct us to specific evidence of record as to the
compositions of the six comparative products. The Examiner takes issue
with this lack of evidence to support the alleged unexpected results and we
agree.
6
Appeal 2015-007996
Application 12/912,450
“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, Appellants do not advance persuasive evidence that the six
comparative mascara products are the closest prior art or evidence of their
compositions to make that determination. Thus, Appellants’ evidence of
alleged unexpected results fails to overcome the prima facie case for
obviousness presented by the Examiner.
For the reasons above, we affirm the obviousness rejection.
Obviousness-Type Double Patenting
The only remaining double patenting rejection is over claims 1—17 of
U.S. Patent Application 13/274,852, which the Examiner finds are
patentably indistinct from Appellants’ claim 1. Appellants do not contest
the substance of the obviousness-type double patenting rejection. Br. 7.
Because Appellants present no arguments pertaining to the Examiner’s
double patenting rejection (Br. 7), we summarily sustain the rejection.
SUMMARY
The rejection of claims 1, 21—54, and 56—73 under 35 U.S.C. § 103(a)
over Blin, Hanna, and Keene is affirmed.
The provisional rejections of claims 1, 21—54, and 56—73 on the
ground of nonstatutory obviousness-type double patenting are each
dismissed, except for the rejection over U.S. Patent Application No.
13/274,852, which is affirmed.
7
Appeal 2015-007996
Application 12/912,450
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
8