Ex Parte Dumousseaux

Patent Trial and Appeal Board

Aug 9, 2018

11100566 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/100,566 04/07/2005 Christophe Dumousseaux
22850 7590 08/13/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
397327US99X 2925
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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):
OBLONPAT@OBLON.COM
tfarrell@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHE DUMOUSSEAUX
Appeal2017-007107
Application 11/100,566
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a
pigment composition. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"Organic coloring substances are frequently used to give color to
cosmetic compositions. But, with traditional organic coloring substances
may not always be possible to obtain compositions that present satisfactory
1 Appellant identifies the Real Party in Interest as L'Oreal (see App. Br. 2).
2 We have considered and herein refer to the Specification of April 7, 2005
("Spec."); Final Office Action of Feb. 18, 2016 ("Final Action"); Appeal
Brief of Oct. 3, 2016 ("App. Br."); Examiner's Answer of Feb. 2, 2017
("Answer"); and Reply Brief of Apr. 3, 2017 ("Reply Br.").
Appeal2017-007107
Application 11/100,566
covering power" (Spec. ,r 3). "Moreover, in a cosmetic solvent, the shades
contributed by those organic coloring substances may vary greatly between a
dry state and a state in dispersion" (Id.). "Thus, a need exists to have
cosmetic compositions available that can present satisfactory saturation C*
and sufficiently high covering power" (Id. at 4).
The Claims
Claims 1-20 and 29-58 are on appeal. Claim 1 is representative and
reads as follows:
1. A composition comprising particles of at least one
composite pigment, said particles comprising an inorganic core
comprising Ti02, said inorganic core being at least partially
coated with at least one organic coloring substance, the
composition being suitable for application to the skin, lips,
nails, or hair of human,
wherein the inorganic core is colored and has a mean size
of from 1 nm to 100 nm,
wherein the at least one organic coloring substance is not
cochineal carmine, halo acid dyes, azo dyes, and anthraquinone
dyes,
wherein the at least one organic coloring substance is
present in an amount ranging from 10 to 500 parts by weight
per 100 parts of inorganic core,
wherein the at least partially coated inorganic core is
present in an amount sufficient for the saturation C* of the
composition to range from 25 to 100, and
wherein the composition has a covering power ranging
from 25 to 100.
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Application 11/100,566
The Rejections
A. TheExaminerrejectedclaims 1-11, 13, 14, I8-20,29-31,and37-58
under 35 U.S.C. § I03(a) as unpatentable over Hayashi, 3 Yasuki, 4 and
Henrion5 (Final Act. 3-7).
B. The Examiner rejected claims 1 and 15-17 under 35 U.S.C. § I03(a)
as unpatentable over Hayashi, Yasuki, Henrion, and Nishihama6 (Final Act.
8-9).
C. The Examiner rejected claims 1 and 32-36 under 35 U.S.C. § I03(a)
as unpatentable over Hayashi, Yasuki, Henrion, and Defossez7 (Final Act.
9-11).
A. 35 US.C. § 103(a) over Hayashi, Yasuki, and Henrion
The Examiner finds Hayashi teaches titanium dioxide core particles to
which an organic pigment is coated with a pigment that is attached with a
gluing agent, such as a silane (see Final Act. 4). The Examiner finds
Hayashi teaches overlapping ranges of amounts of the pigment to the
particles (see id.), as well as dyes other than those excluded by claim 1
including "phthalocyanine green" (id.).
The Examiner acknowledges Hayashi "does not teach the mean size
of the titanium oxide particles range from 1-100 nm," "the same range of
saturation C* value," and "the composite particles in the forms as claimed"
(Final Act. 5).
3 Hayashi et al., EP 1,184,426 A2, published Mar. 6, 2002.
4 Yasuki et al., EP 0,401,045 Bl, published Jan. 18, 1995.
5 Henrion et al., US 2002/0012683 Al, published Jan. 31, 2002.
6 Nishihama et al., US 6,358,495 Bl, issued Mar. 19, 2002.
7 Defossez et al., US 5,486,354, issued Jan. 23, 1996.
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Application 11/100,566
The Examiner finds Y asuki teaches pigments "useful in the paints and
cosmetics, comprising core particles of titanium dioxide having mean
particle size from 0.01 to 0.1 µm (10-100 nm)" (Final Act. 5). The
Examiner finds Yasuki's pigments are "coated with a layer of a colored
oxide" and "exhibit different optical properties from the Ti02 pigments"
(Id.).
The Examiner finds Henrion teaches cosmetic compositions with
"coloring agents, i.e. mineral dyes ( e.g. copper sulfate); and additives"
which have "a saturation C* in the range from 19.4 to 108," "a
covering power ranging from O .1 to 11 .1," and particulate pigments
including titanium dioxide (Final Act. 5-6).
The Examiner finds it obvious to "select the transparent titanium
oxide, as disclosed by Hayashi, if such optical property (transparent) is
desirable" (Final Act. 7). The Examiner further finds
With respect to the saturation C* value and covering power of
the composition as recited, it is merely a routine
experimentation and optimization, which would have been
obvious for one of ordinary skill in the art to test and select the
desirable values based on the inorganic core particles color and
the final product, as suggested by the prior art.
(Final Act. 7).
The issue with respect to this rejection is:
(i) Does a preponderance of evidence of record support the
Examiner's conclusion that the prior art renders the claims obvious?
(ii) If so, has Appellant presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
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Application 11/100,566
Findings of Fact
1. Hayashi teaches a "pigment, paint and resin composition using
... composite particles" (Hayashi ,r 1) with "white pigments such as
titanium dioxide, transparent titanium dioxide" (Hayashi ,r 36).
2. Hayashi teaches
that by forming a gluing agent coating layer on surface of a
white inorganic particle and forming an organic pigment coat
on the gluing agent coating layer in an amount of 1 to 500 parts
by weight based on 100 parts by weight of the white inorganic
particles, the obtained composite particles having an average
particle size of0.001 to 10.0 µm [1 nm to 10,000 nm] are
substantially free from desorption of organic pigment from the
surface thereof, and are usable as a harmless pigment.
(Hayashi ,r 10).
3. Hayashi teaches
The amount of the gluing agent coating layer is
preferably 0.01 to 15.0% by weight, more preferably 0.02 to
12.5% by weight, still more preferably 0.03 to 10.0% by weight
( calculated as C) based on the weight of the gluing agent-coated
white inorganic particles, in the case where the coupling agent
except for the silane-based coupling agents, oligomers or
polymer compounds are used as the gluing agent.
When the amount of the gluing agent-coating layer is less
than 0.01 % by weight, it may be difficult to adhere not less than
one part by weight of the organic pigment onto 100 parts by
weight of the white inorganic particles. When the amount of the
gluing agent coating layer is more than 15.0% by weight, since
it is possible to adhere 1 to 500 parts by weight of the organic
pigment onto 100 parts by weight of the white inorganic
particles therethrough, it is unnecessary to form the gluing
agent coating layer in an amount of more than 15.0% by
weight.
(Hayashi ,r,r 65-66).
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Application 11/100,566
4. The Specification teaches silane based binders that allow an
"organic coloring substance to adhere to the surface of the inorganic core"
(Spec. ,r 49).
5. Yasuki teaches "titanium dioxide-based chromatic pigments
useful as a colorant of paints, printing inks, plastics, cosmetics and the like"
(Y asuki 2: 3--4).
6. Y asuki teaches
core particles of titanium dioxide having a mean particle size
from 0.01 to 0.1 um [ 10 nm to 100 nm], said particles being
coated with a layer of 1 to 30%, by weight of titanium oxide
particles, of an oxide of Ni, Co, Ce, Cu, Cr, Mn, V, W or a
mixture of these oxides, so that the coated core particles
substantially retain the core particles transparency to visible
light.
(Yasuki 2:27-31 ).
7. Henrion teaches "[ c ]osmetic compositions ... contain a
suitable vehicle and various coloring agents intended to give the
compositions a certain color before and/or after they are applied" (Henrion
,r 2).
8. Henrion teaches "the need remains to have available coloring
agents which may be used in cosmetics, to obtain a suitable coloration of the
compositions and of the make-up obtained, the coloring agents moreover
having at least one of the following properties: good covering power"
(Henrion ,r 9).
9. Henrion teaches the "composition may also contain a
particulate phase, which may comprise at least one of pigments, nacres, and
fillers usually used in cosmetic compositions ... Mention may be made of
titanium dioxide" (Henrion ,r 164 ).
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10. The Examiner finds that Henrion teaches cosmetic compounds
with saturation C* in the range from 19 .4 to 108 (Final Act. 6, citing
Henrion ,r 276, last two compounds in table).
11. The Examiner finds Henrion teaches cosmetic compounds with
"a covering power ranging from 0.1 to 11.1" (Final Act. 6, citing Henrion
,r 277).
12. Henrion teaches "[w]hen L'iE* <5, the product was considered as
having very high covering power; when L'iE*> 20, the product was
considered as having poor covering power" (Henrion ,r 187).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
Analysis
We adopt the Examiner's findings of fact and conclusions of law (see
Final Act. 3-7; FF 1-12) and agree that Hayashi, Yasuki, and Henrion
render the claims obvious. We address Appellant's arguments below.
Appellant contends "a person of ordinary skill would clearly lack
motivation to modify titanium oxide if it is colored with the particle sizes
taught by Yasuki because the result would not be a colored material" (App.
Br. 8). Appellant contends:
The use of teachings germane to the size from Y asuki ( to
modify the operable size range in Hayashi) in which that size is
attributed to give the particles transparency, a point seemingly
conceded by the Examiner, would not have been used for
covering power or hiding effects Transparency is a well-known
(App. Br. 9).
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Application 11/100,566
We find this argument unpersuasive. First, Hayashi expressly teaches
particle sizes in a range of 1 nm to 10,000 nm (FF 2), fully overlapping the 1
nm to 100 nm range required by claim 1. "In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness." In re
Peterson, 315 F.3d 1325, 1329, 1330 (Fed. Cir. 2003).
Second, we agree with the Examiner that "the instant inorganic core
( comprised of Ti02) itself is not a color core, but is made colored by
coating the core with at least one organic coloring substance on the core
particles" (Ans. 16). That is, Hayashi teaches that the core color derives
from organic pigments linked to the core with gluing agents (FF 3), not
based on the core color itself. Thus, whether the starting particles of Y asuki
are colored or transparent prior to attachment of the organic pigments does
not impact the fact that after organic pigments are attached to the core, the
core will be colored (FF 1-3).
Appellant contends
one of ordinary skill seeking guidance for a suitable range of
particle sizes of Ti02 in Hayashi would not have found that
solution in Y asuki as there was a teachings away for using
particles of Ti02 having a mean size of less than 0, 1 µm for
obtaining chromatic pigments, which is what Hayashi seeks to
use.
(App. Br. 9-10; cf Reply Br. 2).
We are not persuaded. 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) ("The prior art's
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
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Application 11/100,566
criticize, discredit, or otherwise discourage the solution claimed").
Appellant's citation to Yasuki does not criticize, discourage or otherwise
discredit the use of nanometer sized Ti02 particles as disclosed by both
Hayashi and Yasuki (FF 2, 6). Moreover, even the portion quoted by
Appellant that ''pearl pigments are preferably used in applications requiring
a transparency" (App. Br. 10) simply represents a preferred embodiment.
However, disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments. In
re Susi, 440 F.2d 442,446 n.3 (CCPA 1971).
Appellant contends "Hayashi does not deal with cosmetics and as
such it is non-analogous art" (App.Br. 11 ). Appellant contends:
Under either test, the rejection fails as Hayashi has nothing to
do with cosmetics (see definition in Claim 1) and one of
ordinary skill would not have found guidance in Hayashi for
teachings germane to a cosmetic. It would not have been
obvious to a person of ordinary skilled in the art to use particles
used for automobile bodies in cosmetics. Particles used in
cosmetics have to meet safety requirements of higher level than
particles used for automobile bodies.
(App. Br. 11-12).
We find this argument unpersuasive. We need not address whether
paint and cosmetics are in the same field of endeavor because a "reference is
reasonably pertinent if, even though it may be in a different field of
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In this case, Y asuki evidences that the inventor would have considered
teachings related to both paints and cosmetics because "titanium dioxide-
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Application 11/100,566
based chromatic pigments useful as a colorant of paints, printing inks,
plastics, cosmetics and the like" (FF 5). Thus, Y asuki provides a direct
statement that titanium dioxide based chromatic pigments are pertinent to
both paints and cosmetics and therefore Hayashi is pertinent to, and
analogous art for, the claimed invention.
Appellant contends: "A major advantage of the present invention is to
provide a cosmetic composition with a high covering power" (App. Br 12).
Appellant contends "[ c ]omparative tests between a comparative composition
comprising composite pigments comprising a Ti02 core having a mean size
of 250 nm (as the one Hayashi of example 12) and a composition according
to the invention comprising composite pigments comprising a Ti02 core
having a mean size of 25 nm" (App. Br. 13; cf Reply Br. 3-5).
We find this argument unpersuasive because Appellant provides no
evidence that this result is unexpected, whether by way of Declaration or
citation to a statement in the Specification that this result is unexpected or
otherwise surprising. "It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements
... [do] not suffice." In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). The
Dumousseaux8 Declaration never states the changes in the L * and C* values
are unexpected, only that the results are "advantageous" (see Dumousseaux
Deel. 3).
Moreover, the single result in the Dumousseaux Declaration for a
single pigment with a single ratio of coloring substance and a single core
size is not commensurate in scope with claim 1, which recites a range of
8 Declaration of Dr. Christophe Dumousseaux, dated June 23, 2014.
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Application 11/100,566
core sizes from 1 to 100 nm as well as ratios of coloring substance from 10
to 500 parts by weight (see Claim 1 ). Unexpected results must be
"commensurate in scope with the degree of protection sought by the claimed
subject matter." In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that the prior art renders the claims obvious. Appellant has not
presented evidence of secondary considerations, that when weighed with the
evidence of obviousness, is sufficient to support a conclusion of non-
obviousness.
B. 35 US.C. § 103(a) over Hayashi, Yasuki, Henrion, and Nishihama
Appellant contends
The Examiner has not reasonably established that a person of
ordinary skill seeking to create a "protective effect on human
skin" as alleged to flow from Nishihama's teachings would
have any relevance to a transparent material that has not been
shown to have any protective effect. In other words, these two
teachings in the Hiyashi modified with Y asuki and that in
Nishihama are inapposite and not properly combinable.
(App. Br. 14).
The Examiner finds
Hayashi' s pigment comprises composite particles utilizing
titanium oxide in the core or as the core particles, wherein said
core particles are coated with organic pigments that is coloring
substance .... Nishihama is relied upon to teach that titanium
oxide has the highest refractive index, which is 2.3 to 2.6,
compared to other inorganic powders.
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Application 11/100,566
(Ans. 18-19). The Examiner finds "the combination ofNishihama with
Hayashi does not actually alter the composite pigment of Hayashi, but
provided the knowledge of titanium oxide (i.e. refractive index) that is well-
known in the relevant art" (Ans. 19).
We agree with the Examiner. As already noted, Y asuki demonstrates
that the ordinary artisan would recognize titanium dioxide based pigments as
colorants in both paints and cosmetics (FF 5), rendering the pigments of
Hayashi pertinent to the cosmetics of Y asuki, Henrion, and Nishihama. We
also agree with the Examiner that the ordinary artisan, interested in using
titanium dioxide based cosmetics as taught by Yasuka (FF 57), would have
had reason to employ Nishihama's compositions where the "refractive index
of titanium oxide is 2.3 to 2.6" because "[h]iding power of titanium oxide is
also greatest among white pigments" and "it is desirable to prevent sunburn
with making the application of the inorganic powder inconspicuous"
(Nishihama 1 :37--44). We note that Nishihama also teaches particle sizes of
"20 to 200 nm" within the range of claim 1 (see Nishihama 4: 12). Thus, the
ordinary artisan interested in improving the cosmetics rendered obvious by
Hayashi, Y asuki, and Henrion would have reasonably modified the titanium
dioxide as suggested by Nishihama in order to improve hiding power and
prevent sunburn.
We further note that Appellant provides no evidence that the final
materials used in Hiyashi or Y asuki would have been transparent, and
Hiyashi teaches using "white pigments such as titanium dioxide, transparent
titanium dioxide" (Hiyashi ,r 36). Thus, Hiyashi recognizes that even the
starting material may be either transparent or not, but then teaches coating
this starting material with an organic pigment (FF 3) that is not reasonably
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Application 11/100,566
interpreted as "transparent". See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence.").
C. 35 US.C. § 103(a) over Hayashi, Yasuki, Henrion, and Defossez
Appellant contends
the Examiner failed to consider that the primary reference being
modified (Hayashi) is not related to cosmetics. Moreover, in the
Examiner's construct of the prior art (Hayashi modified by
Y asuki' s particle size), the resultant material would be
transparent and as taught by Hayashi "transparent Ti02, the
extender pigments or pearl pigments are preferably used in
applications requiring a transparency". See paragraph [0036].
The Examiner has not reasonably established that a person of
ordinary skill seeking to create a "a covering effect" as alleged
to flow from Defossez's teachings would have any relevance to
a transparent material that has not been shown to have any
protective effect.
(App. Br. 14--15).
The Examiner finds
Defossez is relied upon to teach the coloring substances as
claimed in claims 32-36 are known color pigments in the
cosmetic art, and they have been employed and used previously
in cosmetic compositions, for applying to human skin ( e.g.
foundation or lipstick; the eyes, i.e. mascaras; or the nail
varnish), and these coloring substances are clearly suitable to be
used in pigments that comprise titanium oxide.
(Ans. 19-20).
We agree with the Examiner. We have already extensively addressed
Appellant's arguments regarding transparent Ti02 above, and remain
unpersuaded for the reasons given. Hayashi generally teaches the use of
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organic pigments (FF 3), and lists a number of specific pigments (see
Hayashi ,r,r 70-73). The Examiner reasonably relies upon Defossez as
evidence that a number of different organic pigments were known
equivalents in the prior art (see Ans. 15; Defossez 3:3-20). We agree that
selecting such known equivalents would have been obvious. See KSR, 550
U.S. at 417 ("If a person of ordinary skill can implement a predictable
variation,§ 103 likely bars its patentability.") This result is also consistent
with Wrigley, which found a "strong case of obviousness based on the prior
art references of record. [The claim] recites a combination of elements that
were all known in the prior art, and all that was required to obtain that
combination was to substitute one well-known ... agent for another." Wm.
Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed.
Cir. 2012).
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Hayashi, Yasuki, and Henrion. Claims 2-11,
13, 14, 18-20, 29-31, and 37-58 fall with claim 1.
We affirm the rejection of claims 1 and 15-17 under 35 U.S.C.
§ 103(a) as unpatentable over Hayashi, Yasuki, Henrion, and Nishihama.
We affirm the rejection of claims 1 and 32-36 under 35 U.S.C.
§ 103(a) as unpatentable over Hayashi, Yasuki, Henrion, and Defossez.
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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