Ex Parte Farcet

Patent Trial and Appeal Board

Feb 13, 2018

11347251 (P.T.A.B. Feb. 13, 2018)

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.
11/347,251 02/06/2006 Celine Farcet 394934US99X 4964
22850 7590 02/15/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CHANG, KYUNG SOOK
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CELINE FARCET
Appeal 2017-006257
Application 11/347,2511
Technology Center 1600
Before FRANCISCO C. PRATS, TIMOTHY G. MAJORS, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
SAWERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-10, 20-23, 26^13, 45, and 46. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies L’Oreal of Paris, France, as the real party in
interest. Br. 2.
Appeal 2017-006257
Application 11/347,251
STATEMENT OF THE CASE
Claims 1-10, 20-23, 26^43, 45, and 46 are on appeal. Claims 1-10,
20, 22, 23, 26^13, 45, and 46 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) for obviousness over Blin2 in view of De La Poterie.3 Final Act. 3.
Claim 21 stands rejected as unpatentable under 35 U.S.C. § 103(a) for
obviousness over Blin in view of De La Poterie, and further in view of
Fukuoka.4 Id. at 7-8.
Claim 1 is representative of the subject matter on appeal. See
37 C.F.R. § 41.37(c)(l)(iv). Claim 1 recites:
1. A cosmetic composition comprising, in a cosmetically
acceptable medium, at least one dispersion of polymer particles in a liquid
carbon-based medium, wherein said polymer is a block copolymer
comprising at least one first block that is soluble in said liquid carbon-based
medium and at least one second block that is insoluble in said liquid carbon-
based medium in an amount of from 75% to 90% by weight, relative to the
total weight of the copolymer,
wherein the first block that is soluble in said liquid carbon-based
medium is present in an amount of 10% to 25%, relative to the total weight
of the copolymer, and comprises:
• from 50% to 100% by weight of at least one monomer that is
soluble in said liquid carbon-based medium, wherein the at
least one soluble monomer is chosen from at least one of the
following monomers:
(a) the methacrylates of formula CH2=C(CH3)-COORi
2 Xavier Blin et al., US 2006/0093568 A1 (May 4, 2006) (“Blin”).
3 Valerie De La Poterie et al., US 2002/0051759 Al (May 2, 2002)
(“De La Poterie”).
4 Masateru Fukuoka et al., US 6,608,143 B1 (Aug. 19, 2003)
(“Fukuoka”).
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Application 11/347,251
wherein Ri is chosen from linear and branched C8-C22
alkyl groups; cyclic alkyl groups comprising from 8 to 30
carbon atoms; and tert-butyl groups;
(b) the acrylates of formula CH2=CH-COOR2
wherein R2 is chosen from linear and branched C8-C22
alkyl groups; cyclic alkyl groups comprising from 8 to 30
carbon atoms; and isobutyl groups;
(c) the (meth)acrylamides of formulae CH2=C(CH3)-
CONR3R4 and CH2=CH-CON R3R4, wherein R3 is chosen from
a hydrogen atom and linear and branched C1-C12 alkyl groups
and R4 is chosen from linear and branched Cs to C12 alkyl
groups;
(d) the vinyl esters of formula R5-CO-O-CHAH2
wherein R5 is chosen from linear and branched Cs to C22 alkyl
groups;
(e) the ethers of vinyl alcohol and of an alcohol of
formula ReO-CH=CH2 wherein R6 is chosen from linear and
branched alkyl groups comprising from 8 to 22 carbon atoms;
and
(f) carbon-based macromonomers with a polymerizable
end group, chosen from:
(i) linear and branched C6-C22 alkyl
(meth)acrylate homopolymers and copolymers,
comprising a polymerizable end group chosen from vinyl
and (meth)acrylate groups; and
(ii) polyolefins with a (meth)acrylate end group;
and wherein the second block that is insoluble in said
liquid carbon-based medium in an amount of to 90% and
comprises:
• from 75 % to 90% by weight of at least one monomer that is
insoluble in said liquid carbon-based medium chosen from the
following monomers, and the salts and mixtures thereof:
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(a) the (meth)acrylates of formulae: CH2=C(CH3)-
COOR'i and CH2=CH-COOR'i wherein R'i is chosen from:
(i) linear and branched alkyl groups comprising
from 1 to 6 carbon atoms, optionally comprising in its
chain at least one hetero atom chosen from O, N and S;
and optionally comprising at least one substituent chosen
from -OH, halogen atoms and -NR'R" groups wherein R'
and R", which may be identical or different, are each
chosen from linear and branched C1-C4 alkyls; optionally
substituted with at least one polyoxyalkylene group
comprising from 5 to 30 oxyalkylene units; wherein tert-
butyl methacrylate and isobutyl acrylate are excluded
from this definition; and
(ii) cyclic alkyl groups comprising from 3 to 6
carbon atoms, optionally comprising in its chain at least
one heteroatom chosen from O, N and S; optionally
comprising at least one substituent chosen from OH and
halogen atoms;
(b) the (meth)acrylamides of formulae:
CH2=C(CH3)-CONR,3R,4 and CH2=CH-CONR'3R'4,
wherein:
R!3 and R!4, which may be identical or different, are each
chosen from hydrogen atoms and linear and branched alkyl
groups comprising from 1 to 6 carbon atoms, optionally
comprising at least one substituent chosen from -OH, halogen
atoms and -NR'R" groups wherein R' and R", which may be
identical or different, are each chosen from linear and branched
C1-C4 alkyls; or, alternatively,
R!3 is chosen from a hydrogen atom and R!4 is chosen
from a l,l-dimethyl-3-oxobutyl group;
(c) ethylenically unsaturated monomers comprising at
least one functional group chosen from carboxylic, phosphoric
and sulfonic groups, and salts thereof;
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(d) the vinyl esters of formula: R'6-COO-CH=CH2
wherein R'6 is chosen from linear and branched alkyl groups
comprising from 1 to 6 atoms, cyclic alkyl groups comprising
from 3 to 6 carbon atoms, and aromatic groups;
(e) ethylenically unsaturated monomers comprising at
least one tertiary amine functional group; and
(f) styrene and derivatives thereof;
wherein the polymer particles are not surface-stabilized.
DISCUSSION
Background
The claimed invention is directed to cosmetic compositions containing
dispersions of polymer particles. Spec. ^ 2. The Specification states that it
was known in the art to use polymer particle dispersions in cosmetics, but
that such dispersions required large amounts of stabilizing polymers “in
order to obtain a relatively stable dispersion of said particles.” Id. 3—4.
“Thus,” the Specification continues, “the inventor has discovered,
surprisingly, novel polymer particle dispersions which may afford good
cosmetic properties . . . , and moreover, which do not comprise any stabilizer
. . . Id. ^8. The cosmetic composition comprises at least one block
copolymer in a liquid carbon-based medium. Id. ^f 9. The block copolymer,
in turn, is made up of at least two blocks: a “first” block that is soluble in the
medium, and a “second” block that is insoluble in the medium. Id. The
Specification explains that “the physicochemical properties of the
dispersion” can be modified by “appropriately selecting the monomers and
the organic medium of which it is composed.” Id. ^ 10. The resulting
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dispersion “has great affinity for the oily media usually used in cosmetics”
and lacks “any tacky nature.” Id.
The Examiner rejected representative claim 1 for obviousness over
Blin in view of De La Poterie. Final Act. 3-6. The Examiner relied on Blin
to teach the elements of claim 1, including a cosmetic composition
comprising an organic (i.e., carbon-based) liquid medium and a block
copolymer. Id. at 4 (citing Blin]fl| 1, 52, 53, 75-78, 88, 119, 446). The
Examiner acknowledged that Blin does “not exemplify an embodiment of
the claimed copolymers” and does “not teach the exact amount of first and
second block polymers as instantly claimed.” Id. at 6.
As to the amounts of first and second block polymers, the Examiner
reasoned:
[I]t would have been obvious to optimize or adjust the amount
ranges of first and second block polymers with the claimed
ranges without undue experimentation because Blin et al. teaches
10/90 to 90/10 ratio of first and second block polymers and the
first and second block polymers exist in an amount of 20-90%
and 5-75%, respectively, which overlap the claimed range of 10-
25% and 75-90%, respectively. . . . Unless the criticality of the
ranges is given, the claimed ranges would be optimized from the
teachings of Blin et al.
Id. at 6-7 (citing In re Wertheim, 541 F.2d 257 (CCPA 1976)). And, as to
the claimed copolymers, the Examiner relied on De La Poterie. Specifically,
the Examiner found that De La Poterie “teaches a cosmetic composition
containing at least one hydrophobic film-forming polymer and at least one
thermal transition agent, in a physiologically acceptable medium” where the
“hydrophobic film-forming polymer is present in the form of surface-
stabilized particles dispersed in a liquid fatty phase.” Id. at 5 (citing
De La Poterie, Abstract, 8, claims 1 & 18). The Examiner reasoned:
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It would have been prima facie obvious to one of ordinary skill
in the art at the time the claimed invention was made to modify
a cosmetic composition of Blin et al. with the hydrophobic
particles dispersed in the liquid fatty phase as taught by
De La Poterie et al. and produce the instant invention.
One of ordinary artisan would have been motivated to do so
because the film forming polymer particle dispersion would have
provided adhesion and ease coating on the keratinous material
support according to the final use and easy removal after use as
well.
Id. at 7.
The Examiner also rejected claim 21 for obviousness over Blin in
view of De La Poterie, and further in view of Fukuoka. Final Act. 7-10.
Claim 21 limits claim 1 by reciting specific polyolefins with a
(meth)acrylate end group as the “at least one first block that is soluble in
said liquid carbon-based medium.” See Br. 20 (claim 21). The Examiner
found that Fukuoka teaches “using a macromonomer of a polyolefin (e.g.,
repeating ethylene-butylene or repeating propylene) with an unsaturated
double bond functional group (e.g., vinyl, (meth)acryloyl, or allyl) at its
terminus.” Final Act. 9 (citing Fukuoka, 5:19-30). The Examiner also
found that Fukuoka teaches that olefmic macromonomers impart desirable
characteristics such as adhesive properties, heat- and weather-resistance,
low-temperature tackiness, well-balanced removability, and non-staining
properties. Id. (citing Fukuoka, 6:36-44, 16:59-17:14). The Examiner
reasoned:
It would have been prima facie obvious to one of ordinary skill
in the art at the time the claimed invention was made to include
the polyolefin macromonomer of Fukuoka et al. in the polymeric
dispersion of Blin et al. and produce the instant invention. The
skilled artisan would have been motivated to include the
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polyolefin macromonomer because Fukuoka et al. specifically
teaches forming (meth)acrylate-backboned polymers that
include such macromonomers to impart adhesion to the overall
polymer based upon this teaching ....
Id.
Analysis
On appeal, the Board “reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon.” Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential). Upon review of the record, we find no
reversible error in the Examiner’s findings and conclusions, and thus affirm
the Examiner’s rejection of claims 1-10, 20-23, 26^43, 45, and 46.
Claim 1
Appellant first argues that “Blin does not teach the block polymer and
as such the entire supposition of the rejection is improper.” Br. 9.
Specifically, Appellant argues that “Blin already teaches that the block
copolymers are to be used in solution not in a dispersion and so modifying
Blin with De La Poterie is an error.” Id. Thus, Appellant’s argument
appears to be that the Examiner erred because Blin’s block copolymers are
prepared in solution, rather than in a dispersion. See id. (citing Blin 230-
37).
As an initial matter, we agree with the Examiner that Blin teaches a
block copolymer comprising a first soluble block and a second insoluble
block. See Ans. 3. Specifically, Blin teaches a cosmetic composition
comprising “at least 2 distinct blocks.” Blin 20, 42. Blin further teaches
that, in one embodiment, the first block and the second block “are
incompatible in the organic liquid medium.” Id. ^| 51. As the Examiner
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explained, this means that the mixture formed from the first block and the
second block is not miscible in the organic liquid. Id. 52; Ans. 3.
Moreover, Blin exemplifies a first block (having a Tg of greater than or
equal to 40°C) as preferably made of methyl acrylate, which—as the
Examiner explained and Appellant does not dispute—is insoluble in the
organic (carbon-based) liquid medium. Blin 88; Ans. 3 (citing Spec.
55-56). Blin also exemplifies a second block (having a Tg of between 20
and 40°C) as preferably made of 2-ethylhexyl acrylate, which is soluble in
the organic liquid medium. Blin ^ 119; Ans. 3 (citing Spec. 47^18).
Again, Appellant does not dispute the Examiner’s finding in this regard. We
therefore disagree with Appellant that “Blin does not teach the block
polymer.” Br. 9.
Appellant argues that “Blin already teaches that the block copolymers
are to be used in solution not in a dispersion.” Id. (citing Blin 191, 199,
207). In the Examples, Blin describes the preparation of certain polymers in
“a solution containing 50% polymer active substance in isododecane.” See
Blin ^ 186-193 (Example 1), 194-201 (Example 2), 202-209
(Example 3). Appellant does not, however, persuasively rebut the
Examiner’s determination that in the chemical arts, a “dispersion”
encompasses a “solution.” Ans. 4. As the Examiner explained, a dispersion
is a mixture of substances in the form of a suspension, colloid, or solution.
Id. \ see also Final Act. 8.
Appellant’s citations to Wikipedia do not rebut the Examiner’s
reasoned analysis. See Br. 9 (citing https://en.wikipedia.org/
wiki/Solution and https://en.wikipedia.org/wiki/Dispersion_(chemistry)).
For example, the Internet page at https://en.wikipedia.org/wiki/Solution
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Application 11/347,251
states that a solution contains particles of a solute.5 And the Internet page at
https://en.wikipedia.org/wiki/Dispersion_(chemistry) expressly states that
there are three main types of dispersions: coarse dispersion (or suspension),
colloid, and solution.6 Thus, Appellant’s allegation that there is a patentable
distinction between Blin’s “solution” and the instantly-claimed “dispersion”
is not persuasive.
But even assuming that Blin’s block copolymers are initially produced
in a solution (and that a solution is different from a dispersion), Blin
nevertheless teaches a final cosmetic composition comprising a dispersion of
polymer particles, as claimed. Specifically, Blin teaches that “[t]he
composition according to the invention may be in the form in particular of a
. . . dispersion.” Blin ^ 446. Appellant points us to nothing in the
Specification evidencing that the claimed cosmetic composition containing a
“dispersion” may not first be made in the form of a “solution.” See
generally Br. The Specification, in fact, contemplates the opposite: that the
first and second blocks of the block copolymer are initially synthesized in
solution. See Spec. ^ 76 (“If the first block, referred to as the soluble block,
is synthesized in bulk, the ‘insoluble’ block may then be synthesized in bulk
or in solution.'''’ (emphasis added)); id. 78 (“If all the blocks are synthesized
in solution, in a common solvent, the subsequent addition of a carbon-based
solvent. . . will lead to the disclosed dispersion in the carbon-based media.”
(emphasis added)). Thus, we are unpersuaded of reversible error in the
s://en.wikipedia.org/wiki/Solution (last visited Feb. 8, 2018).
s://en.wikipedia.org/wiki/Dispersionj chemistry) (last visited
Feb. 8, 2018).
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Examiner’s finding that Blin’s final cosmetic composition is in the form of a
dispersion. Final Act. 4.
Finally, even assuming that Blin’s block copolymers are not in the
form of a dispersion, we are unpersuaded of reversible error in the
Examiner’s determination that an ordinarily skilled artisan would have had a
reason to combine De Fa Poterie with Blin to produce a cosmetic
composition comprising a dispersion of polymer particles. Final Act. 7.
Specifically, a preponderance of the evidence supports the Examiner’s
finding that an ordinarily skilled artisan would have been motivated to
modify Blin’s cosmetic composition with the hydrophobic particles
dispersed in the liquid fatty phase as taught by De Fa Poterie. Id.', see also
De Fa Poterie, claim 18. Blin teaches that cosmetic compositions should
have “good texture” and “good staying powder on the lips,” Blin If 19, and
De Fa Poterie teaches that the use of a film-forming polymer promotes
adherence to keratinous materials, De Fa Poterie If 34. Thus, we agree with
the Examiner that “there is reasonably sufficient motivation to combine
these two references.” Ans. 6.
Appellant argues that the addition of De Fa Poterie “ignore[s] the
teachings of Blin that teach the exact opposite.” Br. 12. Appellant argues
that the “proposed modification or combination of the prior art would
change the principle of operation of the prior art” and therefore is improper.
Id. But Appellant’s argument is conclusory and unsupported by evidence.
For example, as explained above, both Blin and the Specification describe
initially producing the block polymers in solution. Blin 186-193
(Example 1), Iffl 194-201 (Example 2), 202-209 (Example 3); Spec,
inf 76, 78. And both Blin and the Specification describe the final cosmetic
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composition as in the form of a dispersion. Blin 446; Spec. ^ 108.
Appellant provides no persuasive explanation as to how the combination of
De La Poterie changes the principle of operation of Blin. Thus, we find
Appellant’s argument unpersuasive.
Claims 2—10, 20, 22, 23, 26—43, 45, and 46
As to dependent claims 2-10, 20, 22, 23, 26^43, 45, and 46, Appellant
only states that “[t]his error thus permeates the rejection of each of’ these
claims. Because this statement does not amount to a separate argument,
claims 2-10, 20, 22, 23, 26^43, 45, and 46 fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 21
For claim 21, Appellant appears to argue that the Examiner relied on
an improper “lead compound” analysis for combining the teachings of
Fukuoka with Blin and De La Poterie. Br. 13-14. We disagree that the
Examiner relied on a “lead compound” analysis. The Federal Circuit has
explained that “[ojbviousness based on structural similarity . . . can be
proved by identification of some motivation that would have led one of
ordinary skill in the art to select and then modify a known compound (i.e. a
lead compound) in a particular way to achieve the claimed compound.”
Eisai Co. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1357 (Fed. Cir. 2008);
see also Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655
F.3d 1291, 1304 (Fed. Cir. 2011) (stating that the obviousness inquiry
requires “the identification of some reason that would have prompted a
researcher to modify the prior art compounds in a particular manner to arrive
at the claimed compounds”). For example, close structural similarity
between chemical compounds, such as homologs, may provide the requisite
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reason or motivation. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en
banc). The motivation to modify the lead compound must be grounded in
the ordinarily skilled artisan’s expectation that, given the close structural
similarity, the claimed compounds will have the same properties as the
prior-art compounds. Id.1
Here, the Examiner clearly did not rely on a “lead compound”
analysis in rejecting claim 21. Claim 21 recites specific polyolefins with a
(meth)acrylate end group as the “at least one first block that is soluble in
said liquid carbon-based medium.” See Br. 20 (claim 21). The Examiner
found that Fukuoka teaches “using a macromonomer of a polyolefin (e.g.,
repeating ethylene-butylene or repeating propylene) with an unsaturated
double bond functional group (e.g., vinyl, (meth)acryloyl, or allyl) at its
terminus.” Final Act. 9 (citing Fukuoka 5:19-30). The Examiner also found
that Fukuoka specifically discloses the polyolefin macromonomer Kraton
liquid polymer L-1253, which is a poly(ethylene/butylene) methacrylate
macromonomer, that falls within the scope of claim 21. Ans. 8; Fukuoka
5:35-38.
Appellant does not address Fukuoka’s teachings or dispute that
Kraton liquid polymer L-1253 falls within the scope of claim 21. Thus, we
7 In any event, an obviousness analysis is an “expansive and flexible”
inquiry. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The
inquiry may sometimes proceed by identifying a lead compound or reference
composition, but not always. See Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011) (“A prima facie case of obviousness in the
chemical arts is often based on a known compound, called a ‘lead
compound,’ which serves as a starting point for a person of ordinary skill
developing the claimed invention.” (emphasis added)).
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are not persuaded that the Examiner made a reversible error in rejecting
claim 21.
SUMMARY
We affirm the rejections of claims 1-10, 20-23, 26^43, 45, and 46
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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