Ex Parte Farcet

Patent Trial and Appeal Board

May 12, 2016

11628954 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111628,954 09/22/2008
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
05/16/2016
FIRST NAMED INVENTOR
Celine Farcet
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.
05725.1623 4539
EXAMINER
AHMED, HASAN SYED
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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):
dcdocketing@novakdruce.com
PTOL-90A (Rev. 04/07)
lJ1..iITED STATES PATENT AND TRADE~vfARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CELINE FARCET 1
Appeal2014-005898
Application 11/628,954
Technology Center 1600
Before JACQUELINE W. BONILLA, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to gradient
copolymer compositions, all of which have been rejected. We have
jurisdiction under 35 U.S.C. § 6(b ). We affirm.
STATEMENT OF THE CASE
According to Appellant's specification, it is often desired to obtain a
deposited layer of cosmetic material on a keratinous substance, i.e., hair,
skin, eyelashes or nails. (Spec. I: 11-16.) "Good persistence and hold over
1 Appellant identifies the Real Party in Interest as L'OREAL. (Appeal
Br. 2.)
Appeal2014-005898
Application 11/628,954
time of the deposited cosmetic layer and good adhesion to the support are
generally sought." (Id. at 24--26.) Having a composition that is comfortable
to wear and does not exhibit an excessively tacky texture is also a desirable
property. (Id. at 1 :38-2:2.) Polymers are used to help achieve these
properties. (Id. at 2:3-18.) The use of a blend of polymers having different
chemical natures can cause problems of phase separation in a cosmetic
formulation. (Id.) So-called "random polymers" that exhibit a dispersity in
composition of the polymer chains also suffer from phase separation in a
cosmetic formulation. (Id.)
The claimed invention seeks to overcome the disadvantages of the
prior art with a "gradient copolymer" composition. (Id. at 3:20-34.) A
gradient copolymer is defined by Appellant as a copolymer "exhibiting a
change in the ratio of the various monomers all along the chain." (Id. at
6:37-39.)
Claims 34--47, 55---64, 82, and 83 are on appeal. Claim 34 is the only
independent claim on appeal and reads as follows:
34. A gradient copolymer comprising at least two different monomers
chosen from isobomyl acrylate, isobomyl methacrylate, isobutyl
acrylate, isobutyl methacrylate and 2-ethylhexyl acrylate.
(Appeal Br. 18.)
The following three grounds of rejection by the Examiner are before
us on review:
1. Claims 34, 43, 44, 47, and 55---64 under 35 U.S.C. § 102(a) as
anticipated by Mathew. 2 (Final Action 3--4.)
2 Mathew et al., US 2003/020812 Al, published Nov. 6, 2003.
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Application 11/628,954
2. Claims 34--47, 55---64, 82, and 83 under 35 U.S.C. § 103(a) as
unpatentable over Mathew in view of Rollat. 3 (Final Action 4---6.)
3. Claims 34--47, 55---64, 82, and 83 on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims
1-15 of U.S. Patent No. 7,423,104. (Final Action 6-7.)
DISCUSSION
Ground 1. Anticipation
The Examiner finds that Mathew discloses preparing polymers of
vinyl monomers with controlled molecular weight and narrow polydispersity
in the presence of a thiocarbonylthio compound. (Final Action 3.) The
Examiner, relying on lists set forth in paragraphs 42 and 45 of Mathew, finds
that Mathew discloses the polymers "that can be obtained include gradient
copolymers" and that the monomers that can be polymerized "include all
isomers of butyl acrylate, 2-ethylhexyl acrylate, and isobomyl acrylate."
(Final Action 3.) In light of the foregoing, the Examiner concludes that
claims 34, 43, 44, 47, 55-64, 82, and 83 are anticipated because "Mathew
discloses the same combination of monomers being claimed in the
configuration being claimed, i.e., a gradient copolymer," and also,
consequently, "the properties applicant discloses and/or claims are
necessarily present." (Final Action 4.)
We disagree with the Examiner's fact-findings and conclusion that
Mathew anticipates claims 34, 43, 44, 47, 55---64, 82, and 83.
3 Rollat et al., US 6,689,346, issued Feb. 10, 2004.
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Application 11/628,954
In an anticipation rejection, "it is not enough that the prior art
reference ... includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention." Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). To anticipate,
Mathew would need to "clearly and unequivocally" disclose a composition
meeting all the limitations of the claims. In re Arkley, 455 F.2d 586, 587
(CCPA 1972). That requirement does not mean that the claimed invention
be described in Mathew in ipsissimis verbis, In re Schaumann, 572 F.2d 312,
317 (CCPA 1978), but the description in Mathew must be "sufficient to put
the public in possession of the invention." In re LeGrice, 301 F.2d 929, 933
( CCP A 1962 ). That is not the case here.
We do not agree with the Examiner (Ans. 5---6) that the "delimited
number of possible" polymer types provided in Mathew paragraph 45 and
the "delimited number of monomer types" provided in Mathew paragraph 42
amounts to a description that is sufficiently specific to anticipate the gradient
copolymer composition containing at least two different monomers recited
in claim 34. Rather, we find, as Appellant contends, that in order to arrive at
the claimed invention from Mathew's disclosure, one would have to
(1) select a copolymer rather than a homopolymer, despite all of the
examples being directed to a homopolymer (Mathew i-fi-158-74 (Examples 6-
17)), (2) select a gradient copolymer from the list of possible copolymers, all
of which are described as being able to be obtained "with a well-defined
structure" (Mathew i1 45), and (3) select the claimed monomers from the
large list of monomers described by Mathew, even though none of Mathew's
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Application 11/628,954
examples employs a monomer of the type claimed, much less two different
monomers (Mathew i-fi-158-74). (See Appeal Br. 11-12.)
The picking and choosing suggested by the Examiner in the
anticipation rejection is unsupported, where there is a lack of direction in
Mathew to make any one of the selections noted above. In re Arkley, 455
F.2d 586, 587-88 (CCPA 1972); accord Wm Wrigley Jr. Co. v. Cadbury
Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012) (affirming
anticipation where the prior art indicated "preferred" members from two
generic categories of ingredient lists).
Because Mathew fails to sufficiently direct those skilled in the art to
the invention recited in claim 34, we find it does not anticipate claim
34. Thus, we reverse the Examiner's rejection of claims 34, 43, 44, 47, 55-
64, 82 and 83 under 35 U.S.C. § 102(a) as being anticipated by Mathew.
Ground 2. Obviousness
The Examiner has rejected claims 34--47, 55---64, 82, and 83 as
obvious over Mathew in view of Rollat. The obviousness rejection,
however, relies on the Examiner's finding that Mathew anticipates the
composition recited in independent claim 34.
We disagree with the Examiner (Ans. 2) that claim 34 was
independently rejected under 35 U.S.C. § 103 as being obvious over
Mathew. In the Final Rejection concerning obviousness, the Examiner
states:
Mathew is discussed above [in the anticipation rejection]. Mathew
differs from the instant claims in that it does not disclose the amounts
of the monomers used in forming the copolymer.
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Appeal2014-005898
Application 11/628,954
(Final Action 4.) In the rejection here, the Examiner provides insufficient
explanation concerning the obviousness of the gradient copolymer
composition containing at least two different monomers recited in claim 34
in light of Mathew's disclosure alone. (See id. at 4---6 (providing no further
explanation beyond stating that "Mathew explains that the disclosed
copolymer is beneficial in that it has low polydispersity (see, e.g., [0010].").)
In addition, the Examiner only relies on Rollat to supply the missing
limitation concerning amounts of monomers recited in claims 35--42, 45, 46,
82, and 83. (Id.; see also Ans. at 7.)
As discussed above, the Examiner's finding that Mathew anticipates
the gradient composition recited in claim 34 is not supported sufficiently by
the evidence. Absent more discussion by the Examiner in relation to the
obviousness rejection, we are constrained to reverse the Examiner's
rejection of claims 34--47, 55---64, 82, and 83 based on 35 U.S.C. § 103(a).
Ground 3. Obviousness-Type Double Patenting
The Examiner has rejected claims 34--4 7, 55---64, 82, and 83 on the
ground of non-statutory obviousness-type double patenting as being
unpatentable over claims 1-15 of U.S. Patent No. 7,423,104. Appellant does
not contest the provisional obviousness-type double patenting rejection
(Appeal Br. 16.) Therefore, we summarily affirm that rejection.
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Application 11/628,954
SUMMARY
We reverse the rejection of claims 34, 43, 44, 47, and 55---64 under 35
U.S.C. § 102(a) as anticipated by Mathew.
We reverse the rejection of claims 34--47, 55-64, 82, and 83 under 35
U.S.C. § 103(a) as obvious over Mathew and Rollat.
We affirm the rejection of claims 34--47, 55---64, 82, and 83 on the
ground of non-statutory obviousness-type double patenting as unpatentable
over claims 1-15 of U.S. Patent No. 7,423,104.
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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