Ex Parte Giroud et al

Board of Patent Appeals and Interferences

Jul 19, 2012

10240195 (B.P.A.I. Jul. 19, 2012)

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.
10/240,195 06/09/2003 Franck Giroud 2365-58 5995
7590 07/19/2012
Nixon & Vanderhye
11th floor
901 North Glebe Road
Arlington, VA 22203-1808
EXAMINER
DICKINSON, PAUL W
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
07/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCK GIROUD and
HENRI SAMAIN
__________

Appeal 2011-011091
Application 10/240,195
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “aqueous cosmetic compositions … for
treating the hair, comprising nanoparticles and water-soluble organosilicon
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compounds” (Spec. 1). The Specification discloses that the compositions
“increase the volume of the head of hair” (id.).
Claims 1-11 and 13-15 are on appeal. Claim 1, the only independent
claim, reads as follows:
1. A cosmetic composition comprising, in a cosmetically acceptable
medium including water and/or one or more solvents,
i) nanoparticles selected from the group consisting of metallic
nanoparticles, nanoparticles consisting of metal oxide, nanoparticles
consisting of metal carbide and nanoparticles consisting of metal nitride, and
ii) at least one organosilicon compound that is soluble in the
cosmetically acceptable medium, chosen from organosilanes comprising one,
two or three silicon atoms and organosiloxanes comprising two or three
silicon atoms, these organosilicon compounds also comprising at least two
hydroxyl or hydrolyzable groups per molecule.

Issue
The Examiner has rejected claims 1-11 and 13-15 under 35 U.S.C.
§103(a) as being obvious in view of Forestier1 and Raleigh.2 Claims 2-11
and 13-15 have not been argued separately and therefore stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that “Forestier teaches cosmetic compositions
containing titanium oxide nanoparticles coated with alumina as sunscreen
agents” (Answer 3). The Examiner finds that “Raleigh teaches the elected
organosilicones as preferable for compositions where UV protection is
desired, such as personal products” (id.) and that “Raleigh also teaches that it
is known to combine UV active agents to organosilicones for cosmetics, such
as sun tanning lotions and hair products” (id. at 4). The Examiner concludes

1 Forestier et al., US 5,695,747, Dec. 9, 1997.
2 Raleigh et al., US 5,310,845, May 10, 1994
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that it “would have been prima facie obvious to a person of ordinary skill in
the … to use the organosilicones of Raleigh in a sun-protection cosmetic,
such as that of Forestier … [because of] Raleigh’s teaching that such a
combination is known in the art to produce useful cosmetic products” (id.).
Appellants contend that the cited references would not have made
obvious the cosmetic composition of claim 1 because neither Forestier nor
Raleigh discloses products for improving the volume and touch of hair
(Appeal Br. 12). Appellants also contend that they have provided evidence
of unexpected results that rebuts any prima facie case of obviousness (id. at
13-14).
The issues presented are:
Does the evidence of record support the Examiner’s conclusion that the
cited references would have made obvious the cosmetic composition of claim
1?
If so, have Appellants presented evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness?
Findings of Fact – Prima Facie Obviousness
1. Forestier discloses a composition that “is useful as a composition
for protecting the human epidermis or the hair against UV rays or as make-
up” (Forestier, abstract).
2. Forestier discloses that the composition comprises “at least one
metal oxide nanopigment and at least one melanin pigment in a cosmetically
acceptable carrier” (id. at col. 1, ll. 39-42).
3. Raleigh discloses that previous silicone polishes “suffer from the
shortcoming that when they are prepared by conventional mechanical
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methods, the ultraviolet light absorbing agents contained therein are
considered to be fugitive materials, from the standpoint of various external
conditions such as weathering, abrasion, heating and the like” (Raleigh, col.
1, ll. 26-32).
4. Raleigh discloses that it is known in the art that “fugitive UV agents
can be added to silicones for use in cosmetic applications such as make up,
sun tanning lotions and hair products” (id. at col. 1, ll. 38-40).
5. Raleigh discloses that, “[i]n each of the foregoing applications,
while the protection against UV radiation lasts for a finite period of time, due
to weathering, abrasion and heating etc. the protection is lost much sooner
than desired” (id. at col. 1, ll. 45-48.)
6. Raleigh discloses “UV containing curable silanol-terminated
siloxane polymer[s] … [that] have excellent retention of UV resistant
properties under conditions of weathering” (id. at col. 2, ll. 4-8).
7. Raleigh discloses that the polymer compositions are “prepared by
blending the curable silylated UV absorbing agent with a silanol-containing
siloxane followed by dilution with co-solvents, and reaction in the presence
of a catalyst” (id. at col. 2, ll. 61-66).
8. Raleigh discloses that the “mixture of the silanol terminated
siloxane, UV agent, solvent, co-solvent and catalyst are then agitated, and the
solvents readily evaporated to form the UV containing curable polysiloxanes
of the present invention” (id. at col. 7, ll. 8-12).
9. Raleigh discloses that catalysts that may be used include
aminofunctional silanes (id. at col. 6, ll. 15-18) and that a preferred
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aminofunctional silane is gamma-aminopropyltriethoxysilane (id. at col. 6, ll.
33-35).
10. Raleigh discloses that “siloxanes of the present invention are
curable, and can be employed in a wide variety of personal care … products,
as is known to those skilled in the art” (id. at col. 7, ll. 15-18).
Analysis – Prima Facie Obviousness
Claim 1 is directed to at cosmetic composition comprising a solvent,
nanoparticles such as metallic nanoparticles, and an organosilicon compound
such as an organosilane comprising one to three silicon atoms and at least
two hydroxyl or hydrolyzable groups per molecule.
Forestier discloses a cosmetic composition comprising metal oxide
nanopigments and melanin pigments for use in protecting skin and hair from
UV rays. Raleigh discloses that it is known in the art to add UV-absorbing
agents to silicones for use in cosmetic compositions such as sun tanning
lotions and hair care products. Raleigh discloses that curable siloxane
polymers having integral ultraviolet light absorbers that are useful in
preparing, for example, personal care compositions that show excellent
retention of UV resistant properties. Raleigh discloses that a preferred
catalyst in its composition is gamma-aminopropyltriethoxysilane, which
meets the limitations for the organosilicon compound of claim 1. We agree
with the Examiner that it would have obvious to combine the metal
nanoparticles of Forestier with the silicone composition of Raleigh in order to
provide enhanced UV protection.
Appellants argue that neither Forestier nor Raleigh discloses products
for improving the volume and touch of hair, and thus a composition for
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improving the volume and touch of hair would not have been obvious in view
of these references (Appeal Br. 12).
This argument is not persuasive. Claim 1 does not require that the
composition is useful for improving the touch and volume of hair. As set
forth above and as recognized by the Examiner, one of skill in the art would
have found it obvious to combine Forestier’s metallic particles with Raleigh’s
silicone components (and thereby arrive at the invention of claim 1) in order
to obtain a UV protecting skin or hair care composition.
Appellants also argue that the “melanin pigments required by Forestier
are not included in the claimed invention.… It would have been contrary to
Forestier to have excluded a required component of the cited patent.” (Reply
Br. 6.)
This argument is also not persuasive. Claim 1 is directed to a
“cosmetic composition comprising” the recited nanoparticles and
organosilicon compound. “In the patent claim context, the term ‘comprising’
is well understood to mean ‘including but not limited to’.” CIAS, Inc. v.
Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007). Thus, the
composition of claim 1 could also contain other ingredients such as melanin
pigments.
Findings of Fact – Secondary Considerations
12. Appellants have provided a declaration under 37 C.F.R. § 1.132
(Declaration of Laëtitia Feuillette, filed June 1, 2010).
13. Ms. Feuillette declares that a comparison was made between the
following compositions: Comparative composition 1 (5% by weight of
alumina nanoparticles); Comparative composition 2 (5% by weight of
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aminopropyltriethoxysilane); and Inventive composition 3 (2.5% by weight
of alumina nanoparticles and 2.5% by weight of aminopropyltriethoxysilane)
(Feuillette Declaration, ¶¶ 5-7).
14. Ms. Feuillette declares that “Composition 3 surprisingly and
unexpectedly imparts significantly improved volume and touch to the hair,
relative to those obtained with comparative compositions 1 and 2” (id. at
¶ 10).
Principles of Law – Secondary Considerations
“It is well established that the objective evidence of nonobviousness
must be commensurate in scope with the claims.” In re Lindner, 457 F.2d
506, 508 (CCPA 1972).
“If an applicant demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner, this
will generally establish that the evidence is commensurate with [the] scope of
the claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
Analysis – Secondary Considerations
Appellants argue that they have overcome any prima facie case of
obviousness by providing evidence of unexpected results (Appeal Br. 13-14).
Appellants argue that the Feuillette Declaration provides evidence that a
synergistic effect in improving the volume and touch of hair is obtained with
a combination of alumina nanoparticles and aminopropyltriethoxysilane (id.).
The Examiner responds that the results presented in the Feuillette
Declaration are insufficient to overcome the prima facie case of obviousness
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because the results are not commensurate with the scope of claim 1 (Answer
5).3 The Examiner reasons that the results shown are only for a composition
containing alumina nanoparticles and aminopropyltriethoxysilane in a 50:50
ratio, whereas claim 1 encompasses a broad range of metallic particles and a
broad range of organosilicon compounds, which may be present in any ratio
(id. at 6).
We agree with the Examiner that the evidence presented in the
Feuillette Declaration is insufficient to overcome the prima facie case of
obviousness because, even if we assume for the sake of argument that the
results shown are unexpected, those results are not commensurate with the
scope of claim 1 (Answer 5). Evidence of nonobviousness must be
commensurate in scope with the claims; i.e., it must provide “an adequate
basis to support the conclusion that other embodiments falling within the
claim will behave in the same manner” as the tested embodiment. See In re
Kao, 639 F.3d at 1068. Here, the assertedly unexpected results are limited to
a single combination of active agents, at a single ratio. Neither the
Specification nor the Feuillette Declaration provides evidence or reasoning
based on technical or scientific principles showing that one of skill in the art
would expect the same result with other combinations of metallic
nanoparticles and organosilicon compounds, or even the exemplified
combination at different ratios of active agents. Thus, even if the evidence in

3 The Examiner states that the Feuillette Declaration was not considered
because it was submitted after the Final Rejection (Answer 5) but nonetheless
goes on to address the Declaration. Since the Examiner addressed the
Declaration on the merits, we will consider it as well.
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the Feuillette Declaration is assumed to show unexpected results, it is not
commensurate in scope with claim 1.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
cited references would have made obvious the cosmetic composition of claim
1. Appellants have not provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness.
SUMMARY
We affirm the rejection of claims 1-11 and 13-15 under 35 U.S.C.
§103(a).
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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