Ex Parte Hilliard et alDownload PDFPatent Trial and Appeal BoardSep 21, 201613518963 (P.T.A.B. Sep. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/518,963 06/25/2012 23909 7590 09/23/2016 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Peter R. Hilliard JR. 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. 8940-00-PC 7952 EXAMINER STEVENS, MARK V ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER R. HILLARD and STACEY KAPLAN 1 Appeal2015-001470 Application 13/518,963 Technology Center 1600 Before ERIC B. GRIMES, RICHARD J. SMITH, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. NEWMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a particle- oriented composition for forming a liquid gel, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Background The Specification discloses: "[t]he present invention relates to compositions, and in particular to multi-phase compositions comprising 1 Appellants identify the Real Party in Interest as Colgate-Palmolive Company. App. Br. 2. Appeal2015-001470 Application 13/518,963 visually distinguishable patterns formed from particles dispersed, oriented, and suspended in at least one of the phases." Spec. i-f 2. "'Aspect ratio', as it is used herein, denotes the ratio of the average major axis (x axis) of particles to the average thickness of the particles (z axis)." Id. i-f 21. "At least one visually distinguishable composition of the personal care compositions of the present invention comprises particles having an aspect ratio greater than 1.5: 1, which means that the particles have a dimension in [their] cross-sectional area that is greater than the thickness of the particle." Id. i-fl8. In certain embodiments, at least 50% of the particles have their x-y planes parallel or coincident to the x-y planes of the other particles. This means that the planes either do not intersect or they would be in the same plane. In another embodiment, the x-y planes are substantially parallel to each other in which the x-y planes are in the same plane or do not intersect when the planes are extended to the walls of the container that the composition is in. i~\~t some point, the planes could intersect, but they do not intersect in the limited space of the container. Id. i-f 20. The Claims Claims 1, 4--9, 24, and 25 are on appeal. Claim 1, the sole independent claim, illustrates the appealed subject matter and reads as follows: 1. A particle oriented composition comprising visible particles having an aspect ratio greater than 1.5: 1 and a particle size of 50µm to 5000µm in a longest dimension, wherein at least 50% of the visible particles have their x-y planes substantially parallel, parallel, or coincident to x-y planes of the other visible particles, and wherein the 2 Appeal2015-001470 Application 13/518,963 composition includes a structural material for forming a liquid gel composition, wherein the composition is a liquid gel. App. Br. Claims Appendix, p. 1. The Issues The Examiner rejected claims 1, 4---6, 8, 9, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Bujard2 (Ans. 4--5) and claims 1, 4--9, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Bujard and Brown3 (Ans. 5-6). The issue presented is: Does a preponderance of the evidence of record support the Examiner's conclusion that Bujard suggests the composition of claim 1? Findings of Fact 1. Bujard teaches: ... platelet-shaped pigments comprising (a) a layer obtained by calcination of a layer comprising Si Oz wherein 0.03 :S z :S 2.0 and a metal, to a process for the production thereof, and to the use thereof in paints, textiles, ink-jet printing, cosmetics, coating compositions, plastics, printing inks and in glazes for ceramics and glass. The afore-mentioned process makes available platelet-shaped pigments having a high degree of plane parallelism. Bujard i-f 1. 2. Bujard teaches: The particles of the platelet-shaped pigments generally have a length of from 2 µm to 5 mm, a width of from 2 µm to 2 mm and a thickness of from 20 nm to 1.5 µm and a ratio of length to 2 US 2006/0048676 Al, published Mar. 9, 2006. 3 US 2006/0193921 Al, published Aug. 31, 2006. 3 Appeal2015-001470 Application 13/518,963 thickness of at least 2: 1, preferably at least 6. 5: 1, especially from 50: 1 to 500: 1. The particles have two substantially parallel faces, the distance between which is the shortest axis of the core. Bujard, i-f 9. 3. Bujard teaches "[i]t is presently preferred that the diameter of the flakes be in a preferred range of about 1-60 µm with a more preferred range of about 5-40 µm. Thus, the aspect ratio of the flakes of the present invention is in a preferred range of about 14 to 400." Id. 4. Bujard teaches "[t[he platelet-shaped Al/SiOz particles may be used, for example, as substrates for effect pigments." Id. at i-f 131. 5. Bujard teaches "cosmetic preparations or formulations [], for example, lipsticks, blushers, foundations, nail varnishes and hair shampoos" (Id. at i-f l 51) "in the form of, for example, sticks, ointments, creams, emulsions, suspensions, dispersions, powders or solutions. They are, for example, lipsticks, mascara preparations, blushers, eye-shadows, foundations, eyeliners, pov,rder or nail varnishes." Id. at i-f 155. 6. Bujard teaches that the "cosmetic preparations and formulations according to the invention [can be] in the form of semi-solid products, that is to say in the form of ointments or creams" (Id. at i-f 176) and "[ s ]uch ointments and creams may also comprise further conventional additives, such as, for example ... gel-forming agents." Id. at i-f 178. 7. Bujard teaches: The cosmetic preparations and formulations according to the invention may also be used for colouring the hair, in which case they are used in the form of shampoos, creams or gels that are composed of the base substances conventionally employed in the cosmetics industry and a pigment according to the invention. Id. at i-f 183. 4 Appeal2015-001470 Application 13/518,963 Principles of Law "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "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 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417. Analysis We adopt the Examiner's fact finding and reasoning regarding the scope and content of the prior art (Ans. 4--6; FF 1-7) and agree that claim 1 is rendered obvious by Bujard. We address Appellants' arguments below. Appellants advance no separate argument with regard to the rejection of claims 1, 4--9, 24, and 25 under 35 U.S.C. 103(a) as being unpatentable over Bujard and Brown, but instead rely on their argument regarding the rejection of claims 1, 4--6, 8, 9, 24, and 25 over Bujard (Ans. 5---6). Accordingly, we address these rejections together and find it necessary to consider only Bujard. Appellants argue that while the "claimed composition has a structure with the specified orientation of the particles in the composition such that at least 50% of the visible particles have their x-y planes substantially parallel, parallel, or coincident to x-y planes of the other visible particles," the 5 Appeal2015-001470 Application 13/518,963 structure of Bujard "is a random orientation of the particles" and the "particles are not aligned as in claim 1." App. Br. 2. Appellants argue that Bujard "discloses general mixing and dispersing of the pigments" that will "result in random orientation of the particles in the composition." Id. Appellants further argue Bujard "does not provide any enabling disclosure to suggest that the composition is formed such that at least 50% of the visible particles have their x-y planes substantially parallel, parallel, or coincident to x-y planes of the other visible particles." Id. Instead, Appellants contend Bujard "does not disclose or suggest the structure of the particles in the claimed composition having the defined orientation" and contains "nothing that enables the modification of random mixing to form the claimed composition." Id. According to Appellants, without "instruction of how to orient the particles with respect to each other," one of ordinary skill in the art is left without guidance in making the claimed composition. Id. 2-3. We are not persuaded that Bujard's lack of a disclosed structure or instruction of how to orient the particles with respect to each other fails to enable its teachings as argued by Appellants. Id. Bujard teaches compositions having a high degree of plane parallelism (FF 1) that are composed of platelet-shaped pigment particles having two substantially parallel faces (FF 2). Bujard teaches that visible pigment particles (FF 4) in the compositions have the size and aspect ratios (FF 2) of the ranges specified in claim 1. Bujard further teaches that the compositions can be made as liquid gel formulations by using structural materials for forming the gel (FF 5---6). These teachings are substantially identical to the composition of Appellants' claim 1. "Where ... the claimed and prior art products are identical or substantially identical, or are produced by identical or 6 Appeal2015-001470 Application 13/518,963 substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. ... [The] fairness [of the burden- shifting] is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255 ( CCP A 1977). Appellants have not compared the claimed product to Bujard's, nor have they provided any other evidence to suggest that the disclosure of Bujard is nonenabling or that their composition is somehow superior. Without evidence, Appellants' argument is attorney argument alone and is unpersuasive. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). We are further unpersuaded by Appellants' argument that Bujard provides no enabling guidance. "Obviousness does not require absolute predictability of success .... For obviousness under§ 103, all that is required is a reasonable expectation of success." In re 0 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988). Appellants have adduced no evidence in support of this argument. In contrast to Appellants' argument, the Specification states that "[ t ]he compositions of the present invention may be prepared by any known or otherwise effective technique, suitable for making and formulating the desired multi-phase product form." Spec. i-f 44. Accordingly, we are not persuaded that the Examiner erred in concluding that one of ordinary skill in the art, upon learning the disclosures of Bujard, would be capable of making the claimed composition. Conclusion of Law The preponderance of evidence of record supports the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Bujard. 7 Appeal2015-001470 Application 13/518,963 Claims 4---6, 8, 9, 24, and 25 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). As discussed above, Appellants have waived arguments directed to Brown. We therefore also affirm the rejection of claims 1, 4--9, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Bujard and Brown. See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("In the event of such a waiver, the PTO may affirm the rejection of the group of claims that the examiner rejected on that ground without considering the merits of those rejections."). SUMMARY We affirm the rejection of claims 1, 4--6, 8, 9, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Bujard and claims 1, 4--9, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Bujard and Brown. 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 Copy with citationCopy as parenthetical citation