Ex Parte Hofacker et al

Board of Patent Appeals and Interferences

Jul 6, 2011

11732576 (B.P.A.I. Jul. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEFFEN HOFACKER, THORSTEN RISCHE,
RAINER TRINKS, SEBASTIAN DORR, and WERNER LANGE
__________

Appeal 2011-002729
Application 11/732,576
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of applying an aqueous nail varnish to fingernails. The Patent
Examiner rejected the claims on the ground of obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
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Application 11/732,576

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STATEMENT OF THE CASE
Claims 11, 13, and 14, which are all the pending claims, are on
appeal. Claim 11 is representative and reads as follows:
11. A method comprising providing an aqueous nail varnish comprising
an aqueous dispersion of polyurethane-nitrocellulose particles having
an average particle size of 20 to 700 nm; and applying the aqueous
nail varnish to a substrate selected from the group consisting of
fingernails and toenails.

The Examiner rejected claims 11, 13, and 14 under 35 U.S.C. § 103(a)
as unpatentable over Nehra1 and Hoppe.2
Claims 13 and 14 have not been argued separately and therefore stand
or fall with claim 11. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
The Examiner found that Nehra described applying nitrocellulose
solutions to nails, but did not teach particles or polyurethane. (Ans. 4-5.)
According to the Examiner, Hoppe taught dispersions of nitrocellulose and
polyurethane polyacrylate particles in the size range 0.01 to 10 μm, and
Hoppe described an example preparation with 0.4 μm, i.e., 400 nm particle
size. (Id. at 5-6.) The Examiner found that:
[o]ne of ordinary skill in the art would have been motivated to
produce a nail varnish from the combined references because
the combined formulations of NEHRA and HOPPE would have
produced an improved nail varnish which would have greater
consumer appeal. The skilled artisan would have had a

1 Samuel A. Nehra, US Patent No. 5,670,141, Sept. 23, 1997.
2 Lutz Hoppe et al., US Patent No. 4,970,247, Nov. 13, 1990.
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reasonable expectation of success because both references teach
similar aqueous coating compositions. Furthermore, nail
varnishes which contain low or zero organic solvents, are
favorable in view of government regulations requiring
decreased organic solvent use as well as consumer perceptions
of the dangers of organic solvents. Furthermore, nitrocellulose
has been the preferred primary film former in nail varnish for
many years producing a tough, hard, flexible film with
excellent adhesion to the nail.

(Id. at 6.) Based on the findings, the Examiner “conclude[d] that the subject
matter defined by the instant claims would have been obvious.” (Id.)
Appellants contend that “Hoppe does not teach or suggest an aqueous
dispersion of polyurethane-nitrocellulose particles having an average particle
size of 20 to 700 nm.” (App. Br. 4, emphasis omitted.) First, according to
Appellants, “Hoppe is directed to cellulose ester particles which contain
polymerized acrylates resulting from monomers A & B.” (Id. at 5.)
Appellants note that Hoppe’s “[p]olymerized monomer B has at least two
polymerizable double bonds and can include polyurethane polyacrylates[]
(See, Hoppe, col. 3, lines 32-37)” (id.), but do not agree that Hoppe’s
particles of polyurethane polyacrylate and nitrocellulose would be
polyurethane-nitrocellulose particles as claimed. Second, Appellants
contend that “there is no reason set forth by the Examiner why one of
ordinary skill in the art would have any reasonable expectation of
successfully achieving the claimed particle size parameters from the
teachings of Hoppe.” (Id. at 6.)

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The issues with respect to this rejection are:
are Hoppe’s polyurethane polyacrylate-nitrocellulose particles
reasonably considered to be polyurethane-nitrocellulose particles as claimed;
and
did Hoppe suggest particle sizes in the range 20 to 700 nm?

Findings of Fact
1. Appellants’ Specification described materials to be used for making
the claimed particles including:
Polymeric polyols of this kind are polyurethane coating
technology’s conventional polyester polyols, polyacrylate polyols,
polyurethane polyols, polycarbonate polyols, polyether polyols,
polyesterpolyacrylate polyols, polyurethanepolyacrylate polyols,
polyurethanepolyester polyols, polyurethanepolyether polyols,
polyurethanepolycarbonate polyols, polyesterpolycarbonate
polyols and phenol/formaldehyde resins. They can be used
in A2) individually or in any desired mixtures with one another.

(Spec. 7, ll. 10-16, emphasis added.)
2. Hoppe taught: “[t]he average particle diameter is preferably in the
range of from 0.01 to 10 μm, most preferably from 0.05 to 4 μm.”
(Hoppe, col. 9, ll. 4-6.)
3. The particles in Hoppe’s dispersion “Example 2” had an average
particle diameter of 0.4 μm. (Id. at col. 9, l. 43.)

Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).
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Analysis
The first issue presented concerns the proper interpretation for the
claim term “polyurethane-nitrocellulose particles.” Appellants contend that
the term does not cover particles of Hoppe’s polyurethane polyacrylate and
nitrocellulose. Appellants’ Specification indicates that
polyurethanepolyacrylate polyols are starting materials from which
Appellants’ particles can be made. (FF1.) We interpret the claims to
include particles made with polyurethanepolyacrylate polyols as one of the
starting materials. We therefore are not persuaded that Appellants’ claims
do not include particles such as Hoppe’s polyurethane polyacrylate and
nitrocellulose particles. Although Appellants contend that the particles of
claim 11 are “structurally different” (Reply Br. 2), Appellants point to no
record evidence of a structural difference, and the record evidence is that
they are made from the same materials. That is, Appellants contend that
“incorporation of a polyurethane polyacrylate in a dispersion with a
cellulose ester is not the same as Appellants polyurethane-nitrocellulose
particles” (Reply Br. 4), but Appellants’ Specification teaches using
polyurethanepolyacrylate to make the claimed particles (FF1).
The second issue presented is whether Hoppe suggested particle sizes
in the range 20 to 700 nm. The evidence supports the Examiner’s finding
that Hoppe taught particle sizes in the range 0.01 to 10 μm (i.e., 10 to 10,000
nm) (FF2) and that Hoppe described a working example of a dispersion with
particles having a 0.4 μm (i.e., 400 nm) diameter (FF3.) Hoppe also taught
that a preferable range was from 0.05 to 4 μm (i.e., 50 to 4000 μm).
Although Appellants contend that a person of ordinary skill in the art would
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not have had “any reasonable expectation of successfully achieving the
claimed particle size parameters from the teachings of Hoppe” (App. Br. 6),
the evidence of Hoppe’s working 0.4 μm example in about the middle of
Appellants’ range (i.e. 400 nm) supports the opposite conclusion.
SUMMARY
We affirm the rejection of claims 11, 13, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Nehra and Hoppe et al.

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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