Ex Parte ILEKTI et al

Patent Trial and Appeal Board

Sep 17, 2018

12164181 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/164,181 06/30/2008 Philippe ILEKTI
22850 7590 09/19/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
328440USO 9937
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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 PHILIPPE ILEKTI and LAURE LE CHAUX
Appeal2016-008403
Application 12/164,181 1
Technology Center 1600
Before TA WEN CHANG, TIMOTHY G. MAJORS, 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 a solid
composition comprising at least one fatty phase comprising at least one
indene hydrocarbon-based resin and at least one silicone polyamide, which
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"It is common to find a structured, i.e.[,] gelled and/or rigidified,
liquid phase ... in solid compositions." (Spec. 2.) The "structuring is
conventionally obtained with the aid of waxes or fillers or, more recently,
using specific gelling agents." (Id.) Known specific gelling agents for use
1 Appellants identify the Real Party in Interest as L'Oreal. (Appeal Br. 2.)
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in solid compositions include "a silicone polymer of polysiloxane/polyamide
type" which can be used in a silicone oily phase resulting in a solid
composition that has relatively low rigidity and high elasticity. (Id.) The
texture of such a solid composition "does not correspond either to that of a
conventional stick endowed with relatively high rigidity, or to that of a
standard gel whose consistency is liquid or pasty." (Id.) The invention is
directed at a solid composition that combines at least one silicone polyamide
with a mean degree of polymerization greater than or equal to 50 and
representing at least 10% of the total weight of the composition and at least
one indene hydrocarbon-based tackifying resin that has a number-average
molecular weight of less than or equal to 10,000 g/mol. (Id. at 3; claim 1.)
Such compositions provide a solid composition that avoids becoming
fractured during use and shows "improved resistance on application." (Id. at
3.)
Claims 1-9, 11-12, and 17-24 are on appeal. 2 Claim 1 is
representative and reads as follows:
1. A solid composition comprising, in a physiologically
acceptable medium, at least one fatty phase comprising:
- at least one indene hydrocarbon-based resin derived
from the polymerization of an indene monomer and of a
monomer chosen from styrene, methylindene and
methylstyrene, and mixtures thereof, the at least one indene
hydrocarbon-based resin has a number-average molecular
weight of less than or equal to 10 000 g/mol, and
- at least one silicone polyamide,
2 Claim 25 is also pending, but stands withdrawn from consideration.
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the silicone polyamide comprising at least one silicone portion
with a mean degree of polymerization of greater than or equal
to 50 and representing at least 10% of the total weight of the
composition.
(Appeal Br. 12.)
The following grounds of rejection by the Examiner are before us on
review:
Claim 12 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter.
Claims 1-9, 11, 12, and 17-24 under 35 U.S.C. § 103 as unpatentable
over Blin3 and Yu. 4 (Ans. 3.)
DISCUSSION
Indefiniteness
The Examiner finds that there is insufficient antecedent basis for the
limitation "the indene resin" recited in claim 12 in base claim 1. (Ans. 3.)
The Examiner notes that claim 1 recites instead an "indene hydrocarbon-
based resin." (Id.)
Appellants do not contest the Examiner's rejection. (Reply Br. 12.)
Accordingly, we summarily affirm the Examiner's indefiniteness rejection.
See Manual of Patenting Examining Procedure§ 1205.02 (9th Ed., Rev.
08.2017 (Jan. 2018)) ("If a ground of rejection stated by the examiner is not
addressed in the appellant's brief, appellant has waived any challenge to that
3 Blin et al., US 2005/0287105 Al, published Dec. 29, 2005.
4 Yu, US 2006/0013839 Al, published Jan. 19, 2006.
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ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner's answer.").
Obviousness
The Examiner finds that Blin teaches a solid lipstick composition that
includes at least one polyamide/polydimethylsiloxane of general formula I5
that has a degree of polymerization of 100 (DC 2-8179, which is a Nylon-
611/dimethicone copolymer) in an amount of 25% by weight. (Ans. 4
(referring to Blin Example 1 ).) The Examiner further finds that Blin also
teaches a solid lipstick composition in which two different
polyamide/polydimethylsiloxane compounds are included, one with a degree
of polymerization of 100 (DC 2-8179) and the other with a degree of
polymerization of 15. (Ans. 5 (referring to Blin Example 2).) The Examiner
acknowledges that these lipstick compositions do not include an indene
hydrocarbon-based resin, which is an indene/methylstyrene/-styrene
copolymer as claimed, although Blin does teach inclusion of non-silicone
organic copolymers in the solid compositions. (Ans. 7.) However, the
Examiner finds that it would have been obvious to one having ordinary skill
in the art to add an indene hydrocarbon-based resin, which is an
5 Blin general formula I is
U)
(B lin if 14.)
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indene/methylstyrene/-styrene copolymer as claimed to the lipstick
compositions of Blin in light of the teachings of Yu. (Ans. 7, 11.)
The Examiner explains that Yu teaches solid lipstick compositions
and that the compositions can include a shine enhancing polymer to increase
shine or mitigate shine reduction while promoting adherence of solid
cosmetic compositions to the skin. (Ans. 7 (citing Yu Example 2 and ,r 5).)
The Examiner further notes that a preferred shine enhancing polymer for use
in a lipstick is a hydrogenated styrene/methylstyrene/indene copolymer, and
that this compound can be included at 5.0%. (Ans. 7-8 (referring to
Example 4), 11.) The Examiner explains that Yu teaches inclusion of
additional film formers to improve the solid composition's smoothness,
spreadability, water-resistance or transfer resistance properties. (Ans. 8
(citing Yu ,r 34).)
The Examiner contends that it would have been prima facie obvious
to one having ordinary skill in the art to have included 5% of a hydrogenated
styrene/methylstyrene/indene copolymer as taught by Yu in the lipstick
composition of Blin to enhance the shine of the Blin lipstick. (Ans. 8.) The
Examiner further finds that one of ordinary skill in the art would have had a
reasonable expectation of success in including that compound in Blin in light
of Blin's teaching that its solid compositions may comprise any ingredient
used in the field. (Ans. 11-12 (citing Blin ,r 426).)
The Examiner acknowledges Appellants' submission of the
Declaration of Frederic Auguste filed September 27, 2010 ("Auguste
Declaration"), but determined that the declaration evidence was "insufficient
to overcome the rejection." (Id. at 12.) In particular, the Examiner contends
that the Auguste Declaration (1) was not commensurate in scope with the
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claims because it only includes a single species of indene hydrocarbon based
resin and silicone polyamide (id. at 13); (2) was conclusory because it "does
not explain which parameters/measurements are the basis for the" asserted
improvements (id. at 13-14); (3) presented no nexus between the testing
results and the claimed invention (id. at 14); (4) was not "on point with" the
claimed limitations, which do not "recite parameters pertaining to elasticity,
hardness, withstanding shock, or not breaking up during application" (id.);
and (5) provided facts that were "not germane to the rejection" because the
comparative composition was missing one of the ingredients found in the
prior art composition that forms the basis of the Examiner's rejection (id. at
12, 14--15).
Appellants contend that the Examiner's rejection is in error because
the Examiner did not reasonably establish that one of ordinary skill in the art
would have expected that Yu's hydrogenated styrene/methylstyrene/indene
copolymer would be compatible with Blin's hybrid copolymers or that in
modifying Blin with Yu's hydrogenated styrene/methylstyrene/indene
copolymer that "the necessary properties of Blin's composition[, e.g., a
'cosmetic composition with a novel solid texture, i.e.[,] a composition with
relatively low rigidity and high elasticity,'] would be reasonably expected to
have been retained." (Reply Br. 3; Appeal Br. 6.)
Appellants next contend that the Examiner's rejection of the evidence
of secondary considerations is in error. Appellants explain that the
comparative evidence compares
(a) (in the specification) a composition without indene to one with
indene, which demonstrated the composition that includes indene improves
the hardness without affecting the elasticity; and
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(b) (in the Auguste Declaration) a composition with a silicone
polyamide having a degree of polymerization of greater than 50 to one with
a silicone polyamide having a degree of polymerization of less than 50,
which comparison demonstrated the composition that includes a silicone
polyamide having a degree of polymerization of greater than 50 was solid
with an elastic texture whereas the comparative composition "was pasty and
not solidified." (Reply Br. 4--5.) According to Appellants, the foregoing
supports the Specification's indication that
the inventors found, unexpectedly, that by combining certain
silicone polyamides having a degree of polymerization of at
least 50 with a tackifying resin, such as the Regalite Rl 100, the
composition not only shows improved transfer resistance but
improved its stability in that the composition has reduced
fracturing. See page 3 of the present application and the
Examples on pages 53-54.
(Reply Br. 5.)
We find that the Examiner has established a prima facie case of
obviousness. That Blin may describe a solid texture composition with
relatively low rigidity and high elasticity (Appeal Br. 6-7 (citing Blin ,r 5))
does not require the Examiner's obviousness rejection establish that the
proposed combination would have that same property. "In determining
whether obviousness is established by combining the teachings of the prior
art, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re GPAC Inc., 57 F.3d
1573, 1581 (Fed. Cir. 1995) (internal quotations omitted). "The use of
patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned. They are
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part of the literature of the art, relevant for all they contain." In re Lemelson,
397 F.2d 1006, 1009 (CCPA 1968).
As the Examiner explained, Blin teaches lipstick compositions that
include at least one silicone polyamide with a degree of polymerization
within the claimed range and within the claimed amount (Blin Examples 1
and 2) and indicates that the texturing copolymers are chosen in terms of
nature and amount to obtain the desired texture and hardness (id. ,r 55).
And, as the Examiner explains, Blin teaches that additional ingredients used
in the field under consideration can be added (id. ,r 426). In short, Blin
teaches that one of ordinary skill in the art could expect to be able to add
another lipstick ingredient in the exemplified lipstick solid compositions.
Moreover, Blin teaches the disclosed and exemplified silicone
polyamides are known gelling agents in lipstick compositions. (See, e.g.,
Blin ,r,r 3, 4). And, Blin teaches, using such a compound with a degree of
polymerization above 50 provides for a lipstick composition that is hard and
elastic. (Id. at Example 1 and 2.) Blin further teaches by exemplification
that combining a silicone polyamide within the claimed degree of
polymerization with other texturing copolymers changes the hardness but,
nevertheless, results in a solid composition having relative hardness with a
good degree of elasticity ( compare Example 2 (using 2 different silicone
polyamides only one of which is within the degree of polymerization
claimed) with Example 1 (using a single silicone polyamide ). In other
words, Blin teaches that it was known that the degree of polymerization of
the silicone polyamide can be adjusted to provide for a lipstick composition
with adequate hardness and good elasticity.
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Yu teaches that the claimed indene polymer was known to be a film
former that has shine-enhancing properties and could be used in lipstick
compositions and provide to that composition shine enhancing properties.
(Yu ,r,r 4, 8, 23, and Example 4.) Furthermore, Yu teaches that these shine
enhancing polymers can be used in cosmetic compositions that include
structuring agents and gelling agents, such as lipsticks. (Id. ,r,r 8, 10, 49.)
Yu also teaches that the shine enhancing indene can be used in a lipstick
composition to provide a composition that remains elastic and flexible on the
skin. (Id. ,r 65.)
We find that Blin's and Yu's teachings support the Examiner's reason
to combine Yu's indene polymer with Blin's silicone polyamides to result in
a solid lipstick composition that would have good shine, hardness, and
elasticity, with a reasonable expectation of success. Such teachings include,
inter alia: (a) Blin's teachings enumerated above concerning the known use
of the claimed silicone polyamides as gelling agents in lipstick compositions
that can also include other known compounds used in the lipstick field; and
(b) Yu's teaching that the claimed indene polymer was known to be used in
lipstick compositions and to provide shine enhancing properties that remain
elastic and flexible on the skin and that such a compound could be used in
combination with a gelling agent. "Obviousness does not require absolute
predictability of success .... For obviousness under§ 103, all that is
required is a reasonable expectation of success." In re O 'Farrell, 853 F.2d
894, 903---04 (Fed. Cir. 1988).
The question that remains is whether the comparative results provided
in the Specification and the Auguste Declaration establish unexpected results
that are commensurate in scope with the claimed invention. While we
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disagree with parts of the Examiner's reasoning on discounting the testing
results, we, nevertheless, find the evidence when considered along with the
teaching of the prior art is insufficient to establish non-obviousness.
Contrary to the Examiner's position, we do not find the evidence
"conclusory" or not on point or lacking nexus. However, we do not agree
with Appellants that the testing demonstrates unexpected results in light of
the teachings of the prior art. First, we do not find that the testing provides a
comparison of the claimed invention to the closest prior art. In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.").
Blin Example 1 provides a composition that includes a silicone
polyamide with a degree of polymerization of 100, present in an amount of
25% as does Blin Example 2, which also includes an additional silicone
polyamide with a degree of polymerization of 15 in an amount 1.2% of the
composition. (Blin Example 1 and 2.) The comparative composition that
was tested in Appellants' Specification was one that included silicone
polyamides noted to have a degree of polymerization ">50" and used in an
amount of 22.50% of the composition and a degree of polymerization"< 50"
used in an amount 1.08%. (Spec. 53-54.) Blin indicates that varying the
nature and amount of texturing copolymers could change the desired texture,
hardness, and stability. (Blin ,r 55.) Given this teaching of Blin and that the
amounts of texturing copolymer are different in the comparative example in
the Specification than that in Blin Example 2 and it is not clear that the
silicone polyamide with a degree of polymerization less than 50 was the
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same as in Example 2 of Blin, Appellants' data does not establish a
comparison to the closest prior art.
The Auguste Declaration testing compares an indene containing
composition that includes a silicone polyamide noted to have a degree of
polymerization ">50" and used in an amount of 23.58% of the composition
against an indene containing composition that includes a silicone polyamide
noted to have a degree of polymerization"< 50" used in an amount 23.58%.
(Spec. 53-54.) The demonstration shows the composition that did not
include a silicone polyamide within the degree of polymerization claimed
did not have acceptable hardness. However, Blin teaches that including a
silicone polyamide polymer with a degree of polymerization greater than 50
results in a solid composition and that one can add other polymers to such a
composition without greatly affecting the elasticity and still achieve desired
hardness. Consequently, Appellants' testing considered as a whole does not
establish by a preponderance of the evidence unexpected improved hardness
over the prior art by the use of a silicone polyamide with a degree of
polymerization greater than 50 in combination with an indene polymer as
claimed.
Furthermore, Yu teaches that shine enhancing film-forming polymers
such as the claimed indene polymer can be used in a broad range of
applications (including those that have gelling agents (Yu ,r 8)) and the film
may have very good retention and be elastic. (Yu ,r,r 62-65.) The
Specification testing that demonstrates the addition of the claimed indene
polymer to a composition that contains a silicone polyamide gelling agent
with a degree of polymerization greater than 50 results in a composition that
has good elasticity is also not unexpected in light of Yu's teachings that the
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indene can be combined with gelling agents and maintain elasticity and
Blin's teaching that a silicone polyamide gelling agent with a degree of
polymerization greater than 50 results in a composition with good hardness.
We also find that Appellants' testing of one silicone polyamide within
the claimed polymerization and one indene within the scope of the claims
does not establish a "trend from which one of ordinary skill in the art could
conclude that the evidence is commensurate in scope with claimed subject
matter" (Reply Br. 5). In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("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."). Appellants' testing does not provide a sufficient basis to conclude
that other embodiments falling within the claim will behave in the same
manner.
In light of the foregoing, we affirm the Examiner's rejection of claim
1 as being obvious over Blin and Yu.
Appellants purport to argue claims 12, 17, and 18 separately. (Appeal
Br. 10-11.) The argument is that those claims "define narrower
embodiments for each of the components required in Claim 1 that further
defines subject matter that is unquestionably commensurate in scope with
the evidence of record." (Id.) Separately arguing a claim requires more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the subject matter is "commensurate in
scope with the evidence of record." See, e.g., In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011). We find, therefore, that Appellants have not
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separately argued claims 12, 17, and 18. Accordingly, those claims fall with
claim 1.
Claims 2-9, 11, 19, 20, and 21-24 have not been argued separately
and, therefore, fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claim 12 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter.
We affirm the rejection of claims 1-9, 11, 12, and 17-24 under 35
U.S.C. § 103 as unpatentable over Blin and Yu.
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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