Ex Parte Kermorvan et al

Patent Trial and Appeal Board

Sep 30, 2016

13518261 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/518,261 09/04/2012
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
10/04/2016
FIRST NAMED INVENTOR
Cecile Kermorvan
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.
16403-00277-US 5312
EXAMINER
LAZARO, DOMINIC
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CECILE KERMORVAN and MAGALI SZESTAK1
Appeal2015-002296
Application 13/518,261
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and RICHARD J. SMITH,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1Appellants state the real party-in-interest is L'OREAL. App. Br. 2.
Appeal2015-002296
Application 13/518,261
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20 as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Malik (WO 2004/058151
A2, July 15, 2004) ("Malik"), Douin et al. (US 2002/0098215 Al, July 25,
2002) ("Douin"), Midha et al. (US 2006/0078524 Al, April 13, 2006)
("Midha"), and Legrand et al. (US 6,919,073 B2, July 19, 2005) ("Legrand")
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a cosmetic composition
comprising, in a physiologically acceptable aqueous medium, a jasmonic
acid compound and a non-ionic associative polyurethane/polyether polymer,
used for caring for and making up keratin materials. Abstract.
REPRESENTATIVE CLAIM
Appellants argue all of the claims together. App. Br. 6. Claim 1 is
representative of the claims on appeal. Id. 3. Claim 1 recites:
1. Composition comprising, in a physiologically
acceptable aqueous medium, a compound of following formula
(I):
in which:
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Application 13/518,261
Ri represents a COQR3 radical, R3 denoting a hydrogen
atom or a C1-C4 alkyl radical, optionally substituted by one or
more hydroxyl groups;
R2 represents a saturated or unsaturated and linear
hydrocarbon radical containing from 1 to 18 carbon atoms or a
saturated or unsaturated and branched or cyclic hydrocarbon
radical containing from 3 to 18 carbon atoms;
and also the optical isomers thereof, and the corresponding
salts;
and a non-10mc associative polyurethane/polyether
polymer.
App. Br. 17.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are obvious over the cited prior art references. We
address the arguments raised by Appellants on appeal below.
Issue 1
Appellants argue that the Examiner erred because there is no
articulated reason or motivation for a person of ordinary skill in the art to
combine the cited prior art references. App. Br. 10.
Analysis
Appellants argue that Malik fails to teach or suggest the required non-
ionic associative polyurethane/polyether polymer recited in claim 1, nor is it
directed to the problems addressed by the Appellants' invention caused by
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introducing jasmonic acid compounds into aqueous cosmetic compositions,
but is directed rather to compositions that contain a jasmonic acid
compound, a gibberellic acid compound and/or a zeatin compound. App.
Br. 7-8. According to Appellants, Malik also teaches the possibility of
including a thickening agent, together with a large number of other types of
"additional ingredients." Id. at 8 (citing Malik 6, 11. 3-26; 26-42; see also
Malik 42--45 for list of potential thickening agents).
Appellants assert that Douin neither teaches nor suggests that the
problem addressed by the Appellants' claimed invention would be solved by
employing the non-ionic associative polyurethane/polyether polymers taught
by Douin. App. Br. 9. According to Appellants, a person of ordinary skill
in the art would not look to either Malik or Douin, because the results
achieved by Appellants' claimed invention are not reasonably predictable or
expected from the cited art. App. Br. 9-10. Furthermore, Appellants argue,
Malik does not teach any problems with the disclosed thickening agents, and
Douin is directed to providing oil-in-water nanoemulsions, which Malik
neither teaches nor suggests. Id. at 10.
Appellants next argue Midha teaches "Aculyn 46" as a thickening
agent, together with a long and diverse list of other potential thickening
agents. App. Br. 10 (citing Midha i-f 60). According to Appellants, nothing
in Midha suggests that "Aculyn 46" should be selected from among the large
list of thickeners disclosed to address problems to which the present
invention is concerned. Id. This is especially so, argue Appellants, because
"Aculyn 46" is not employed in any of Midha's examples. Id.
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Appellants next argue that Legrand does not cure the alleged
deficiencies of Malik, Douin, and Midha, because it is not directed to the
problems addressed by Appellants' invention. App. Br. 11.
Therefore, Appellants argue, to arrive at the present invention, a
person of ordinary skill would need to decide to add a thickening agent as an
"additional ingredient," as taught in the compositions of Malik, from among
the approximately 20 pages of suggested "additional ingredients,"
notwithstanding the fact that not a single example actually teaches a
thickening agent. App. Br. 13 (citing Malik 16-45(emphasis omitted)).
Appellants assert that one of ordinary skill would then need to decide to
disregard the numerous thickeners taught by Malik, without any teaching or
suggestion in the art to do so. Id. After that, Appellants assert one of
ordinary skill would need to review the voluminous body of art directed to
thickening agents for cosmetics and select a non-ionic associative
polyurethane/polyether polymer from the compounds taught by Douin.
This, Appellants argue, even though no reasonable expectation of success is
suggested in the art that the combination would achieve the results obtained
by the Appellants' invention. Id.
The Examiner responds that a person of ordinary skill in the art would
have been motivated to prepare a composition, as taught by Malik,
containing jasmonic acid compounds, in the form of an emulsion, and with a
suitable thickener. Ans. 9 (citing Malik 19-21, 42--43, 46; see also Douin i-f
1 ). The Examiner finds a person of ordinary skill would have been
motivated to tum to the teachings of Douin for "Aculyn 46" as a suitable
thickener for cosmetic compositions (Douin i-f 8), to obtain the advantage of
promoting the penetration of active agents (e.g., jasmonic acid compounds)
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Application 13/518,261
into the superficial layers of the skin and the deposition of active agent onto
keratin fibers, while simultaneously avoiding a greasy look or feel. Id.
(citing Douin i-fi-18, 13, 30). The Examiner finds combining the teachings of
Douin with those of Malik in this respect, is consistent with the purpose of
Malik in preparing a skin renewal composition. Id. (See Malik Abstr.). The
Examiner therefore finds that the beneficial properties and purportedly
unexpected results argued by Appellants would be reasonably expected by a
person of ordinary skill in the art. Id.
The Examiner cites Midha as teaching water-in-oil emulsions that
may comprise thickeners such as "Aculyn 46," because Malik is silent as to
a specific emulsion type and to the extent that Douin does not expressly
teach a water-in-oil emulsion. Ans. 14 (citing Midha i160; Malik 46).
Finally, with respect to the teachings of Legrand, the Examiner
explains that Legrand is cited only for the purpose of demonstrating that
"SER-AD FXl 100," which is taught by Douin (see Douin i131), is also
known in the art as "Steareth-100/PEG-136/HMDI copolymer" a "PEG-
136/Steareth-100/HDI copolymer," as recited in Appellants' claim 9. Ans.
14 (citing Legrand col. 5, 11. 43--47).
We are not persuaded by Appellants' arguments. As an initial matter,
with respect to Appellants' arguments that none of the individual references
teach Appellants' claimed invention, "one cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (C.C.P.A.
1981 ).
Furthermore, despite Appellants argument that the teachings of Malik
do not provide an example of the use of thickening agents, and that therefore
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the combination with the teachings of Douin concerning thickening agents
would not be obvious, in an obviousness analysis, "all disclosures of the
prior art, including unpreferred embodiments, must be considered." Merck
& Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir.
1989). Malik explicitly teaches the use of thickening agents, which were
well known in the art (see Malik 42--45), and the fact that Malik teaches no
example with a thickening agent does not, by itself, terminate our analysis.
We agree with the Examiner that a person of ordinary skill would be
motivated to combine the cited prior art references. Malik teaches
compositions containing jasmonic acid that are advantageous for the
treatment of damaged skin and also for rejuvenating skin. See Malik
Abstr. 1. Furthermore, Malik teaches, inter alia, that thickening agents may
be used in combination with the jasmonic acid composition; however, Malik
does not explicitly teach a "non-ionic associative polyurethane/polyether
polymer," as required by claim 1.
We further agree that Douin teaches liquid and oil nanoemulsions
used in combination with at least one nonionic polymer. Douin i-f 1. Douin
teaches that the combination of the fluid nanoemulsions with a nonionic
polymer thickener (which were well known in the art (see Douin i-f 6)) can
promote the penetration of active agents (such as jasmonic acid) into the
superficial layers of the skin. See Douin i-f 13. Moreover, Douin explicitly
teaches the claimed "non-ionic associative polyurethane/polyether polymer,"
recited in claim 1, is well known in the art as a suitable thickener for this
purpose. See Douin i-f 30. We consequently agree with the Examiner that a
person of ordinary skill would have been motivated to combine the teachings
of Malik and Douin to obtain the advantage of promoting the penetration of
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active agents (e.g., jasmonic acid compounds) into the superficial layers of
the skin and the deposition of active agent onto keratin fibers, while
simultaneously avoiding a greasy look or feel. See Ans. 9.
Furthermore, to the extent that Malik and Douin explicitly fail to teach
an oil-and-liquid emulsion thickened with the claimed polymer, we agree
with the Examiner's finding that Midha teaches this combination of
elements in paragraph [0060]. Ans. 14. Finally, we agree with the
Examiner that Legrand teaches that "SER-AD FXl 100," which is taught by
Douin as a thickening agent is the same nonionic polyurethane polyether as
"Steareth-100/PEG-136/HMDI copolymer," a "PEG-136/Steareth-100/HDI
copolymer," as recited in Appellants' dependent claim 9. Id.
Issue 2
Appellants next argue their claimed composition is not obvious over
the prior art because it demonstrates unexpected properties in that the
addition of a jasmonic acid compound to a composition comprising a non-
ionic associative polyurethane/polyether polymer did not significantly affect
the viscosity of the composition. App. Br. 7.
Analysis
Appellants contend that the improved and unexpected results
achievable by their claimed invention can be demonstrate by a comparison
of the results of Examples lB and 2B of Appellants' invention with
Examples 3B and 4B, which are outside the scope of the invention. App. Br.
8 (citing Spec. 10-11 ). Appellants assert that the Examples demonstrate that
only the gels comprising the non-ionic associative polyurethane/polyethers
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Rheolate FXI 100 and Aculyn 44, in the presence of the sodium salt of 3-
hydroxy-2-pentylcyclopentaneacetic acid do not exhibit a loss in viscosity.
Id. Appellants contrast these results with those of the gel comprising
Aristoflex SNC in the presence of the same active agent, which exhibits a
fall in viscosity of approximately 26%, and the gel comprising Sepigel 305
exhibits a fall in viscosity of approximately 50%. Id. Appellants point out
that Sepigel 305 is also one of the specific thickening agents explicitly
taught by Malik. Id. Therefore, Appellants assert, the presence of a non-
ionic associative polyurethane/polyether maintains the viscosity of the
aqueous gel in the presence of the sodium salt of 3-hydroxy-2-
pentylcyclopentane-acetic acid. Id.
The Examiner responds that Appellants' claims are not commensurate
in scope with the alleged unexpected results. Ans. 9. The Examiner states
that, whether the unexpected results are the result of unexpectedly improved
results or a property not taught by the prior art, the "objective evidence of
nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support." Ans. 9-10 (quoting MPEP § 716.02).
The Examiner finds the two embodiments disclosed in Examples 1
and 2 of Appellants' Specification, both of which show a small increase in
viscosity for inventive compositions containing the instant jasmonic acid
compound (Ex. IB, 1.57 Pa·s, Ex. 2B, 0.35 Pa·s) versus compositions
containing the respective instant non-ionic associative polyurethane/
polyether polymers, alone (Ex. IA, 1.11 Pa·s, Ex. 2A, 02 Pa·s). Ans. 10.
The Examiner finds the Examples disclose a 0.46 Pa·s increase in Example 1
and a 0.15 Pa·s increase in Ex. 2. Id. The Examiner finds the comparison
composition consisting of the claimed jasmonic acid compound at 30% in a
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Application 13/518,261
water/dipropylene glycol (70/30) mixture, and "Sepigel 305" shows a larger
increase in viscosity than the embodiment disclosed in the Specification. Id.
The Examiner therefore finds that, to the extent that the results
presented in Examples 1 and 2 of Applicants' Specification may be viewed
as evidence of an unexpected result over the closest prior art (i.e., Malik,)
the composition of independent claim 1 should also require the specific
concentrations and components as disclosed in Examples 1 and 2 in order
for the alleged unexpected results to be commensurate in scope with the
claims because the compositions to which the unexpected results are
attributed require these ingredients. Ans. 10-11.
We are not persuaded by Appellants' arguments that the results
disclosed in Examples 1--4 are probative of unexpected results. We agree
with the Examiner that the results are not commensurate with the scope of
the claim 1, because claim 1 does not recite concentrations of either
jasmonic acid or the non-ionic associative polyurethane/ polyether polymer
overlap the concentrations disclosed in Examples 1 and 2 of the
Specification. See claims 4, 16-20.
Furthermore, we are not persuaded that the results presented in
Examples 1--4 of the Specification are probative of unexpected results
sufficient to indicate that the claimed invention is nonobvious over the prior
art. The concentrations of the polymer component of Appellants' disclosed
compositions is 3% and 5% (i.e., Examples 1 and 2), whereas the
concentration of the polymer in the comparison compositions (Examples 3
and 4) are 2% and 3%. This asymmetry may introduce confounding factors
in comparing results.
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Nevertheless, we agree with the Appellants that the employment of
the nonionic polymers in the compositions of Examples 1 and 2 generally
demonstrate an increase in viscosity, whereas those employing a non-
polymeric thickening agent (Examples 3 and 4) exhibit a decrease in
viscosity. See Spec. 11. But we do not agree that those results are
necessarily unexpected when compared with the combined cited prior art.
Douin explicitly teaches:
As a non-restrictive explanation, it may be considered that,
in the context of the invention, the increase in the viscosity of the
medium may result from the formation of a network of oil
particles, said network involving combinations of hydrophobic
type between, on the one hand, the hydrophobic groups of the
polymer and, on the other hand, the hydrophobic cores of the oil
particles. The existence of labile bonds between the particles
may be responsible in part for increasing the viscosity of the
mixture.
Douin i-f 12 (emphasis added). Consequently, we find that a person of
ordinary skill in the art would understand from the teachings of Douin that
the combination of a nonionic polymer with a jasmonic acid-based liquid
and oil nanoemulsion would be likely to increase the viscosity of the
composition rather than decrease it, as is demonstrated by Examples 1 and 2.
We consequently find Appellants' argument not persuasive.
Issue 3
Finally, Appellants argue the Examiner erred by impermissibly
employing hindsight analysis. App. Br. 15.
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Application 13/518,261
Analysis
Appellants contend the rejection of the claims is predicated on
improper hindsight. App. Br. 15. Appellants assert it is impermissible
under Section 103 to use hindsight reconstruction to pick and choose among
isolated disclosures in the prior art to deprecate the claimed invention. Id.
Also, it is well settled that hindsight reconstruction, as Appellants allege the
Examiner has done in the present case, using the patent application as a
guide through the maze of prior art references, and combining "the right
references in the right way" so as to achieve the result of the claimed
invention must be avoided. Id. (citing Jones v. Hardy, 727 F.2d 1524, 1530-
31 (Fed. Cir. 1984)).
We are not persuaded. Although Malik recites a number of categories
of thickening agents, Douin teaches the claimed thickening agents as not
only one of a reasonably-sized group of nonionic polymers, moreover,
nonionic polymers that are well known in the art as being commercially
available. See Douin i-f 30. Moreover, Douin explicitly teaches the
advantages of using nanoemulsions and nonionic polymeric thickening
agents. See Douin i-fi-1 6-8, 13.
We find that the Examiner has articulated a reasonable rationale and
motivation for combining the cited prior art references and has not merely
"picked and chosen" the cited prior art to arrive at Appellants' claimed
invention. Nor has Appellant pointed to any finding of the Examiner that
would have either been outside the knowledge of a person of ordinary skill
in the art or which could only have been gleaned from Appellants'
Specification. See In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971).
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We consequently affirm the Examiner's rejection of claim 1.
Furthermore, because Appellants argue the claims together, claims 2-20 also
fall with claim 1.
DECISION
The Examiner's rejection of claims 1-20 as unpatentable as obvious
under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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