Ex Parte Kozacheck et al

Patent Trial and Appeal Board

Dec 23, 2016

12804253 (P.T.A.B. Dec. 23, 2016)

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.
12/804,253 07/16/2010 Joseph E. Kozacheck KEYS0004-CIP 8408
3705 7590 12/28/2016
ECKERT SEAMANS CHERIN & MELLOTT, LLC
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
BECKHARDT, LYNDSEY MARIE
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
ipmail @ eckertseamans. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH E. KOZACHECK and GEORGE M. LEIN1
Appeal 2014-005595
Application 12/804,253
Technology Center 1600
Before TAWEN CHANG, RACHEL H. TOWNSEND, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a nail
gel coating composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
“The use of radiation-curable gels in formation of nail enhancements
or artificial nails has been an important part of the cosmetic industry,” for
instance in sculpting nails. (Spec. Tflf 2—3.) The Specification states that
1 Appellants identify the Real Party in Interest as Mycone Dental Supply Inc.
Co. (Appeal Br. 2.)
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Application 12/804,253
“[p]resent color pigmented gel formulations are highly viscous and are not
as easy to apply as . . . nail polish”; however, “use of lower viscosity gels[]
leads to colored gel formulations having a limited shelf life due to pigment
settling and the formation of hard packs.” (Id. at 1 5.) According to the
Specification, “[therefore, there is an unmet need in the art for a low
viscosity UV curable nail gel coating with good control of flow when
applied to nails in combination with a homogeneous distribution of color
pigment that does not easily form hard packs upon storage.” (Id. at 1 6.)
Further according to the Specification, “shelf stable, pigment containing,
low viscosity UV curable nail gel coatings can be successfully prepared by
utilizing thixotropic additive(s) to prepare such gels.”2 (Id. at 115.) The
Specification also discloses another embodiment in which dispersants are
added “to improve . . . shelf life and . . . allow for resuspension of pigment.”
(Id.)
Claims 1, 2, 5, 6, 9-11, 14, 15, 18, 19, 22, 25, 31, 33, 34, 37-A2, 44,
47, 48, and 50-59 are on appeal. Claim 1 is the only independent claim on
appeal and is reproduced below:
Claim 1. A shelf stable, pigment containing, UV-curable, low
viscosity nail gel coating composition useful for adornment of natural
and artificial nails and artificial nail extensions comprising: a pigment
2 The Specification states that
[a] thixotropic additive is defined herein as an additive that when
mixed with a relatively low viscosity gel imparts shelf stability to the
pigmented gel. . . . The thixotropic additive preferably imparts shear
thinning properties such that. . . the gel is thick (viscous) under
normal storage conditions, but flows (becomes thin, less viscous)
when stressed such as applying the gel to nails.
(Spec. 125.)
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Appeal 2014-005595
Application 12/804,253
or mixture of pigments, reactive monomers selected from one or more
ethylenically unsaturated monomers, and one or more ethylenically
unsaturated oligomers, or mixtures thereof, a photoinitiator, and a
total of about 0.1 to 10 wt. % of one or more thixotropic additive, with
the gel having a high shear viscosity less than 30 poise.
(Appeal Br. 14 (Claims App’x).)
The Examiner rejects claims 1, 2, 5, 6, 9—11, 14, 15, 18, 19, 22, 25,
31, 33, 34, 37—42, 44, 47, 48, and 50—59 under 35 U.S.C. § 103(a) as being
unpatentable over Patel,3 Killilea,4 and Sirdesai.5 (Ans. 2.)
The Examiner rejects claims 25 under 35 U.S.C. § 103(a) as being
unpatentable over Patel, Killilea, Sirdesai, and Lilley.6 (Ans. 8).
The Examiner rejects claim 47 under 35 U.S.C. § 103(a) as being
unpatentable over Patel, Killilea, Sirdesai, and Cervino.7 (Ans. 7).
DISCUSSION
The Examiner has rejected claims 1, 2, 5, 6, 9—11, 14, 15, 18, 19, 22,
25, 31, 33, 34, 37-A2, 44, 47, 48, and 50-59 under 35 U.S.C. § 103(a) as
being unpatentable over Patel, Killilea, and Sirdesai. The Examiner has
further rejected claims 25 and 47 over the same references in combination
with Lilley and Cervino, respectively. The same issue is dispositive for all
rejections; thus, we discuss them together.
3 Patel et al., US Patent No. 6,051,242, issued Apr. 18, 2000.
4 Killilea et al., US 2005/0192400 Al, published Sep. 1, 2005.
5 Sirdesai et al., US Patent No. 6,244,274 Bl, issued Jun. 12, 2001.
6 Lilley, U.S. Patent No. 6,599,958 B2, issued Jul. 29, 2003.
7 Kim Cervino, Tech Notes, Magic Clay and Other Texturizing Ingredients,
http://www.zenitech.com/documents/new%20pdfs/articles/Magic%20Clay%
20and%200ther%20Texturizing%20Ingredients.pdf (last visited Dec. 16,
2016).
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Application 12/804,253
The Examiner finds that all the elements of claim 1 are disclosed by
Patel, except that Patel does not “ipsis verbis teach photo initiators” and “the
gel having a high shear viscosity less than 30 poise.” (Ans. 2—3, 5.) The
Examiner finds that Killilea is directed to
a composition comprising polymers with methacrylate functional
groups. The coating composition includes polymers which are
curable by UV or visible light. The coating composition typically
includes a free-radical initiator, particularly] a photo initiator that
induces the curing reaction upon exposure to light. The photo initiator
makes up about 0.1 to 10 wt% of the coating composition ....
(Id. at 5.) The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art to
substitute a first free radical source and a first thixotropic agent as
taught by [Patel] with a second free radical initiator, a photo initiator,
as taught by the [Killilea] and a second thixotropic agent, fumed
silica, as taught by [Sirdesai] with a reasonable expectation of success
because the simple substitution of one known element for another
would have yielded predictable results to one of ordinary skill in the
art at the time of the invention. . . .
One of ordinary skill in the art at the time the invention was
made would have a reasonable expectation of success in using the
photo initiator free radical source as taught by [Killilea] in the nail
composition comprising a free radical source taught by [Patel]
because [Patel] and [Killilea] both teach methacrylate functional
groups to be polymerized .... One of ordinary skill in the art at the
time the invention was made would have a reasonable expectation of
success as [Sirdesai] teaches thixotropic containing nail compositions
which are polymerized under actinic radiation . . . wherein the
compositions include photo initiators . . . and the polymers include
methacrylate polymers . . . , thus demonstrating the use of photo
initiators to crosslink acrylate polymers in nail compositions was
known at the time of the invention.
(Id. at 5—6.)
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Application 12/804,253
Appellants contend that the Steffier Declaration8 shows that “a
representative example of [Patel] did not cure when exposed to UV light,”
despite containing a compound listed as a photoinitiator in [Killilea].”
(Appeal Br. 10-11.) Appellants contend that the compound, benzophenone,
is not used in Patel as a photoinitiator but rather as an anti-yellowing agent.
{Id. at 12.) Appellants further argue that a skilled artisan “would not expect
the quick dry lacquer compositions [of Patel] to be useful for a low viscosity
UV curable nail gel, the presently claimed invention” and that a skilled
artisan would not start with the teachings of Patel when attempting to make a
low viscosity radiation curable nail gel. {Id. at 11—12.) Likewise,
Appellants contend that a skilled artisan would not look to Sirdesai when
attempting to make the claimed invention as Sirdesai is directed to “much
higher viscosity artificial nail sculpting compositions.” {Id. at 12—13.)
We find that the Examiner has not established a prima facie case of
obviousness as to claim 1. While the Examiner argues that it would have
been obvious to substitute the free radical source of Patel with Killilea’s
photoinitiators, which are also free radical sources (Ans. 5—6), the Examiner
fails to articulate a reason as to why a skilled artisan would have substituted
photo initiators for Patel’s free radical source or to include such
photoinitiators in an amount that renders the composition in Patel UV
curable as required by claim 1. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) {quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
8 Declaration of Larry Steffier under 37 C.F.R. §1.132 (Mar. 20, 2013)
(“Steffier Declaration”).
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Application 12/804,253
with some rational underpinning to support the legal conclusion of
obviousness.”).
The Examiner contends that “[a] 11 applied prior art and the instant
application are directed to polymer systems which are cured by free radical
initiation comprising acrylate polymers” and that “[t]he instant application
[and the references Patel and Sirdesai] are directed to the field of nail
application compositions.” (Ans. 10.) While these statements may be true,
without more they do not articulate a reason for modifying Patel, which is a
nail polish composition that can dry quickly (“in less than about 70
seconds”) under ambient conditions, so as to include free radical sources
that act as photo initiators to render its compositions UV curable instead.9
(Patel 6:58-61.)
In response to the Steffier Declaration and Appellants’ argument that
a skilled artisan “would not have a reasonable expectation of success in
formulating a low viscosity UV curable gel following the teachings of the
entire [Patel] patent,” the Examiner argues that Appellants have “proven
only one embodiment of [Patel] is not enabled for use as a UV curable
composition. . . .” (Ans. 11—12.) The Examiner points out that Patel
teaches a range of film-forming and reactive species as well as solvents, that
Sirdesai “exemplif[ies] numerous compositions which contain acrylate
polymers, thixotropic agents and UV initiators which result in film
formation,” and that the compositions of Patel and Sirdesai contain
overlapping monomers. {Id. at 11.) Given the above, the Examiner argues
that,
9 The Examiner has not argued that all compositions containing any free
radical sources are inherently UV curable.
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Application 12/804,253
when considering the entirety of the teachings of the [Patel] patent,
not just the single example tested by Appellants] which contains a
specific embodiment with low amounts of acrylate polymer and high
amounts of solvent, one of skill would expect the composition to
function as intended when exposed to UV light based on the teachings
of [Sirdesai].
(Id. at 12—13.) The Examiner further argues that Patel “teaches each of the
claimed ingredients in the claimed amounts” even if Patel “does not teach
the UV curing of the composition^ or each of the elements exemplified in a
single composition”; thus, the Examiner argues a skilled artisan would “not
have to add ingredients] [or] change ratios” as Appellants contend. (Ans.
13.)
We disagree with the Examiner’s conclusion that Patel “teaches each
of the claimed ingredients in the claimed amounts.” While the Examiner
may have shown that each of the claimed elements was independently
known in the prior art and that certain compositions encompassed within
Patel’s disclosures may be rendered UV curable when they include a
photoinitiator such as those disclosed in Killilea, the Examiner has not
articulated a reason that would have prompted a skilled artisan to combine
the element in the way claimed, i.e., where the free radical source is a
photoinitiator and the ingredients are combined in amounts and ratios that
render them UV curable.
Accordingly, we reverse the Examiner’s rejection of claim 1. The
rejection of claims 2, 5, 6, 9—11, 14, 15, 18, 19, 22, 25, 31, 33, 34, 37-42,
44, 47, 48, and 50-59, which all depend directly or indirectly from claim 1,
are reversed for the same reasons.
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Application 12/804,253
SUMMARY
For the reasons above, we reverse the Examiner’s decision rejecting
claims 1, 2, 5, 6, 9-11, 14, 15, 18, 19, 22, 25, 31, 33, 34, 37-A2, 44, 47, 48,
and 50-59.
REVERSED
8