Ex Parte Malet

Patent Trial and Appeal Board

Feb 20, 2018

13807783 (P.T.A.B. Feb. 20, 2018)

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.
13/807,783 02/20/2013 Frederic Malet ATOCM-0428 9136
23599 7590 02/22/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
AKHOON, KAUSER M
ART UNIT PAPER NUMBER
1642
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERIC MALET
Appeal 2017-002276
Application 13/807,7831
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1-3, 5-12, 21,
and 22 (Final Act.2 I).3 Examiner entered a rejection under 35 U.S.C.
§ 103(a).4 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the real party in interest as “ARKEMA FRANCE”
(App. Br. 1).
2 Office Action mailed June 29, 2015.
3 Pending claims 13-20 stand withdrawn from consideration (Final Act. 1).
4 Application 14/359,923 was abandoned on June 27, 2017. Therefore,
Examiner’s provisional obviousness-type double patenting rejection is moot
and will not be discussed further.
Appeal 2017-002276
Application 13/807,783
STATEMENT OF THE CASE
Appellant’s disclosure “relates to a cosmetic composition comprising
an elastomeric thermoplastic polymer, in particular a copolymer with
polyether blocks and polyamide blocks (PEBA . . .)” (Spec. 1). Appellant’s
claims 1 and 5 are representative and reproduced below:
1. A composition comprising:
- from 0.1 to 30 wt% of polyether-block-amide
copolymer (PEBA) and
- from 70 to 99. 9 wt% of a medium that is acceptable in
cosmetics, in perfumery and/or in pharmacy, comprising an
aqueous phase comprising at least 50% water,
said composition having at least one of the following
forms: dispersion, solution, emulsion, microemulsion,
nanoemulsion, dry emulsion, suspension, aerosol, gel, compact
gel, gum, plastic gum, paste, mousse, cream, powder, loose
powder, compact powder, expanded powder, butter, film,
elastic film, or a mixture thereof.
5. The composition as claimed in claim 1, in which said
medium further comprises an oily phase comprising at least
50% of organic solvent selected from fatty esters, fatty alcohols,
fatty acids and mixtures thereof
(App. Br. 7 (emphasis added).)
The claims stand rejected as follows:
Claims 1-3, 5-12, 21, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Pavlin5 and Sugihara.6
5 Pavlin, US 2004/0186263 Al, published Sept. 23, 2004.
6 Sugihara et al., EP 2 053 093 Al, published Apr. 29, 2009.
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Application 13/807,783
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner’s findings concerning the scope and content of
the prior art (Ans. 3-6), and provide the following findings for emphasis.
FF 1. Pavlin discloses that although,
the active ingredient(s) [of a product] determine the ultimate
performance utility of the product, the carrier formulation is
critical to the commercial success of the product in that it
largely determines the consistency of the product. The
rheology of the carrier or “base” largely determines the manner
in which the consumer will apply or use the product. Many
commercial and would-be commercial products depend upon
the availability of materials called “gelling agents” that have the
ability to modify various rheological properties, in order to
allow formulation of a successful product.
Products are often desired to be “gels,” in that they
maintain their shape when undisturbed but flow upon being
sheared. Transparent gelled carriers are especially desired by
formulators who develop products wherein a colorant is an
active ingredient, for example in a lipgloss or rouge, because a
transparent carrier (as opposed to an opaque carrier) will
minimally, if at all, interfere with the appearance of the
colorant.
(Pavlin 4-5; see also id. ^ 28 (Pavlin “provides-polyamide block
copolymers having significant amounts of linked internal polyether blocks
and internal fatty blocks, such that the copolymers have advantageous
physical properties and gelling abilities”).)
FF 2. Pavlin discloses “polyamide-polyether block copolymers and the use
of polyamide-polyether block copolymers as gellants for liquids in, for
example, air fresheners and personal care products” (Pavlin 2; see also id.
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Application 13/807,783
]}]} 182-184 (disclosing the use of a polyamide-polyether copolymer, within
the scope of Pavlin’s disclosure for use in personal care (e.g., cosmetics),
household, or industrial products; see Ans. 3 and 10).
FF 3. Examiner finds that Pavlin discloses a composition within the scope
of Appellant’s claimed invention, but for “an aqueous phase with at least
50% water, or an oily phase having at least 50% organic solvent which are
fatty esters, fatty alcohols or mixtures thereof’ and relies on Sugihara to
make up for these deficiencies in Pavlin (Ans. 4).
FF 4. Sugihara’s disclosure “relates to an aqueous dispersion of rubber
elastic body and a method of producing the same and in particular to an
aqueous dispersion of polyamide rubber elastic body and a method of
producing the same” (Sugihara]} 1; see generally Ans. 4-5).
FF 5. Sugihara’s “aqueous dispersion of polyamide rubber elastic body . . .
contains an aqueous medium and a polyamide rubber elastic body emulsified
and dispersed in the aqueous medium in the presence of a surfactant”
(Sugihara ]} 6; see generally Ans. 4-5).
FF 6. Sugihara discloses that “[t]he polyamide rubber elastic body used in
[Sugihara’s] aqueous dispersion is, for example, one of copolymers among a
polyether block amide copolymer and a polyether ester block amide
copolymer” (Sugihara ]fl| 7 and 52; see Ans. 5).
FF 7. Sugihara’s surfactant “is, for example, at least one member selected
from the group consisting of,” inter alia, “a fatty acid salt” (Sugihara ]fl| 7,
26, 29, and 39; see Ans. 5).
FF 8. Sugihara discloses mixing “an organic phase containing a polyamide
rubber elastic body dissolved in an organic solvent. . . with an aqueous
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Application 13/807,783
phase containing a surfactant dissolved in an aqueous medium to prepare an
emulsion” (Sugihara ]} 35; see Ans. 4).
FF 9. Sugihara discloses that “[t]he organic solvent used in the preparation
of the organic phase is not particularly limited,” wherein:
Examples of the organic solvent include aromatic hydrocarbon
solvents such as toluene, xylene, ethyl benzene and tetralin,
alicyclic hydrocarbon solvents such as cyclohexane and decalin,
aliphatic hydrocarbon solvents such as hexane and heptane,
halogenated hydrocarbon solvents such as chloroform and 1,2-
dichloroethane, and alcohol solvents such as methanol, ethanol,
isopropyl alcohol and t-butanol. These organic solvents can be
used as a mixture of two or more thereof.
(Sugihara ]} 35; see Ans. 4-5.)
FF 10. Sugihara discloses that the “aqueous medium ... is essentially
water” (Sugihara]} 15).
FF 11. Sugihara exemplifies the preparation of “an aqueous dispersion of
polyamide rubber elastic body,” wherein:
A 500-ml separable flask was charged with 16 g of a
polyether ester block amide copolymer (trade name: Pebax
2533SA01, melting point 134°C, manufactured by Arkema,
Ltd.), 123 g of toluene and 61 g of isopropyl alcohol, and the
copolymer was dissolved at 80°C under stirring for 4 hours. To
the resulting organic phase solution was added an aqueous
solution prepared by dissolving 5.3 g of sodium
polyoxyalkylene lauryl ether sulfate (trade name: Trax ET-314,
30 wt% active ingredient, manufactured by NOF Corporation)
in 100 g of water. The resulting mixture was stirred and mixed
for 2 minutes by means of a homomixer (trade name: TK
Homomixer Type M, manufactured by Tokushu Kika Kogyo
Co., Ltd.) to give an emulsion. The number of revolutions and
temperature during stirring and mixing were set at 12,000 rpm
and 40°C, respectively. The resulting emulsion was heated to
40 to 70°C at a reduced pressure of 40 to 90 kPa thereby
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Application 13/807,783
distilling off toluene and isopropyl alcohol, to yield an aqueous
dispersion of polyamide rubber elastic body.
(Sugihara ][ 52; see Ans. 5; see also Ans. 11 (Examiner finds that Sugihara’s
Example 1 discloses an emulsion composition comprising, inter alia, 8 wt %
PEBA, 61.5% toluene, and 30.5 wt % isopropyl alcohol, in 100 g of water,
thereby, “meeting the percentage limitations of [Appellant’s] claim 1”).)
FF 12. Sugihara discloses that an
aqueous dispersion of polyamide rubber elastic body according
to [its]. . . [disclosure] can be utilized in various applications as
a material for producing packaging films, automobile parts,
sport-related products and medical devices; a coating agent for
nylon fibers and polyester fibers used in clothing materials,
carpets and air-bags; a coating agent and a gas barrier agent for
paper and film; a raw material for foam rubber; a binder for
fibermaterials such as synthetic fibers, natural fibers and glass
fibers; and a material for producing hoses, tubes, belts, gaskets,
and packing.
(Sugihara]} 51.)
ANALYSIS
Based on the combination of Pavlin and Sugihara, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to combine Pavlin with Sugihara to formulate an
aqueous dispersion that is “transparent, flexible, [has] impact [and] tensile
strength, [and is] chemical. . . and heat resistant” (Ans. 5 (citing Sugihara
][ 4)). We are not persuaded.
Appellant’s claim 1, reproduced above, requires, inter alia, “a
medium that is acceptable in cosmetics, in perfumery and/or in pharmacy”
(see App. Br. 7). Appellant’s claims 2, 3, 5-12, 21, and 22 depend directly
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Application 13/807,783
or indirectly from claim 1 (see id. at 7-8).7 Examiner relies on Pavlin to
disclose a formulation comprising polyamide-polyether block copolymers
for use “in a cosmetic composition to form a gel stick” (Ans. 3). Pavlin
“provides-polyamide block copolymers having significant amounts of linked
internal polyether blocks and internal fatty blocks, such that the copolymers
have advantageous physical properties and gelling abilities” (FF 1
(emphasis added)). In this regard, we note, as does Appellant, that Pavlin
discloses the advantages of gels, particularly in the context of cosmetic
formulations (id.; see also App. Br. 2; Reply Br. 1). As Examiner
recognizes, in formulating compositions with advantageous gelling abilities,
Pavlin does not disclose formulations comprising, inter alia, “an aqueous
phase with at least 50% water” as is required by Appellant’s claimed
invention (see FF 3; see also App. Br. 2; Reply Br. 1).
To make up for foregoing deficiency in Pavlin, Examiner turns to
Sugihara for a disclosure of an emulsion composition comprising, inter alia,
8 wt % PEBA, 61.5% toluene, and 30.5 wt % isopropyl alcohol, in 100 g of
water (FF 11). Examiner, however, fails to identify a disclosure in Sugihara
that suggests the use of such a formulation as a cosmetic. To the contrary, as
Examiner recognizes, Sugihara relates to formulations for household and
industrial application (see FF 12). In this regard, we recognize Examiner’s
reference to formulations within the scope of Pavlin that may be used for
household or industrial applications (FF 2). Examiner, however, failed to
establish that a person of ordinary skill in this art would have appreciated
7 We note that Appellant’s claim 9, as reproduced in the “CFAIMS
APPENDIX” of Appellant’s Brief depends from cancelled claim 4 (see App.
Br. 7-8). For the purposes of this Appeal, we treat Appellant’s claim 9 as
depending from Appellant’s claim 1.
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Application 13/807,783
that the medium of Pavlin’s emulsion composition—which includes toluene
and isopropyl alcohol—would be acceptable for a composition intended for
cosmetic application (see, e.g., App. Br. 3).
Similarly, as discussed above, Examiner failed to establish an
evidentiary basis on this record to support a conclusion that Sugihara’s
formulations for use in household and industrial applications may be used
cosmetically (see id.; see also id. at 4 (The “characteristics [of Sugihara’s
formulations] are molding composition characteristics and irrelevant for the
use in a cosmetic composition”); see also Reply Br. 2 (“Sugihara indicates
that the organic solvent [may include] toluene, xylene, ethylbenzene,
tetralin, cyclohexane, etc. . . ., [which] would be hazardous on application to
the skin, in view of their nature”); see FF 9 and 11).
Further, Examiner failed to establish an evidentiary basis on this
record to support a conclusion that the gelling ability of Pavlin’s formulation
would not be destroyed, or otherwise be rendered unsuitable, by adding,
inter alia, an aqueous phase, as disclosed by Sugihara, to Pavlin’s
formulation (see, e.g., App. Br. 2 (“one of ordinary skill in the art would not
combine Pavlin and Sugihara, inasmuch as they ... do not permit a
reasonable expectation of success in maintaining the desired properties of
the primary reference”); see also id. at 4 (“The . . . [addition of] water as
argued to be obvious in view of Sugihara has an uncertain effect on the gels
of. . . [Pavlin], whose rheology is said therein to be an important
characteristic”); see Reply Br. 1; FF 1).
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Application 13/807,783
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1-3, 5-12, 21,
and 22 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Pavlin and Sugihara is reversed.
REVERSED
9