Ex Parte Moneuze et alDownload PDFPatent Trials and Appeals BoardMay 10, 201914409066 - (D) (P.T.A.B. May. 10, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/409,066 12/18/2014 30678 7590 POLSINELLI PC (DC OFFICE) 1000 Louisiana Street Suite 6400 HOUSTON, TX 77002 05/14/2019 FIRST NAMED INVENTOR Gaelle Moneuze 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. 085507-536509 ll08 EXAMINER SHIN, MONICA A ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 05/14/2019 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): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GAELLE MONEUZE and FLORENCE BARRAQUET Appeal2018-003723 Application 14/409,066 1 Technology Center 1600 Before ELIZABETH A. LA VIER, JOHN E. SCHNEIDER, and RYAN H. FLAX, Administrative Patent Judges. LA VIER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the Examiner's rejection of claims 1, 3-10, 12-16, and 18-23. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Appellants identify the real party in interest as L'OREAL. Appeal Br. 2. Appeal2018-003723 Application 14/409,066 BACKGROUND The Specification describes translucent cosmetic compositions, formed as oil-in-water emulsions. Spec. 1 :3--4. Claim 1 is illustrative: 1. A translucent cosmetic composition in the form of an oil-in- water emulsion comprising: ( 1) a dispersed fatty phase comprising at least one oil; (2) a continuous aqueous phase comprising at least one hydrophilic thickening polymer, wherein the at least one hydrophilic thickening polymer is not amphiphilic; and (3) hydrophobic silica aerogel particles; the ratio of the amount by weight of silica aero gel particles to the amount by weight of oil(s) being greater than 0.06; the composition being free of surfactant( s ). Appeal Br. 17 (Claims Appendix). REJECTION MAINTAINED ON APPEAL Claims 1, 3-10, 12-16, and 18-23 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sebillote-Amaud2 and Dow Coming, 3 as evidenced by Ostergaard. 4 Ans. 3. 2 Sebillote-Amaud, US 5,879,718, issued Mar. 9, 1999. 3 Dow Coming VM-2270 Aerogel Fine Particles, Product Information, Ref. No. 27-1215B--01 (2007). 4 Ostergaard et al., Next-Generation Rheology Control Brings New Formulating Options for Personal Care, Dow Coming Corp. (2012). 2 Appeal2018-003723 Application 14/409,066 DISCUSSION The Examiner finds that Sebillote-Amaud discloses surfactant-free, oil-in-water emulsions for cosmetic use. Final Action 5 ( citing Sebillote- Amaud Abstract, 1 :8-13, 40-42, 60-65). Particularly, the Examiner points to Example 3 of Sebillote-Amaud, which: exemplifies a refreshing fluid composition for greasy skins in the form of a homogenous, stable, translucent fluid comprising volatile silicone in a fatty phase and the crosslinked poly(2- acrylamido-2-methylpropanesulphonic acid) polymer described above in the aqueous phase. The volatile silicone is in the composition in an amount of 5% by weight of the composition (5g out of the 100g total), and the crosslinked poly(2- acrylamido-2-methylpropanesulphonic acid) polymer is in the composition in an amount of 0.5% by weight (0.5g out of the 1 OOg total). Final Action 6 (citing Sebillote-Amaud 9:1-19). As Sebillote-Amaud does not teach hydrophobic silica aerogel particles, the Examiner turns to Dow Coming ( as further evidenced by Ostergaard), which describes hydrophobic particles in a free-flowing powder that are useful in absorbing oils and acting as a thickening agent for organic oils and silicone fluid. Final Action 7 ( citing Dow Coming 1; Ostergaard 2). Dow Coming specifically mentions sebum as one of "many lipophilic materials" the silica silylate particles can be used to absorb. Dow Coming 1; see also Final Action 7. Dow Coming further teaches incorporation of the particles into the oil phase when making an emulsion, and offers a "[r]ecommended use level" of 0.5-5%. Dow Coming 1; see also Final Action 7-8. In regard to combining the cited references, the Examiner finds: 3 Appeal2018-003723 Application 14/409,066 one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to try the addition Dow Coming's aerogel fine particles discussed above into Sebillote-Amaud's cosmetic compositions, in Dow Coming's disclosed art recognized amounts, in order to obtain the benefits of the aero gel fine particles discussed above, such as superior oil and sebum absorption. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Sebillote-Amaud discloses emulsion cosmetic compositions for skin care and hair care and allows for the inclusion of adjuvants into their compositions, and Dow Coming discloses that their aerogel fine particles are used in emulsions, in particular added to the oil phase, and find applications in skin care and hair care. Final Action 8. Further, the Examiner finds that the combination of Sebillote-Amaud and Dow Coming would yield a weight ratio of silica aerogel particles to oil greater than 0.06 (as required by claim 1 ), i.e., a range overlapping with the claimed range: Sebillote-Amaud discloses that the fatty phase of the compositions preferably represent from 0-50% of the total weight of the composition, and exemplifies a composition comprising oil in an amount of 5% by weight of the composition (Sebillote-Amaud Example 3). Dow Coming discloses that the recommended amount of aerogel fine particles is between 0.5-5% by weight. In the case that the aerogel fine particles disclosed by Dow Coming is included into Sebillote- Amaud' s composition, e.g. Sebillote-Amaud's Example 3 composition, in an amount of 1 % by weight, for example, the composition of the combined teachings of the prior art references would have a ratio of the amount by weight of silica aerogel particles to the amount by weight of oil(s) of 0.2 (i.e. 1 %/5%). Final Action 9. Central to several of Appellants' arguments is their contention that the translucent fluid described in Example 3 of Sebillote-Amaud is an aqueous- 4 Appeal2018-003723 Application 14/409,066 alcohol composition, not an oil-in-water emulsion. See Appeal Br. 10; Reply Br. 3--4. As Appellants note, Example 3 of Sebillote-Amaud recites ethyl alcohol among the components of its aqueous phase. Sebillote-Amaud 3:13. However, we agree with the Examiner (see Ans. 4--5) that the presence of alcohol does not disqualify a composition from being an emulsion within the broadest reasonable interpretation of claim 1. Indeed, the Specification contemplates that the aqueous phase of compositions of the present invention "may comprise at least one hydrophilic solvent," including ethanol. Spec. 17:3-5; see also Ans. 4. Further, Sebillote-Amaud is generally directed to "surfactant-free oil-in-water emulsion[s]" (Sebillote- Amaud Abstract) and provides that the compositions according to its invention may contain organic solvents, including ethanol (see id. at 4:53- 64). Example 3, while not expressly described as an "emulsion," divides its components under two headings: a fatty phase, and an aqueous phase. Id. at 9: 1-19. Further, Sebillote-Amaud describes the composition of Example 3 as translucent. Accordingly, we discern no error in the Examiner's finding (Ans. 4; see also Final Action 5---6) that the composition of Example 3 of Sebillote-Amaud is a translucent oil-in-water emulsion. Because we agree with the Examiner that the composition of Example 3 of Sebillote-Amaud is a translucent oil-in-water emulsion, Appellants' arguments that the other examples of Sebillote-Amaud are not translucent (see Appeal Br. 10), and that Dow Coming does not explain how adding its composition to an opaque oil-in-water emulsion would result in a translucent emulsion (see id.), are not persuasive. Further, we are not persuaded by Appellants' arguments (see Appeal Br. 10-11) that the combination of references is the result of too much picking or choosing or impermissible 5 Appeal2018-003723 Application 14/409,066 hindsight. These arguments, which are quite general, fail to directly address the detailed rationale provided by the Examiner (see Final Action 8 (and quoted supra)). Appellants also assert that their invention achieves unexpected and surprising results. See Appeal Br. 11-12; Reply Br. 4--5. This appears to be unsupported attorney argument, as no evidence, such as from the Specification itself, a declaration, or otherwise, is cited as so characterizing the results presented in the Specification. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (explaining that appellant bears the burden of establishing evidence to rebut a prima facie case of obviousness); Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA 1982) ("[A]rguments of counsel cannot take the place of evidence lacking in the record."). To the contrary, the Specification characterizes the change in transmittance, as a function of the ratio of silica particles to oil, as being "virtually linear." Spec. 21 :5-6; see also Ans. 7-8 ( discussing Specification Examples). 5 In the Reply Brief, but not the Appeal Brief, Appellants present a separate argument regarding claim 23. See Reply Br. 4--5. A new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 5 We also note that although the Appeal Brief discusses a "desired level of translucency" achieved by certain exemplary compositions in the Specification (Appeal Br. 11; see also id. at 12, Reply Br. 4, 5), claim 1 does not quantify or otherwise describe the degree to which the claimed composition must be "translucent." Thus, even if there were evidence to support Appellants' attorneys' assertion that these data represent unexpected or surprising results, they would be difficult to map to the scope of claim 1. 6 Appeal2018-003723 Application 14/409,066 USPQ2d 1473, 1477 (BPAI 2010) (informative). When an argument is new in the Reply Brief, the Examiner has no opportunity to respond. As Appellants offer no showing of good cause for presenting the new argument in the Reply Brief, this argument is improper. 6 Having considered Appellants' arguments, we are not persuaded of any reversible error by the Examiner in rejecting claim 1. Claims 3-10, 12- 16, and 18-23 are not separately argued in the Appeal Brief, and fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). CONCLUSION We affirm the rejection of claims 1, 3-10, 12-16, and 18-23. 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)(iv). AFFIRMED 6 In addition, Appellants' argument regarding claim 23 is presented as part of their unexpected results discussion. See Reply Br. 4--5. As discussed, we are not persuaded that Appellants have demonstrated unexpected results. Accordingly, even if we were to entertain the new argument regarding claim 23, we would not be persuaded by it. 7 Copy with citationCopy as parenthetical citation