Ex Parte NORDSTROM et al

Patent Trials and Appeals Board

Mar 12, 2019

14209063 - (D) (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/209,063 03/13/2014
23122 7590
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
03/14/2019
FIRST NAMED INVENTOR
JIM NORDSTROM
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.
FNP-lOOUS 1068
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM NORDSTROM,
LINDA NORDSTROM, and SUE SHEARISS
(APPLICANTS: FAMOUS NAMES, LLC and ESSCHEM)
Appeal 2017-011765
Application 14/209,063 1
Technology Center 1600
Before DONALD E. ADAMS, TIMOTHY G. MAJORS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 4, 5, 7, 8,
and 21 (Final Act. 2 2; see App. Br. 3 1 (Appellants "hereby request[]
consideration and reversal of the Final Rejection ... of claims 1, 4-5, 7-8,
and 21")). 4 Examiner entered rejections under 35 U.S.C. § 102(a). We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellants identify "FAMOUS NAMES, LLC and ESSCHEM" as the real
party in interest (App. Br. 2).
2 Examiner's July 22, 2016 Final Office Action.
3 Appellants' February 7, 2017 Appeal Brief.
4 Pending claims 6 and 9--20 stand withdrawn from consideration (App. Br.
2; Final Act. 2).
Appeal 2017-011765
Application 14/209,063
STATEMENT OF THE CASE
Appellants' disclosure "relates to curable compositions for
structurally improving and reinforcing nail plates and methods for
strengthening, improving toughness, durability, appearance and for repairing
damaged nail plates, as well as to protect and support nail plates so they can
grow and lengthen naturally" (Spec. 1: 10-13). Claim 1 is representative and
reproduced below:
1. A curable composition for strengthening fingernails or
toenails comprising:
a polymerizable material, wherein the polymerizable
material will not crosslink reactive functional groups of nail
proteins;
at least one penetrating agent; and
a curing agent,
wherein the penetrating agent allows the polymerizable material
to reach a depth of at least 0.05 mm beneath a surface of the
fingernail or toenail when the composition is applied to the
fingernail or toenail.
(App. Br. 14.)
Grounds of rejection before this Panel for review:
Claims 1, 4, 7, 8, and 21 stands rejected under 35 U.S.C. § I02(a) as
anticipated by Kozacheck. 5
Claims 1, 4, 5, 7, 8, and 21 stand rejected under 35 U.S.C. § I02(a) as
anticipated by Wade. 6
5 Kozacheck et al., US 2013/0034512 Al, published Feb. 7, 2013.
6 Wade et al., GB 2 452 566 A, published Mar. 11, 2009.
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Application 14/209,063
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that either of Kozacheck or Wade teaches Appellants'
claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellants disclose an embodiment within the scope of their claimed
invention, wherein "at least one penetrating agent comprises a material that
enables the polymerizable material to penetrate the surface of the nail. For
example, the penetrating agent may allow the polymerizable material to
reach a depth of at least 0.05 mm beneath the surface of the nail" (Spec.
12:33-13:1).
FF 2. Appellants disclose:
Penetrating agents in accordance with the present
disclosure may comprise compounds chosen from oils and
solvents. Any keratin penetrating agent known to those skilled
in the art would also aid in the penetration of these
polymerizable materials into the upper portions of the natural
nail plate. The penetrating agent or blends of penetrating
agents that may be present in the composition in an amount
ranging, for example, from about 1 % to about 40% by weight
percent.
(Spec. 13:4--9.)
FF 3. Appellants disclose penetration agents that are natural vegetable and
plant oils, 7 wherein:
Non-limiting examples of natural oils which may be used
singularly or in synergistic blends with other natural oils, their
7 Appellants' elected specie of penetrating agents is "natural vegetable or
plant oils" (see Appellants' March 27, 2015 Response to Restriction
Requirement 7; see generally Final Act. 2; cf Examiner's January 29, 2015
Restriction Requirement).
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Appeal 2017-011765
Application 14/209,063
derivatives, include natural vegetable and plant oils such as;
com, castor, jojoba, olive, avocado, sweet almond, rice bran,
sunflower, safflower, palm, palm kernel rapeseed, peanut,
cottonseed, coconut, grape seed, tomato seed, hazelnut,
soybean, tea tree, eucalyptus, wheat germ, sea buckthom seed,
argan, peppermint, macadamia, or others that may be obtained
by expression, distillation, extraction of similar other means.
Natural oils that are most suited to aid in absorption into the
nail plate are those that most resemble oils which occur
naturally in the nail plate and therefore have the greatest
compatibility with the solid structural matrix that comprises the
nail plate, therefore olive, jojoba and avocado are preferred.
(Spec. 13:14--23.)
FF 4. Kozacheck "relates to the field of radiation-curable gels useful for
cosmetic adornment of natural nails, artificial fingernails, toenails and
artificial nail extensions" (Kozacheck ,r 2; see generally Final Act. 2).
FF 5. Kozacheck discloses
a composition comprising (A) at least about 35% by weight
oligomer; (B) at least about 0.1 % by weight pigment; (C) at
least about 0.5% by weight thixotropic additive; (D) 0 to about
20% by weight non-reactive solvent; (E) 0 to no more than 20%
by weight film-forming polymer wherein the ratio of oligomer
to film forming polymer is greater than 2.5; (F) 0.1 to 5% by
weight photoinitiator; (G) 0 to 5% by weight dispersant, and
(H) the balance to make 100% by weight of reactive
ethylenically unsaturated monomer; wherein the composition is
a UV curable gel suitable for coating natural and artificial nails
and forming a wear-resistant adornment coating.
(Kozacheck ,r 16; see generally Final Act. 2.)
FF 6. Kozacheck's compositions "comprise a significant amount of
ethylenically unsaturated monomer[], in some embodiments about 45 to
65% by weight of the composition" (Kozacheck ,r 35; see Final Act. 2
(Kozacheck's composition comprises "a polymerizable material")).
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Application 14/209,063
FF 7. Kozacheck' s compositions "comprise 0.1 % by weight, up to about
5% by weight, of a photoinitiator" (Kozacheck ,r 39; see Final Act. 2
(Kozacheck's composition comprises "a curing agent")).
FF 8. Kozacheck discloses "[t]hixotropic additives [] useful in [its]
invention include inorganic and organic based materials," wherein
[ e ]xamples of organic thixotropic additives include but are not
limited to: hydrogenated castor oils, hydrogenated castor oil
waxes, inorganically modified castor oils, organically modified
castor oils ... , triglycerides such as glyceryl tri-12-hydroxy
stearate, polyamides and modified polyamides such as 12-
hydroxystearic acid diamide of ethylene diamine, 12-
hydroxystearicacid diglycolamide, N-stearyl ricinoleamide, N-
stearyl stearamide and other polyamide waxes ... , polyethylene
oxide waxes, urea urethanes ... , acrylic resins, amine salts of
polymeric polyesters, salts of linear polyaminoamide and
polymeric polyester, amide solutions of polycarboxylic acid,
alkyl sulfonate, alkylallyl sulfonate, colloidal ester, polyester
resin ... , phenol resin, melamine resin, epoxy resin, urethane
resin, styrene butadiene polymers, polyimide resin, and
polyester amides.
(Kozacheck ,r,r 44, 47; see Final Act. 2 (Examiner finds that Kozacheck
teaches a penetration agent within the scope of Appellants' elected
invention); Final Act. 3 (Examiner finds that Kozacheck teaches a
composition comprising "derivatives of castor oil.")
FF 9. Wade discloses:
A radiation curable, nail coating composition comprising a
radiation curable substance, at least one dye and/or pigment
dissolved and/or dispersed in the composition to impart a colour
and a means for causing the dye and/ or pigment to remain
homogeneously distributed throughout the composition during
storage, application and curing of the coating.
(Wade, Abstract; see Final Act. 4.)
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FF 10. Wade's composition comprises "ethylenically unsaturated
components (so called 'monomers', 'oligomers', 'unsaturated polymers'
etc.)" (Wade 3:21-23; see Final Act. 4 (Examiner finds that Wade's
"composition comprises a polymerizable material")).
FF 11. Wade's composition comprises an oil "selected from one or more of
the following: castor oil, dehydrated castor oil, cotton seed oil, fish oil,
linseed oil, menhaden oil, oiticaca oil, palm kernel oil, perilla oil, safflower
oil, sardine oil, soybean oil and tung oil" (Wade 5:7-10; see Final Act. 4
(Examiner finds that Wade discloses a "penetrating agent (i.e. oil)")).
FF 12. Wade's composition comprises a "radiation curable substance
compris[ing] at least one thiol compound of formula X-(SH)n where X
represents an organic moiety and n is an integer from 1 to 1 O" (Wade 5: 11-
13; see Final Act. 4 (Examiner finds that Wade's composition comprises a
"curing agent")).
FF 13. Examiner finds that Wade discloses a composition comprising
"polymerizable materials, oils, and curing agent in the same or overlapping
[a]mounts" required by Appellants' claimed invention (see Final Act. 4
(citing Wade's Examples)).
ANALYSIS
Examiner finds that Kozacheck and Wade each disclose a
composition comprising a polymerizable material, a penetrating agent (i.e.,
oil), and a curing agent and, therefore, a person of ordinary skill in this art
would have expected that the polymerizable material of Kozacheck' s
composition "will not cross-link reactive functional groups of nail proteins"
and "is capable of penetrating at least 0.05 mm below the upper surface of a
nail when the composition is applied to the nail" (Final Act. 2--4 ( citing In re
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Application 14/209,063
Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)). We find no error in Examiner's
prima facie cases of anticipation.
On this record, although Appellants contend that there is a difference
between their claimed invention and the composition disclosed by
Kozacheck or Wade, 8 Appellants fail to establish an evidentiary basis on this
record to support a finding. See In re Spada, 911 F.2d at 709 (Although
"Spada's position is that his polymers are not anticipated by the polymers of
Smith because their properties are different, Spada was reasonably required
to show that his polymer compositions are different from those described by
Smith").
A chemical composition and its properties are inseparable. See In re
Spada, 911 F.2d at 709. As discussed above, Appellants failed to establish a
difference between the prior art compositions and the claimed composition.
Therefore, we are not persuaded by Appellants' contention that
"[i]dentifying similar ingredients is not the same as identifying whether the
compositions are identical or substantially identical" (App. Br. 6; see also
Reply Br. 3 ("Why would penetration of the nail be an inherent property of a
coating composition simply because it has an ingredient in common with the
present claims, particularly if the coating composition required a thixotropic
agent to form a gel?")).
We recognize, but are not persuaded by, Appellants' reliance on
Schoon to establish that "Kozacheck does not use the term 'penetrating
agent' and is silent with respect to the composition penetrating the surface of
the nail," Kozacheck's composition "require[s] a thixotropic additive to alter
8 See Appellants' September 26, 2017 Reply Brief 2 ("Kozacheck and Wade
do not teach identical compositions as presently claimed").
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Application 14/209,063
the physical properties of the UV-curable gel," Kozacheck's compositions
"are designed and required to be removed periodically and replaced with a
freshly applied coating," and Kozacheck describes its compositions as
"'coatings' and 'adornment coatings"' (App. Br. 7-8 (citing Schoon Decl. 9);
see also Reply Br. 3-5). Notwithstanding Appellants' contention and
Schoon's declarations to the contrary, Appellants failed to establish that
Kozacheck fails to disclose a composition comprising a penetrating agent
( cf FF 8 (Examiner finds that Kozacheck teaches a penetration agent within
the scope of Appellants' elected invention)). Appellants failed to establish
that the composition of their claim 1 excludes a thixotropic additive or that a
composition characterized as a coating by Kozacheck will not necessarily or
inherently also penetrate to a depth of at least 0.05 mm beneath a surface of
a fingernail or toe nail when the composition is applied to the fingernail or
toenail. "[A] prima facie case of anticipation [maybe] based on inherency."
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case
of anticipation has been established, the burden shifts to the Appellant to
prove that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). See also In re Spada, 911 F.2d at
708---09.
9 Declaration of Douglas Schoon, signed May 10, 2016.
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Application 14/209,063
For the foregoing reasons, we are not persuaded by Appellants'
contention that "[l]ike Kozacheck, Wade states that the invention is a 'nail
coating composition"' and is, therefore, different than Appellants' claimed
invention (App. Br. 10-12). As discussed above, Appellants' failed to meet
their burden of establish an evidentiary basis to support a finding that the
composition of their claim 1 differs from the composition disclosed by
Wade.
CONCLUSION
The preponderance of evidence on this record supports Examiner's
finding that either ofKozacheck or Wade teach Appellants' claimed
invention.
The rejection of claim 1 under 35 U.S.C. § 102(a) as anticipated by
Kozacheck is affirmed. Claims 4, 7, 8, and 21 are not separately argued and
fall with claim 1.
The rejection of claim 1 under 35 U.S.C. § 102(a) as anticipated by
Wade is affirmed. Claims 4, 5, 7, 8, and 21 are not separately argued and
fall with claim 1.
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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