Ex Parte PavelDownload PDFPatent Trial and Appeal BoardSep 29, 201411972102 (P.T.A.B. Sep. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte FLORENTINA PAVEL1 __________ Appeal 2012-005986 Application 11/972,102 Technology Center 1600 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and ROBERT A. POLLOCK, Administrative Patent Judges. POLLOCK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–6 as unpatentable under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention relates to compositions useful for mascara cosmetics. 1 According to Appellant, the Real Party in Interest is L’Oreal S.A. of Paris, France. (App. Br. 2). Appeal 2012-005986 Application 11/972,102 2 Representative independent claim 1 (formatted) reads as follows: 1. A mascara comprising at least one coloring agent, at least one semicrystalline alkyl (meth)acrylate, at least one hydrogenated hydrocarbon resin and at least one block copolymer. The following grounds of rejection are before us for review: Claims 1–3, 5–12, and 18–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lu2 in view of Charbit.3 Claims 1–3, 5–12, and 18–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yu4 in view of Charbit. Claims 1–3, 5–12, and 18–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Arnaud5 in view of Charbit. ANALYSIS We have reviewed Appellant’s contentions that the Examiner erred in rejecting claims 1–3, 5–12, and 18–21 under 35 U.S.C §103(a) as obvious over Charbit in combination with any of Lu, Yu, or Arnaud. (Ans. 5–11.) We disagree with Appellant’s conclusions and adopt as our own the factual findings and analysis set forth in the Examiner’s Answer. Appellant admits that the combination of Charbit with either Yu or Arnaud and Charbit are “no different from” the combination of Charbit and Lu. (App. Br. 5, 6.) As all three rejections focus on the same issues, we 2 Lu et al., US 2007/0055014 Al, published March 8, 2007. 3 Charbit, US 2005/0137117 Al, published June 23, 2005. 4 Yu, US 2006/0013839 Al, published Jan. 19, 2006. 5 Arnaud et al., US 2007/0014745 Al, published Jan. 18, 2007. Appeal 2012-005986 Application 11/972,102 3 highlight and address the following facts with respect to the rejection in view of Lu and Charbit. Specification Appellant’s invention relates to “compositions for keratin materials (such as hair or eyelashes) such as mascaras . . . containing at least one tackifier and at least one semi-crystalline alkyl (meth)acrylate.” (Spec. Abstract, ¶ 2) “Such compositions, when applied to keratin materials, impart improved length to the keratin materials.” (Id. ¶ 2.) The amount of semi-crystalline alkyl (meth)acrylate in the disclosed compositions is preferably “sufficient to support, strengthen, stiffen and/or reinforce faux fibers formed upon application of the composition to a keratin material.” (Id. ¶ 27) Exemplary semi-crystalline alkyl (meth)acrylates include Intelimer® IPA 13-1. (Id. ¶¶ 23-24). In accord with the Specification, the named inventor testified that 3. Mascaras which contain a hydrogenated hydrocarbon resin and a block copolymer tend to form “fibers” after application. These “fibers” can provide a lengthening effect to eyelashes to which the mascaras have been applied. However, during the application of the mascara with the brush the “fibers” break and shrink, thereby decreasing the amount of lengthening effect provided by the “fibers.” 4. Adding at least one semi-crystalline alkyl (meth)acrylate to a mascara containing a hydrogenated hydrocarbon resin such as a Regalite® resin and a block copolymer such as a Kraton® copolymer inhibits the fibers’ breaking and shrinking, thereby providing an improved lengthening effect for the mascara. (Declaration Under 37 C.F.R. § 1.132 of Florentina Pavel; see also Spec. ¶¶ 3, 10, 32, 45, 107.) Appeal 2012-005986 Application 11/972,102 4 Findings of Fact Lu Lu teaches cosmetic compositions including mascara (Abstract, ¶ 412) comprising at least one coloring agent (Lu abstract, ¶ 328); at least one block copolymer such as Kraton 1657 M® (abstract, ¶¶ 21, 302); and at least one hydrogenated hydrocarbon resin such as Regalite R1100 (¶ 313). Charbit Charbit teaches haircare and make-up compositions, in particular “mascara, nail varnish, lipstick and powders” comprising at least one optical brighter for “intensifying radiance and brightening the colours of the cosmetic compositions” (Charbit ¶ 9) combined with at least one semi- crystalline polymer that enhances the activity of the optical brightener (id. abstract; ¶¶ 12, 84). Charbit teaches that the semi-crystalline polymers may comprise semi-crystalline alkyl(meth)acrylates such as Intelimer® IPA 13-1. (Id. ¶¶ 39, 47, 69–70.) Charbit discloses that preferred embodiments comprise an amount of the semi-crystalline polymer “that reinforces the bleaching and/or lightening effect of optical brighteners, which makes it possible to incorporate optical brighteners in smaller amounts into the compositions.” (Id. ¶ 84.) This amount may comprise from 0.1% to 50%, from 0.5% to 20%, or from 1% to 10% by weight of the total composition. (Id. ¶ 83.) Cosmetic compositions according to Charbit contain a physiologically acceptable medium “compatible with the skin, and possibly the lips, the scalp, the eyelashes, the eyes and/or the hair.” (Id. ¶ 105.) Accordingly, the Appeal 2012-005986 Application 11/972,102 5 physiologically acceptable medium “has a pH that is compatible with the skin, preferably ranging from 3 to 8 and better still from 5 to 7.” (Id.) Claims 1–3, 5–8, 11, 19, and 20 We focus our initial analysis on claim 1, the sole independent claim on appeal. Claims 2, 3, 5–8, 11, 19, and 20 stand or fall with claim 1. 37 C.F.R. § 1.37(c)(1)(vii). Appellant separately address claims 9, 10, 18, and 19–21. (See App. Br. 5.) Appellant contends that the Examiner fails to identify any motivation for one of ordinary skill in the art to combine the semi-crystalline alkyl(meth)acrylates of Charbit with teachings of Lu, Yu, or Arnand because “the applied art is silent concerning the ability of the required semi- crystalline alkyl (meth)acrylate to provide an improved lengthening effect of a specific type of mascara.” (App. Br. 5; see also Reply Br. 1.) We are not persuaded. First, independent claim 1 is directed to composition comprising: at least one coloring agent, at least one semicrystalline alkyl (meth)acrylate, at least one hydrogenated hydrocarbon resin, and at least one block copolymer. Neither claim 1, nor any of the claims on appeal require that the composition “provide an improved lengthening effect of a specific type of mascara,” as Appellant contends. Even if this intended use recitation was added to the claim, a “mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.” In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969). Moreover, the Examiner does provide a reason for one of ordinary skill to modify Lu, Yu, or Arnand to include a semicrystalline alkyl Appeal 2012-005986 Application 11/972,102 6 (meth)acrylate as taught by Charbit, that is, to enhance optical brighteners in a mascara formulation. In particular, the Examiner states that Charbit further teaches ingredients for cosmetic compositions which have the advantageous properties of enhancing optical brighteners and providing for non-sticky feel, and even suggests that such polymers can be applied to eyelashes, see paragraph 0105. Therefore it would have been obvious to incorporate the products disclosed by Charbit into the mascara cosmetic compositions disclosed by Yu and Lu, as Charbit teach the advantages for incorporating semi-crystalline alkyl(methacrylates) into cosmetic formulations, and even suggests their use on eyelashes. (Answer 13.) The Supreme Court has made clear that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, there is no need for Charbit to suggest the use of semi-crystalline alkyl(methacrylates) for the same purpose set forth in the Specification. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)(“[T]he motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.”). For the purpose of finding obviousness under 35 U.S.C. § 103(a), it sufficient that the Examiner has properly identified a reason for modifying Lu, Yu, or Arnand to include a semicrystalline alkyl (meth)acrylate as taught by Charbit. Appeal 2012-005986 Application 11/972,102 7 Claims 9, 10, 18-21 Appellant states that claims 9, 10, and 18–21 require the at least one semicrystalline alkyl (meth)acrylate to be present in from about 2% to about 25 % in claims 9, 18 and 19, and from about 4% to about 15 % in claims 10, 20, and 21. (App. Br. 5.) Appellant argues that these claims require “specified, result effective amounts of the semi-crystalline alkyl (meth)acrylate” to “support, strengthen, stiffen and/or reinforce faux fibers formed upon application of a mascara containing block copolymer and hydrogenated hydrocarbon resin.” (Id.) Appellant’s argument is not persuasive. The claimed ranges are within the ranges set forth in Charbit paragraph 83 and Appellant has presented no evidence that the claimed ranges provide unexpected results as compared to that disclosed in the prior art reference. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”) As discussed above, there is no requirement that Charbit suggest the use of semi-crystalline alkyl(methacrylates) for the same purpose as the Specification. Appellant’s Reply Brief Appellant contends in the Reply Brief that the Examiner erred for the following additional reasons. Appellant argues that paragraph 9 of Charbit does not relate to Charbit’s compositions. (Reply Br. 1.) We disagree. In determining obviousness, “a reference . . . is prior art for all that it teaches.” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. Appeal 2012-005986 Application 11/972,102 8 1989). As Appellant points out, paragraph 9 refer to a prior art French patent application; it also teaches that optical brighteners may be used in hair care and makeup compositions including mascara. Appellant argues that paragraph 21 of Charbit “provides no guidance with respect to mascaras” because it “relates to non-solid products.”6 (Reply Br. 1.) Paragraph 21 is directed to the preferred melting points for semi- crystalline polymers taught by Charbit. Insofar as Appellant has not demonstrated, or even alleged, that mascaras are exclusively solids, we find no merit in this argument. Appellant argues that although Charbit paragraph 84 “relates to the decreased amount of optical brightener that can be added to a composition if the polymer disclosed therein is present” and it “does not relate to mascaras.” (Reply Br. 2.) Section 103 forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR, 550 U.S. at 406 (2007). We find that Charbit as a whole teaches haircare and make-up compositions, in particular “mascara, nail varnish, lipstick and powders” comprising at least one optical brighter for “intensifying radiance and brightening the colours of 6 Although we need not reach the question of whether the claims on appeal are limited to mascara compositions, we note that where the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, and not a distinct definition of any claimed limitation, the preamble is not considered limiting and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Appeal 2012-005986 Application 11/972,102 9 the cosmetic compositions” (Charbit ¶ 9) and at least one semi-crystalline polymer that enhances the activity of the optical brightener. (Id. abstract; ¶¶ 12, 84.) That paragraph 84 of Charbit does not use the word “mascara” does not change our analysis. Appellant further argues that Charbit paragraph 105 indicates that Charbit’s compositions are “must be compatable with skin” and, moreover, “does not relate to mascaras.” (Reply Br. 2 (emphasis in original.) For the reasons set forth above, we are not persuaded. In addition, Charbit paragraph 105 relates to a physiologically acceptable medium “compatible with the skin, and possibly the lips, the scalp, the eyelashes, the eyes and/or the hair.” As Appellant has not explained why one of ordinary skill in the art would find that a composition applied to the eyelashes should not be compatible with the skin, we are likewise not persuaded. For the reasons set forth above, we do not disturb the Examiner’s finding that claims 1–3, 5–12, and 18–21 are unpatentable as obvious over any of Lu, Yu, or Arnaud in view of Charbit. SUMMARY We affirm the rejection of claims 1 and 9 under 35 U.S.C. §103(a) as unpatentable over Lu in view of Charbit. Claims 2, 3, 5-9, 11, and 12 fall with claim 1. Claims 10 and 18-21 fall with claim 9. We affirm the rejection of claims 1 and 9 under 35 U.S.C. §103(a) as unpatentable over Yu in view of Charbit. Claims 2, 3, 5-9, 11, and 12 fall with claim 1. Claims 10 and 18-21 fall with claim 9. We affirm the rejection of claims 1 and 9 under 35 U.S.C. §103(a) as unpatentable over Arnaud in view of Charbit. Claims Appeal 2012-005986 Application 11/972,102 10 2, 3, 5-9, 11, and 12 fall with claim 1. Claims 10 and 18-21 fall with claim 9. 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 lp Copy with citationCopy as parenthetical citation