Ex Parte PENG et al

Patent Trial and Appeal Board

Dec 12, 2016

12171969 (P.T.A.B. Dec. 12, 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.
12/171,969 07/11/2008 Qinyun PENG EMIP-0066-C01 3986
23599 7590 12/14/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QINYUN PENG and PHILIP LINZ
Appeal 2015-004454
Application 12/171,969
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a
cosmetic powder composition. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
The “eye-catching color travel pigments of normal particle sizes (1-80
pm) is not readily visible in cosmetic powder products or upon application
on the skin when a relatively low concentration of the pigments was used”
1 Appellants identify the Real Party in Interest as MERCK PATENT GMBH
(see App. Br. 1).
Appeal 2015-004454
Application 12/171,969
(Spec. 1). The Specification teaches that “using large particle size color
travel pigments, it is possible to achieve the color travel effect on the skin
using powder applications and the like without using high concentrations of
the pigments, unlike their normal particle size counterparts” (id.).
The Claims
Claims 1, 3—15, and 18—24 are on appeal. Claim 1 is representative
and reads as follows:
1. A cosmetic powder composition comprising pigments
having a color travel effect, wherein said composition contains
about 1-30% by weight, of large particle size color travel
pigments having a D50 particle size of 60- 150pm to retain the
color travel effect upon application to skin.
The Issue
The Examiner rejected claims 1, 3—15, and 18—24 under 35 U.S.C.
§ 103(a) as obvious over Rona,2 Schmidt,3 and Meyer4 (Ans. 2—6).
The Examiner finds “Rona discloses Xirona Color Travel Pigments”
(Ans. 2). The Examiner finds Rona “teaches that choosing a right particle
size affects different coloring effects, and states, ‘larger sized particles (>
100 microns) create high luster effects, either sparkling or glittering,
combined with very high brilliancy and transparency[’]” (Ans. 2—3).
The Examiner finds that
2 Rona, Basics of Success, Ingredients for Cosmetics, Merck, published July
2004 (“Rona”).
3 Schmidt et al., US 2004/0052743 Al, published Mar. 18, 2004
(“Schmidt”).
4 Meyer et al., US 6,605,235 Bl, issued Aug. 12, 2003 (“Meyer”).
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Application 12/171,969
given the teaching on the specific visual effects of travel
pigments having large particle size, optimization of the
concentration of such particles to obtain an expected outcome
would have been obvious to one of ordinary skill of the art. The
skilled artisan would have had a reasonable expectation of
successfully producing a collection of large sized particles as
manipulating the particle size distribution, by sieving, for
example, is a well-known technique. See Meyer, col. 29, lines
47-53.
(Ans. 4.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the prior art renders claim 1
obvious?
Findings of Fact
1. The Specification teaches “Targe particle size’ pigments are
defined as having a median particle size (D50) of 40 pm or higher,
preferably 60 pm or higher” (Spec. 1).
2. The Specification teaches the “desired particle sizes of the
pigments are obtained by conventional methods, e.g. sieving or
sedimentation” (Spec. 7).
3. Rona teaches:
Xirona® Color Travel Pigments
• Color changing effects depending on the viewing angle
• Interference pigments based on mica or silica coated with
titanium dioxide or iron oxide
(Rona 1).
4. Rona teaches:
Different coloring effects can be achieved by the right choice of
pearl luster pigments depending on their particle size. Small
particles (< 15 pm) create silky and satin effects and will
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Application 12/171,969
opacify the mass. They enhance the hiding power of
formulations and provide a high coverage as well. Larger sized
particles (> 100 pm) create high luster effects, either sparkling
or glittering, combined with very high brilliancy and
transparency.
(Rona 2.)
5. Rona teaches:
large particles good reflection ~> maximum foster
small particles many light scattering centers maximum hiding
Particle sft'i Class effect and comoge k formulation a mi application
b pm Low luster » High biding power
5-2S pro
10- 60. ur;i
Siiky luster
Peari luster
Strong biding power
> > M&Ii um h id irsg power
10- 12S pro
20 - ISO ym
Shimmering luster tow hiding pewei
Snarrtirig luster iranspareot
45-SCO pm* Glittering faster Very transparent
* Wry large-sized sartsdes. i> ISOpmj not permitted In US products.
(Rona 3).
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Application 12/171,969
6. Meyer teaches that cosmetic material such as “pigments can
subsequently be classified in order to narrow the particle-size distribution,
for example by means of a sieving process” (Meyer 29:51—53).
7. Schmidt teaches cosmetics with pigments within 1 to 30 % by
weight (see Schmidt 176).
Principles of Law
“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2—6; FF 1—7) and agree that claim 1
is rendered obvious by Rona, Schmidt, and Meyer. We address Appellants’
arguments below.
Appellants contend that:
A particle size distribution such as a D50 (or Dio or D90) is not
discemable from a particle size range as in the various
references. It is emphasized that a D50 is not a particle size or
size range, per se. A D50 is a particle size distribution such that
50% of the particles are greater than the stated value, and 50%
are less. . . . Thus, Rona does not disclose any particular particle
size distribution, not D10, D50 nor D90 values. Rona discloses
only general guidelines as to particle size, and does not teach
one of ordinary skill in the art specific size distribution such as
a D50.
(App. Br. 2.)
We do not find this argument persuasive because Meyer evidences
that the ordinary artisan was aware that particle size distributions were
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Application 12/171,969
obtainable by sieving (FF 6) and Rona teaches tradeoffs in the use of
different particle sizes in cosmetic applications (FF 5). Thus, in this
obviousness analysis, the ordinary artisan interested in obtaining particular
effects regarding luster or hiding power would have recognized that the
particle size distributions represent a results optimizable variable as
expressly demonstrated by Rona (FF 5). See In re Applied Materials, Inc.
692 F.3d 1289, 1298 (Fed. Cir. 2012) (“The mere fact that multiple result-
effective variables were combined does not necessarily render their
combination beyond the capability of a person having ordinary skill in the
art.”) Here, Rona establishes the optimizability of particle size, stating
“[different coloring effects can be achieved by the right choice of pearl
luster pigments depending on their particle size” (FF 4).
Appellants contend that:
From the technical data sheets, it can be seen that the D50 values
of Xirona® Color Travel Pigments such as those of Rona are far
less than the stated value of the present claims, for example, 16-
22, 16-23, 21-27, 17-23 and 19-25. Thus, there is no evidence
that such typical Xirona® Color Travel Pigments of Rona would
anticipate the present claims
(App. Br. 3).
We find this argument unpersuasive because the instant rejection is
for obviousness not anticipation. Thus, the issue is not whether Rona
teaches a specific composition anticipating the D50 particle size required by
claim 1 but rather whether Rona when combined with Meyer render the
recited D50 particle size a matter of routine optimization (FF 3—5). As
already noted, we conclude that it does.
Appellants contend that:
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The document called “Large Particle Size Pigment Technology
- New Possibility for Cosmetic Application” from current
inventor Dr. Peng shows on slides 15 and 16 the influence of
the effect versus the particle size. As mentioned in the Rona
reference, pearlescent pigments with a large particle size show a
glitter effect but at the same time the hiding power will be
reduced dramatically and the skin feeling is less smooth.
(App. Br. 3.) Appellants contend that “it was not at all obvious that large
particles are suitable for cosmetic applications due to their less smooth skin
feeling and limited or lessened hiding power. By the selection of a specific
D50 particle size distribution it is possible to use color travel pigments even
with a particle size of up to 250pm in cosmetic formulations” (App. Br. 4).
We are not persuaded because
obviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [WinnerInt7Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n.8 (Fed. Cir. 2000)] (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.”).
Where the prior art contains “apparently conflicting” teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered “for its
power to suggest solutions to an artisan of ordinary skill. . . .
considering] the degree to which one reference might
accurately discredit another.” In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991).
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
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Here, Rona provides specific guidance regarding tradeoffs between
gloss and hiding effect based upon particle size (FF 4). Thus, that the
ordinary artisan would have needed to select which effect, gloss or hiding
effect, was desired neither teaches away nor renders unobvious any specific
particle size distribution. Moreover, claim 1 does not require particles larger
than 150 pm because the D50 particle size range starts at 60 pm, a
distribution that does not necessarily encompass particles larger than 150 pm
so the argument regarding particle sizes up to 250 pm is not commensurate
with the claim.
Appellants contend that “even if D50 were known to be result-
effective, selection of the presently claimed values is not routine
optimization and especially so in view of the unexpected ability to obtain
good skin feel despite large particle size” (App. Br. 5).
We do not find this argument persuasive. First, Appellants statement
that selection of particle sizes within the range expressly taught by Rona (FF
5) is not routine optimization represents attorney argument without
evidentiary basis. However, “attorney argument [is] not the kind of factual
evidence that is required to rebut a prima facie case of obviousness.” In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). This argument is also
effectively rebutted by Rona’s teaching that effects “can be achieved by the
right choice of pearl luster pigments depending on their particle size” (FF 4).
Rona is directly suggesting optimization based on particle size.
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That is, the Peng Declaration5 does not provide specific evidence
comparing skin feel with particular particle size distributions, instead simply
stating “the discovery that color travel pigments having a D50 value that is
comparatively large, i.e., greater than 60 microns, would be suitable for
cosmetics ... is highly unexpected” (Peng Decl. 2). In addition, Appellants
provide no persuasive evidence of any unexpected result regarding skin feel
and particle size. No comparison with specific products of Rona or other
prior art references is provided in the Peng Declaration. See In re Baxter
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“when unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”).
No supporting evidence, only PowerPoint slides presenting summary
information, is provided by the Peng Declaration. We therefore find the
Declaration unpersuasive of unexpected results. See In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroborations
warrants discounting the opinions expressed in the declarations.”).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
prior art renders claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Rona, Schmidt, and Meyer. Claims 3—15 and 18—
24 fall with claim 1.
5 Declaration of Dr. Qinyun Peng, dated Dec. 2, 2013.
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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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