Ex Parte Sakuma et al

Patent Trial and Appeal Board

Apr 25, 2018

14107091 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/107,091 12/16/2013
21839 7590 04/27/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Satoshi SAKUMA
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.
1009682-000218 5102
EXAMINER
CAO,PING
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI SAKUMA, MITSUO AZUMA,
and YOSUKE IKEMOTO 1
(Applicant: MITSUBISHI PENCIL COMP ANY, LIMITED)
Appeal2017-001910
Application 14/107 ,091
Technology Center 1600
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
removing type aqueous manicure composition.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Mitsubishi Pencil
Company, Limited. (Appeal Br. 2.)
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Application 14/107 ,091
STATEMENT OF THE CASE
Background
"The present invention relates to a removing type aqueous manicure
composition, more specifically to a removing type aqueous manicure
composition which can readily be removed by hot water and soaps without
using a nail remover containing such as acetone." (Spec. 1, 11. 12-16.)
Claims on Appeal
Claims 1-3 are on appeal (Claims Appendix, Appeal Br. 12),2 and are
reproduced below ( emphases added):
1. A removing type aqueous manicure composition
comprising at least water, an emulsion of an acrylic base resin
which has a glass transition temperature (Tg) of 50°C or higher,
and is alkali-soluble, and which has no film-forming property at
25°C, a film forming aid, and a pH modifier which is non-volatile
at ambient temperature.
2. The removing type aqueous manicure compos1t10n as
described in claim 1, further comprising a pH modifier which is
volatile at ambient temperature.
3. The removing type aqueous manicure compos1t10n as
described in claim 1, comprising the emulsion of the alkali-
soluble acrylic base resin having an acid value of 40 mg KOH/g
or more.
Examiner's Rejections
1. Claim 1 stands rejected under pre-AIA 35 U.S.C. § 102(b) as
2 The Claims Appendix is not numbered, but follows page 11 of the Appeal
Brief.
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anticipated by Mougin. 3 (Final Act. 3--4.)4
2. Claims 1 and 3 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Mougin. (Id. at 6-7.)
3. Claims 1-3 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Mougin and Mondet. 5 (Id. at 7-8.)
DISCUSSION
Except as may otherwise be indicated, we adopt the Examiner's
findings, analysis, and conclusions as our own, including with regard to the
scope and content of, and motivation to combine, the prior art, as set forth in
the Final Action (3--4, 6-8) and Answer (Ans. 3-10). We discern no error in
the rejections of claim 1 as anticipated and claims 1-3 as obvious.
Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection of claim 1 under pre-AIA 35 U.S.C. § I02(b).
Analysis
The Examiner finds that Mougin anticipates claim 1. (Final Act. 3--4;
Ans. 3-7.) In making that finding, the Examiner finds that the ordinary and
customary meaning in the art for the claim term "an emulsion of an acrylic
base resin" is a polymer dispersion resulting from emulsion polymerization
(also known as acrylic emulsion or latex). (Ans. 3-5.) See In re Translogic
Tech., Inc., 504 F.3d 1249, 1256-57 (Fed. Cir. 2007) (discussing ordinary
3 Mougin et al., US 6,531,113 Bl, issued March 11, 2003 ("Mougin").
4 Final Office Action dated July 6, 2015.
5 Mondet et al., US 5,817,304, issued Oct. 6, 1998 ("Mondet").
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and customary meaning in the context of the broadest reasonable
interpretation standard during examination). That finding is based on
publications in the art by Herk6 and the American Chemical Society, 7 as
well as the lack of any definition in the Specification for the term that
deviates from its ordinary and customary meaning. (Id.) Appellants do not
point to any definition of the term "an emulsion of an acrylic base resin" in
the Specification or otherwise persuasively contest the Examiner's
construction of that term.
We agree with and adopt the Examiner's construction of the claim
term "an emulsion of an acrylic base resin," and further agree with the
Examiner that Mougin discloses every limitation of, and thus anticipates,
claim 1. Appellants contest the Examiner's anticipation finding with several
arguments.
Appellants contest the Examiner's reliance on the propanol compound
(AMP) of Mougin8 by arguing that "[t]he propanol compound is explicitly
used to neutralize the oligomer and not to modify the pH of the
composition."9 (Appeal Br. 6.) We are not persuaded. Appellants do not
6 Herk et al., Emulsion Polymerization, Encyclopedia of Polymer Science
and Technology, 1-3 (2009).
7 American Chemical Society, Acrylic Emulsion Technology: From plastics
to paints it changed our world, 3 (2008).
8 The Examiner identifies this compound as 3-amino-methyl-1-propanol
(Final Act. 4) but Examples 2 and 3 ofMougin refer to 2-amino-2-methyl-1-
propanol and 2-amino-2-methylpropanol, respectively. (See Mougin col. 12,
1. 12 and 1. 56.)
9 Contrary to Appellants' contention, we do not understand the Examiner's
rejection as relying on "such oligomers [to] meet the film-forming aid and
the pH modifier" limitations recited in claim 1. (Appeal Br. 6.) Rather,
Mougin describes the anionic oligomers and the "non-volatile monobasic
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persuasively explain how neutralization does not modify pH, particularly in
light of Appellants' description of AMP as a pH modifier. (See Spec. 9, 11.
8-10: "[fJor example ... aminomethylpropanol ... can be used as the pH
modifier of non-volatile at ambient temperature.")
Appellants argue that Examples 2 and 3 of Mougin "do not relate to
an emulsion, but rather to a solution," citing to Mougin's use of the word
"solution." (Appeal Br. 6-7.) Appellants further contend that Mougin's
Examples 2 and 3 "do not contain the claimed emulsion of an acrylic base
resin." (Id. at 6.)
We are not persuaded. Based on the proper construction of "an
emulsion of an acrylic base resin," the polymers and copolymers disclosed
by Mougin, such as acrylic acid, fall within the scope of "an emulsion of an
acrylic base resin." (See Ans. 5, Mougin col. 4, 11. 23---67; col. 5, 11. 1-14.)
Moreover, Example 2 and Example 3 of Mougin include acrylic acid.
(Mougin col. 11, 1. 51; col. 12, 1. 34.) We also note that claim 1 is to a
"composition" that includes, as a component thereof, "an emulsion of an
acrylic base resin" (i.e., a polymer dispersion resulting from emulsion
polymerization). (Appeal Br. 12.)
Appellants contend that "[ t ]he cited examples of Mougin et al. also do
not relate to a removing type aqueous manicure composition as recited in
claim 1, but rather to an aerosol lacquer medium with a maximum VOC
content of 55%." (Appeal Br. 7.) Appellants further contend that, to the
compound" as separate components of the Mougin composition. (See
Mougin col. 3, 11. 27-33, col. 4, 11. 1-10, col. 11, 1. 40-col. 12, 1. 67 (tert-
butyl acrylate and isobutyl acrylate being the film forming oligomer and
AMP being the pH modifier).)
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Application 14/107 ,091
extent Mougin "mentions compositions that can be applied to the nails, the
design of such compositions is contrary to that of the present invention,"
referring to Mougin's description of such nail compositions as being "easily
and completely removed simply by washing the hands with water." (Id.,
citing Mougin col. 9, 11. 64---67.)
We are not persuaded. As an initial matter, the teachings of Mougin
are not limited to Examples 2 and 3. Appellants' argument that the nail
compositions of Mougin are "contrary to that of the present invention" is
apparently based on the contention that Mougin's nail compositions can be
removed without soap and hot water, whereas Appellants' composition
requires removal with "hot water and soaps." (Compare Mougin col. 9, 11.
64---67 with Spec. 1, 11. 12-16.) That argument is also unpersuasive. Here,
the Examiner has established a prima facie case that the claimed
composition is anticipated by Mougin, and Appellants have not provided
evidence or persuasive arguments to the contrary. See In re Spada, 911 F .2d
705, 708-709 (Fed. Cir. 1990) ("The discovery of a new property or use of a
previously known composition ... can not impart patentability to claims to
the known composition."). 10
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claim 1 as anticipated by Mougin.
10 Appellants do not explain why, if Mougin's compositions can be removed
with water alone, those compositions would not also be removable with hot
water and soaps. Thus, the alleged removal property of claim 1 does not
appear to be new in view ofMougin's disclosure. See In re Preda, 401 F.2d
825, 826 (CCP A 1968) ("in considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.")
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Rejection No. 2
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection of claims 1 and 3 under pre-AIA 35 U.S.C. § 103(a).
Analysis
The Examiner concludes that claims 1 and 3 are obvious in view of
Mougin. (Final Act. 6-7.) Because claim 1 is anticipated, it is also obvious.
See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) ("anticipation is
the epitome of obviousness") ( citations omitted).
As to claim 3, the Examiner finds that the acid value taught by
Mougin overlaps the acid value recited in claim 3, thereby establishing a
prima facie case of obviousness. (Final Act. 6-7; Ans. 7-9.) 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.").
Appellants contest the rejection of claim 3 by arguing that it involves
"the selective piecing together of isolated teachings" of Mougin, that the
Examiner's acid value calculation is "incorrect," and that the oligomer
present in Examples 2 and 3 "would not have the claimed acid number."
(Appeal Br. 8-9.) We are not persuaded. The Examiner's reliance on
specific teachings of Mougin (e.g., claims 17-20) is proper in an
obviousness rejection. See In re Arkley, 455 F.2d 586, 587 (CCPA 1972)
("picking and choosing may be entirely proper in the making of a 103,
obviousness rejection"). Furthermore, Appellants do not explain how or
whether the alleged inaccuracy in the Examiner's acid value calculation
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changes the finding of overlapping acid values, particularly in light of the
Examiner's revision of the calculation in the Answer. (See Ans. 8.) Finally,
as mentioned above in connection with the anticipation of claim 1, the
teachings of Mougin are not limited to Examples 2 and 3.
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claims 1 and 3 as obvious in view of Mougin.
Rejection No. 3
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection of claims 1-3 under pre-AIA 35 U.S.C. § 103(a).
Analysis
The Examiner concluded that claims 1-3 are obvious in view of
Mougin and Mondet. (Final Act. 7-8.) The obviousness of claims 1 and 3
in view of Mougin alone is discussed above, and we thus focus on the
rejection of claim 2, which depends on claim 1 and recites "further
comprising a pH modifier which is volatile at ambient temperature."
(Appeal Br. 12.)
In rejecting claim 2, the Examiner finds that Mondet teaches nail
varnish compositions that are substantially the same type aqueous based nail
varnish composition containing acrylic polymer as taught by Mougin. (Final
Act. 8.) The Examiner further finds that Mondet teaches that "in order to
make the polymer compatible with water (i.e. to say in order to prevent the
precipitation of the polymer in the composition), the anionic groups are
preferably neutralized with a base to a degree of neutralization ranging from
5 to 100%." (Id.) The Examiner further finds that Mondet teaches that "[a]
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volatile base such as ammonia or triethylamine is preferably used." (Id.
(underline omitted).)
Based on the Examiner's findings regarding Mougin and Mondet, the
Examiner concludes that
(Id.)
it would have been prima facie obvious for one skilled in the art
to combine the teachings from Mougin [] with Mondet [] and to
make modifications to the removable nail varnish composition
taught by Mougin [] by further adding volatile pH modifier (i.e.
ammonia or triethylamine) taught by Mondet [] and expect
success because ( 1) both Mougin [] and Mondet [] teach
substantially the same type aqueous based nail varnish
composition containing acrylic polymer having high glass
transition temperature; (2) because Mougin [] teach that the pH
of the compositions may be adjusted to the selected value by
means ofbasifying or acidifying agents usually used in cosmetics
(col. 5, line 46-49); and [(3)] because Mondet [] teach using of
volatile base such as ammonia or triethylamine to make the
polymer compatible with water (i.e. to say in order to prevent the
precipitation of the polymer in the composition[)] (col. 3, line 25-
30.
Appellants argue that "there is no proper basis for making the
combination" of Mougin and Mondet because "the oligomers [ of Examples
2 and 3 ofMougin] are already neutralized" (i.e. described as "100%
neutralized"). (Appeal Br. 9--10; Reply Br. 2.) We are not persuaded. The
teachings of Mougin are not limited to Examples 2 and 3, and Mougin
teaches that the oligomers of its invention may "be partially or totally
neutralized," and that the pH of the compositions "may be adjusted to the
selected value by means of basifying or acidifying agents usually used in
cosmetics." (Mougin col. 4, 11. 1-3 and col. 5, 11. 46-49.)
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Appellants argue that, even if there existed a proper basis for
combining Mougin and Mondet, the functions of the non-volatile pH
modifier and volatile pH modifier described in the Specification "are
different from the neutralizing function described in [Mougin and Mondet]."
(Appeal Br. 10; Reply Br. 2--4.) 11 We are not persuaded. Even assuming
that contention is accurate, it does not overcome the prima facie case of
obviousness because the reason for combining the non-volatile pH modifier
of Mougin and the volatile pH modifier of Mondet need not be the same as
Appellants' reason for combining non-volatile and volatile pH modifiers.
See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ("In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls."). Moreover,
because Appellants' non-volatile pH modifier may comprise AMP (Spec. 9,
1. 8) as taught by Mougin and Appellants' volatile pH modifier may
comprise ammonia (Spec. 9, 1. 12) as taught by Mondet, a person of skill in
the art would reasonably expect that AMP and ammonia would function the
same in both the claimed composition and the composition as taught and
suggested by the combined teachings of Mougin and Mondet. See In re
Papesch, 315 F.2d 381,391 (CCPA 1963) ("From the standpoint of patent
law, a compound and all of its properties are inseparable; they are one and
the same thing."). 12
11 Appellants state that "[t]here is no difference in the roles between both pH
modifiers before application to the nail." (Reply Br. 3.) We note that claims
1-3 read on compositions before application to the nail.
12 Appellants' argument that the "preferred property" of the present
invention is not "disclosed, suggested or appreciated" by Mougin and
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Appellants further argue that Mondet "does not recognize the
advantages [ ofJ following the teachings of the present invention," but rather
"seeks a composition similar to organic solvent compositions that are
difficult to remove by simple washing with water or with the aid of a
shampoo." (Appeal Br. 10, citing Mondet 1, 11. 21-25 and col. 6, 11. 1-7 13 .)
We are not persuaded. Mondet was cited for its teaching of the benefits of
including a volatile pH modifier in a composition similar to Mougin. (Final
Act. 8.) Moreover, the citations to Mondet relied on by Appellants do not
support their contention. Mondet at col. 1, 11. 21-25 refers to prior art
compositions. Mondet at col. 5, 1. 66-col. 6, 1. 4 states that "properties of
sheen and hardness of the film as those obtained with a film-forming
composition in solvent medium can be obtained" ( emphasis added).
Similarly, Appellants state that their "coating film after dried is hard and has
a high glossiness" (i.e. sheen). (Spec. 14, 11. 11-12.)
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claims 1-3 in view of Mougin and Mondet. 14
Conclusions
A preponderance of evidence of record supports the Examiner's
finding that claim 1 is anticipated by Mougin, and the Examiner's
Monde (Reply Br. 4) is unavailing for similar reasons. See Spada, 911 F .2d
at 708-709.
13 The cite for the quote relied upon by Appellants is col. 5, 1. 66-col. 6, 1. 4.
14 We acknowledge, but are unpersuaded by, Appellants contention that the
Examiner engaged in improper hindsight. (Appeal Br. 9.) Appellants point
to no evidence that any of the Examiner's findings were beyond the level of
ordinary skill at the time of the invention or could have been taken only
from Appellants' Specification. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
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conclusions that claims 1 and 3 are obvious in view of Mougin and claims
1-3 are obvious in view of Mougin and Mondet.
SUMMARY
We affirm the rejections of all claims on appeal.
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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