Ex Parte Samain et al

Patent Trial and Appeal Board

Aug 9, 2018

13378569 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/378,569 07/18/2012
92687 7590 08/13/2018
JONES ROBB, PLLC (w/Nony & Partners)
1420 Spring Hill Road
Suite 325
McLean, VA 22102
FIRST NAMED INVENTOR
Henri Samain
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.
1003.0014-00000 9848
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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):
nony@nony.fr
docketing@jonesrobb.com
susanne.jones@jonesrobb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRI SAMAIN, CHRISTOPHE DUMOUSSEAUX, and
CAROLE LE MERRER
Appeal2016-008447
Application 13/378,569 1
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of applying makeup to human keratinous fibers, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Two component make up systems are known, where the first
composition includes a film-forming polymer, and the second composition
includes solid particles. (Spec. 1.) Appellants contend that "[t]here exists a
1 Appellants identify the Real Party in Interest as L'Oreal S.A. (Appeal Br.
2.)
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need to create, in [an] easy manner, attractive visual effects on keratinous
fibers, in particular the eyelashes, that are both long lasting and easy to
remove." (Spec. 2.) Appellants' invention is directed to achieving that
result using a two-component system, where the first component is a
composition that forms a discontinuous deposit on the fibers. (Id.)
Claims 1-13, 16, 18, 22-25, 27, and 28 are on appeal. 2 Claim 1 is
representative and reads as follows:
1. A method of applying makeup to human keratinous fibers,
said method comprising:
applying on the fibers an adhesive composition
comprising adhesive particles of average size greater than 1 µm,
wherein the applied adhesive composition forms a
discontinuous deposit on the fibers; and
after applying the adhesive composition, applying on the
fibers a loose powder composition.
(Appeal Br. 24.)
The claims were subject to an election of species of the adhesive and
examination proceeded with the adhesive being poly(2-ethylhexyl acrylate).
(Non-Final Action 2. 3) In cases such as these, where the Examiner has
required Applicants to elect a species for examination, the issue on appeal is
the patentability of the single elected species. As such, our discussion is
limited to that claim scope and we take no position respecting the
2 Claims 17 and 19-21 are also pending but have been withdrawn from
consideration.
3 The Non-Final Action, dated April 15, 2015, was entered after Applicants
filed a request for continued examination under 37 CPR 1.114. (Non-Final
Action 2.)
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patentability of the broader generic claims, or the remaining, non-elected
species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).
The following grounds of rejection by the Examiner are before us on
review:
Claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27 under 35 U.S.C. § I03(a)
as unpatentable over Ramin, 4 Maitra, 5 and API Microspheres. 6
Claims 1-13, 16, 18, 22-25, 27, and 28 under 35 U.S.C. § I03(a) as
unpatentable over Ramin, Maitra, API Microspheres, and Simon. 7
DISCUSSION
Claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27
The Examiner finds that Ramin teaches a method of making up
keratin fibers, such as eyelashes, that includes applying a first coat of a
cosmetically acceptable medium and at least one film-forming polymer and
then, prior to that first coat drying, applying a second coat of solid particles
having a substantially spherical or ovoid shape and that are insoluble in the
cosmetically acceptable medium. (Non-Final Action 4.) These coatings
correspond, respectively, to the adhesive composition and the loose powder
composition of claim 1. The Examiner explains that Ramin teaches many
film-forming polymers maybe used, including acrylic polymers, such as 2-
ethylhexyl methacrylate, and that the polymer can be dissolved or dispersed
4 Ramin et al., US 6,367,484 Bl, issued Apr. 9, 2002.
5 Maitra et al., US 2007/0140991 Al, published June 21, 2007.
6 Advanced Polymers International, Microspheres,
httn://www.geltac.com/microsnheres/ last visited July 16, 2018.
7 Simon et al., US 2005/0118122 Al, published June 2, 2005.
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in the form of particles. (Non-Final Action 4--5.) The Examiner also notes
that solid particles of the second coat have an average size ranging from 2.5
microns to 5 mm and that the second coat can be applied in a discontinuous
manner. (Non-Final Action 5.)
The Examiner recognizes that Ramin does not teach that the first
coating is an adhesive composition which forms a discontinuous deposit on
the keratinous fibers. (Non-Final Action 5.) However, the Examiner
contends that this deficiency is rendered obvious by Maitra and API
Microspheres. (Non-Final Action 6-8; Ans. 11.)
The Examiner finds that Maitra teaches methods for forming a film on
keratin fibers such as eyelashes, where the film is long-lasting, flexible,
transfer-resistant, water-proof, and comfortable to wear. (Non-Final Action
6.) The film is created by the application of a pressure sensitive adhesive
polymer, alone or in combination with film formers, tackifiers or plasticizers
"to deliver and hold coloring agents on the surface resulting in films that are
uniformly colored, glossy, non-tacky and flexible." (Non-Final Action 7.)
The Examiner notes that Maitra teaches preferred pressure sensitive
adhesives are acrylic ones, such as a poly(2-ethylhexyl acrylate), which is
the same polymer as the elected species. (Non-Final Action 7.) One such
polymer, disclosed by Maitra, is Gel-Tac, which is a 40% solids aqueous
dispersion of 15 micron tacky acrylic microspheres. (Non-Final Action 7;
Ans. 11.) The Examiner notes that API Microspheres discloses that Gel-Tac
microspheres "have a unique physical structure in which large particles limit
physical contact with the surface to form a discontinuous film that results in
low peel, removability, and stable adhesive tack." (Non-Final Action 7 .)
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The Examiner explains that it would have been obvious to one having
ordinary skill in the art to have used the pressure sensitive adhesive of
Maitra in the first composition of Ramin "in order to obtain a film which is
long-lasting, flexible, transfer-resistant, water-proof, and comfortable to the
wearer (Maitra, abstract)." (Non-Final Action 7-8.) The Examiner contends
that one of ordinary skill in the art would have had a reasonable expectation
of success in so using poly(2-ethylhexyl acrylate) "because Ramin teach[ es]
film-forming polymers can be acrylic polymers of 2-ethylhexyl methacrylate
( column 3, lines 63-65; column 4, lines 19-20) that can be dissolved or
dispersed in the form of particles (column 6, lines 15-22)." (Non-Final
Action 8; Ans. 11.) According to the Examiner, in using the poly(2-
ethylhexyl acrylate) taught by Maitra as the polymer in Ramin, one would
inherently obtain a discontinuous film as evidenced by API "Microspheres."
(Non-Final Action 7; Ans. 11 ("A necessary (inherent) consequence of the
application of the 15 micron micro spheres is the formation of a
discontinuous deposit.").)
We disagree with the Examiner's conclusion that Ramin, Maitra, and
API "Microspheres" in combination render the claimed invention obvious.
In particular, we agree with Appellants that Ramin is concerned with
producing a homogeneous and continuous film with its first coat that
includes the at least one film forming polymer (Appeal Br. 9-11; Reply Br.
3--4; Ramin 1: 14--24). Ramin indicates that the aim of the invention is "to
provide a make-up composition for obtaining a relief make-up" which is
"different from that of the continuous and homogeneous films currently
obtained with the products available on the market" and "having good
staying power over time." (Ramin 1 :29-38.) According to Ramin, the
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difference from its invention and the prior art continuous homogeneous
films, however, is a sculptural relief that is generated by the deposit of a coat
of solid particles over the first continuous film layer, (see generally id. at
2: 1--43, 2:63-3: 16). There is not any disclosure to suggest that the first film
layer of Ramin should be a discontinuous film. Indeed, to the contrary, as
Ramin discloses, if one of the two compositions for the two layer system
comprises a film-forming polymer in the form of particles dispersed in a
medium, (which could result in discontinuous film), an additional film
forming agent such as "coalescers" or plasticizers can be added "[t]o
improve the film-forming properties" of that composition. (Id. 6:64--7:9.)
Likewise, Maitra is also concerned with forming continuous films on
a biological surface (Maitra ,r 27), and doing so using pressure sensitive
adhesives so as to deliver and hold coloring agents on that surface (id. ,r 26).
It is evident from reading the entirety of Maitra's disclosure that its aim is to
produce a continuous film, not a discontinuous one as claimed. For instance,
Maitra discloses that it is important that the compositions used to form the
films on the biological surface have a minimum film forming temperature
(MFFT) which is the "temperature at which a dispersion of pressure
sensitive adhesive colloidal particles will coalesce when placed on a
substrate as a thin film." (Maitra ,r 36.) Maitra explains that "coalescence"
"refers to the disappearance of the boundary between two particles in contact
or between one of these and a bulk phase followed by changes of shape
leading to a reduction of the total surface area." (Id. ,r 36.) Thus, the goal
described in Maitra is to produce continuous film.
Maitra explains that the composition will have a glass transition
temperature (Tg) that is within ±30 QC or between about 5 and about 70 QC.
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(Id. ,r,r 27, 28, 37, 38.) Such a Tg is important because it facilitates the
production of a continuous film, in contrast to the claims which require "a
discontinuous deposit on the fibers. Maitra explains that it is believed that
films with such a T g result in films that "exhibit superior particle
coalescence, resulting in superior mechanical performance in comparison to
films of the prior art" thereby providing "cosmetic compositions which
obtain heretofore unachievable levels of transfer resistance, flexibility, and
comfort." (Id. ,r,r 35, 36.) Maitra further explains that the MFFT will be a Tg
that is above the pressure sensitive adhesive polymers, thereby resulting
insolvent evaporation and coalescence occurring simultaneously, which
"gives rise to particle deformation, resulting in a strong stable linkage of
particles, thus yielding films that are mechanically tough." (Id. at ,r 37.)
Maitra explains that if the MFFT is below the T g of the pressure sensitive
adhesive polymer, then particle coalescence is minimal at best, "which leads
to little or no particle deformation," resulting in reduced intermolecular
interactions and thus the mechanical properties such as strength are reduced.
(Id.) Maitra explains, though, that such pressure sensitive adhesive
polymers can still be used, but that they should be combined with (a)
plasticizers so as to lower the T g (id. ,r,r 53, 55), (b) tackifiers to "lend the
adhesive composition sufficient viscous flow properties" (id. ,r,r 56, 66),
and/ or ( c) film formers to adjust for the achievement of the necessary MFFT
(id. ,r,r 60-61 ("the secondary film former can be added with the proviso that
the pressure sensitive adhesive requires glass transition temperature
adjustment to meet the criteria described herein")).
In short, we agree with Appellants (Appeal Br. 14) that like Ramin,
Maitra is concerned with a film forming composition that forms a
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continuous film. Consequently, although Maitra may disclose the use of
Gel-Tac as a pressure sensitive adhesive for use in a composition for
forming a film on keratin fibers such as eyelashes, it does so in the context
of a continuous film, i.e., that such a polymer be used in a composition that
achieves an MFFT to result in a continuous film. It is not apparent from
Maitra that Gel-Tac alone would result in a composition that could form a
continuous film or whether it would need to be combined with plasticizers or
film-formers, and if it would need to be combined with other agents to result
in a continuous film, what those should be. In fact, from API Microspheres,
it would appear that Gel-Tac by itself would form a discontinuous film.
(API Microspheres 1.) In light of the foregoing, we do not agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to modify the film forming polymer of the first film forming composition of
Ramin, which is the continuous film structure onto which a second layer is
applied (the second layer resulting in a relief structure), by substituting
therein, as the film-forming polymer, the pressure sensitive adhesive poly(2-
ethylhexyl acrylate) ofMaitra. For the reasons discussed, the Examiner's
evidence is lacking in establishing that one of ordinary skill in the art would
have had a reasonable expectation of success, based on the teachings of
Maitra and API Microspheres, in achieving the continuous film desired by
Ramin for its first film-forming composition if one were to substitute in Gel-
Tac as the film-forming polymer. Indeed, that API Microspheres teaches
that Gel-Tac would result in a discontinuous film, would suggest that one of
ordinary skill in the art would not have had a reasonable expectation of
success in the Examiner's proposed combination.
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We thus find that the record does not support the Examiner's
conclusion that a person of ordinary skill in the art would have been
motivated to modify the references in the Examiner's proposed manner to
arrive at the claimed invention. Thus, for the reasons discussed, we reverse
the Examiner's rejection of claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27 under
35 U.S.C. § 103(a) as unpatentable over Ramin, Maitra, and API
Microspheres.
Claims 1-13, 16, 18, 22-25, 27, and 28
In rejecting claims 1-13, 16, 18, 22-25, 27, and 28 as being obvious
over Ramin, Maitra, API Microspheres, and Simon, the Examiner relies on
the erroneous obvious substitution conclusion concerning Ramin and Maitra
discussed above. (See Non-Final Action 7.) The Examiner does not rely on
Simon to cure that defect. Consequently, for the reasons discussed above,
we reverse the Examiner's rejection of claims 1-13, 16, 18, 22-25, 27, and
28 under 35 U.S.C. § 103(a) as unpatentable over Ramin, Maitra, API
Microspheres, and Simon.
SUMMARY
We reverse the rejection of claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27
under 35 U.S.C. § 103(a) as unpatentable over Ramin, Maitra, and API
Microspheres, but our reversal is limited to the claims directed to the elected
species.
We also reverse the rejection of claims 1-13, 16, 18, 22-25, 27, and
28 under 35 U.S.C. § 103(a) as unpatentable over Ramin, Maitra, API
Microspheres, and Simon, but again our reversal is limited to the claims
directed to the elected species.
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REVERSED
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