Ex Parte Sasada et al

Patent Trial and Appeal Board

Apr 19, 2017

13511378 (P.T.A.B. Apr. 19, 2017)

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.
IWI-35780 9510
EXAMINER
CABRAL, ROBERT S
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
13/511,378 05/23/2012
7609 7590 04/20/2017
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
Kaori Sasada
04/20/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAORI SASADA, NORIKO TOMITA,
TOMOKO IKED A, and TOMO OSAWA1
Appeal 2017-006322
Application 13/511,378
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to lip cosmetics.
The Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 29, 43, 46—50, 56, and 59—64 under 35 U.S.C. § 103(a) for
obviousness over Amaud,2 Lu,3 Yuki,4 Hoffmann,5 and Patil.6 App. Br. 9.
1 Appellants identify SHISEIDO COMPANY, LTD., as the real party in
interest. App. Br. 3.
2 US 2001/0031269 (published Oct. 18, 2001).
3 EP 1 661 549 A1 (published May 31, 2006).
Appeal 2017-006322
Application 13/511,378
Claims 29 and 50, the independent claims on appeal, illustrate the
claimed subject matter and read as follows (App. Br. 22, 23 (emphasis
added)):
29. A lip cosmetic comprising:
(a) 10 to 30 mass% of hydrogenated polyisobutene;
(b) 30 to 70 mass% of one or more kinds of methyl
phenyl silicones that separate when mixed with (a) at 25 °C
wherein the methyl phenyl silicone(s) comprises trimethyl
pentaphenyl trisiloxane and optionally one or more selected
from the group consisting of diphenylsiloxy phenyl
trimethicone and diphenyl dimethicone;
(c) 0.5 to 8 mass% of one or two kinds of lipophilic
surfactants that does not separate both when mixed with
component (a) and when mixed with component (b) at 90° C
wherein the lipophilic surfactant(s) is selected from the group
consisting of sorbitan sesquiisostearate and propylene glycol
mono stearate;
(d) 5 to 12 mass% of a wax; and
5 mass % or less of a silicone-treated pearlescent agent as
a coloring material.
50. A lip cosmetic comprising the following components
and none of volatile oil components'.
(a) 10 to 30 mass% of hydrogenated polyisobutene;
(b) 30 to 70 mass% of at least two kinds of methyl
phenyl silicones that separate when mixed with (a) at 25 °C
wherein the methyl phenyl silicones comprise trimethyl
pentaphenyl trisiloxane and diphenylsiloxy phenyl
trimethicone, and optionally diphenyl dimethicone, wherein
said two kinds of methyl phenyl silicones include the
diphenylsiloxy phenyl trimethicone at 1 to 17 mass % relative
to the total amount of the cosmetic;
4 JP 2010-090079 (published April 22, 2010) (as translated).
5 EP 2 025 321 A1 (published Feb. 18, 2009).
6 US 2004/0156806 A1 (published Aug. 12, 2004).
2
Appeal 2017-006322
Application 13/511,378
(c) 0.5 to 8 mass% of one or two kinds of lipophilic
surfactants that does not separate both when mixed with
component (a) and when mixed with component (b) at 90 °C
wherein the lipophilic surfactant(s) is selected from the group
consisting of sorbitan sesquiisostearate and propylene glycol
mono stearate;
(d) 5 to 12 mass% of a wax; and
5 mass % or less of a silicone-treated pearlescent agent as
a coloring material.
OBVIOUSNESS
The Examiner’s Prima Facie Case
The Final Action from which this appeal is taken does not expressly
state, or direct us to, the obviousness rationale underlying the appealed
rejection. See Final Action 2 (entered January 28, 2016). Nonetheless, we
note that the Examiner’s reasoning appears in the previous Non-Final
Action. See Non-Final Act 2—6 (entered September 10, 2015).
The Examiner cited Amaud as disclosing a lip cosmetic that contained
several of the ingredients required by Appellants’ claims, and stated in
particular that “Amaud teaches phenyl trimethicones in general but does not
expressly disclose diphenylsiloxy phenyl trimethicone or trimethyl
pentaphenyl trisiloxane (current claims 29(b) 46, and 50, 51, 54-56[]).”
Non-Final Act. 4.
The Examiner cited Fu, Yuki, and Hoffman as evidence that
diphenylsiloxy phenyl trimethicone and trimethyl pentaphenyl trisiloxane
were known in the art to be phenyl trimethicones useful in cosmetic
compositions, including lip cosmetics. Non-Final Act. 4—5. The Examiner
cited Patil as evidence that sorbitan sesquiisostearate was a suitable
surfactant in lipsticks that also contain phenyl trimethicones. Id. at 5.
3
Appeal 2017-006322
Application 13/511,378
Based on the references’ teachings, the Examiner concluded as
follows:
It would have been prima facie obvious to one of
ordinary skill in the art at the time of the invention to combine
the teachings of Amaud, Lu et al., Yu et al. and Patil et al. and
reach the instant claims. One of ordinary skill in the art would
find suggestion and/or motivation to combine at least the
Amaud, Lu et al., Yu et al. and Patil et al. references because
they teach cosmetic compositions comprising similar non­
volatile silicone compounds useful for preparing cosmetic stick
products such as lip stick. See In re Kerkhoven, 626 F.2d 846,
850, 205 USPQ 1069, 1072 (CCPA 1980) (“It is prima facie
obvious to combine two compositions each of which is taught
by the prior art to be useful for the same purpose, in order to
form a third composition to be used for the very same purpose
.... [T]he idea of combining them flows logically from their
having been individually taught in the prior art.”)
Non-Final Act. 5.
The Examiner further reasoned as follows:
[A] skilled artisan would have reasonable expectation of
success in the combination of references, in particular
incorporating diphenylsiloxy phenyl trimethicone, in view of
Hoffman’s teaching of diphenylsiloxy phenyl trimethicone as
an obvious variant of the non-volatile silicone compounds
taught by Amaud.
Further, regarding trimethyl pentaphenyl trisiloxane, is it
used widely in the art of lipstick or lipgloss formulation and is a
well-known skin conditioning agent and emollient. It is also
considered a non-volatile oil that remains on the lips to give a
durable gloss. Where the objective technical problem appears to
be the provision of an alternative composition for lips having a
glossy finish, the skilled person would consider adding
trimethyl pentaphenyl trisiloxane without any inventive
thinking.
Non-Final Act 6.
4
Appeal 2017-006322
Application 13/511,378
Appellants contend that they combine the particular set of ingredients
recited in claims 29 and 50 in order to provide a lip cosmetic with improved
secondary adhesion resistance and stability. App. Br. 10-13. As to the
Examiner’s prima facie case, Appellants contend that the cited references
fail to suggest the particular combination of ingredients recited in the claims,
and note in particular that the compositions of each of the cited references
differs significantly from the claimed compositions, in that each of the cited
references lacks several of the ingredients required by the rejected claims.
Id. at 13—16. Appellants note, moreover, that claim 50 excludes volatile oils
from the claimed compositions, whereas Amaud requires the presence of a
volatile oil in its compositions. Id. at 19; see also Reply Br. 8.
In response to these arguments, the Examiner contends that “one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references.” Ans. 2 (citing In re
Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed.
Cir. 1986)).
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), although
the Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, it also reaffirmed the importance of determining
5
Appeal 2017-006322
Application 13/511,378
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 418 (emphasis added).
Thus, “[ojbviousness requires more than a mere showing that the prior
art includes separate references covering each separate limitation in a claim
under examination.” Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d
1352, 1360 (Fed. Cir. 2011).
Instead, “[i]n determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re GPACInc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).
Appellants persuade us that the Examiner has not explained
sufficiently why the cited references would have suggested preparing the
specific compositions recited in claims 29 and 50. In particular, as noted
above, the Examiner urges that an ordinary artisan would have combined the
cited references’ teachings to arrive at the claimed combination of elements.
It is well settled, however, that as a predicate to a conclusion of
obviousness, the “differences between the prior art and the claims at issue
are to be ascertained.” KSR, 550 U.S. at 406 (quoting Graham v. John
Deere Co., 383 U.S. 1, 17 (1966)). Our reviewing court has explained, in
particular, that “section 103 requires a fact-intensive comparison of the
claimed process with the prior art rather than the mechanical application of
one or another per senile.” In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir.
1995).
In the present case, the Examiner does not explain with adequate
specificity which particular reference must be modified to yield the
6
Appeal 2017-006322
Application 13/511,378
compositions of claims 29 and 50, what particular modifications must be
made to the teachings of that reference, and why an ordinary artisan would
have made those particular modifications. Although the Examiner appears
to rely on Amaud as describing compositions meeting the majority of the
claimed features, the Examiner does not explain with adequate particularity
each of the differences between Amaud and the rejected claims, how,
specifically, Amaud must be modified to arrive at the claimed composition,
and why an ordinary artisan would have made that modification.
We are not persuaded that citation of In re Kerkhoven as a per se mle
of obviousness is an adequate substitution for that type of analysis. See In re
Ochiai, 71 F.3d at 1571 (“[Sjection 103 requires a fact-intensive comparison
of the claimed process with the prior art rather than the mechanical
application of one or another per se mle.”). Moreover, although we agree in
general that argument directed to individual references is insufficient when
obviousness is based on a combination of references, in this instance, as
noted, the Examiner does not explain with adequate specificity how the
references are being combined.
As to the identified rationale for modifying the prior art, we note the
Examiner’s contention that “[wjhere the objective technical problem appears
to be the provision of an alternative composition for lips having a glossy
finish, the skilled person would consider adding trimethyl pentaphenyl
trisiloxane without any inventive thinking.” Non-Final Act. 6.
The Examiner, however, does not support that contention by reference
to any specific teaching in the cited references. See KSR, 550 U.S. at 418
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
7
Appeal 2017-006322
Application 13/511,378
with some rational underpinning to support the legal conclusion of
obviousness.”). Moreover, as explained in MPEP § 2141.02,11., “[djistilling
an invention down to the ‘gist’ or ‘thrust’ of an invention disregards the
requirement of analyzing the subject matter ‘as a whole.’” (citing W.L. Gore
& Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)).
Because the Examiner’s rejection lacks specific findings as to each of
the differences between the prior art and the claims, and a specific
articulation of how and why the prior art must be modified to yield the
composition, we are not persuaded that the Examiner has adequately
analyzed the claimed subject matter as a whole. To that end, for example,
we note, as Appellants argue, that Amaud requires a volatile oil in its
compositions (see Amaud, abstract), whereas Appellants’ claim 50 excludes
volatile oils (see App. Br. 23).
We note also the Examiner’s contention that an ordinary artisan would
have had a “reasonable expectation of success in the combination of
references, in particular incorporating diphenylsiloxy phenyl trimethicone, in
view of Hoffman’s teaching of diphenylsiloxy phenyl trimethicone as an
obvious variant of the non-volatile silicone compounds taught by Amaud.”
Non-Final Act. 6. Hoffmann, however, is directed to hair conditioning
compositions (see Hoffmann, abstract), and the Examiner has not explained
with adequate specificity why a silicone compound used in hair conditioners
would be an obvious variant of such a compound when used in Amaud’s lip
cosmetics.
In sum, for the reasons discussed, we are not persuaded that the
Examiner has advanced a persuasive, specific, fact-based explanation as to
why Amaud, Lu, Yuki, Hoffmann, and Patil would have suggested the lip
8
Appeal 2017-006322
Application 13/511,378
cosmetics recited in Appellants’ claims 29 and 50 to an ordinary artisan.
Accordingly, we reverse the Examiner’s rejection of those claims, and their
dependent claims, over those references.
REVERSED
9