Ex Parte Tomita et alDownload PDFPatent Trial and Appeal BoardMay 9, 201612996977 (P.T.A.B. May. 9, 2016) Copy Citation 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. 12/996,977 02/10/2011 Noriko Tomita WINGR.P001 3236 28752 7590 05/09/2016 LACKENBACH SIEGEL, LLP LACKENBACH SIEGEL BUILDING 1 CHASE ROAD SCARSDALE, NY 10583 EXAMINER FALKOWITZ, ANNA R ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 05/09/2016 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 NORIKO TOMITA, REIJI MIYAHARA, and HIROYUKI KAKOKI ____________ Appeal 2014-005890 Application 12/996,9771 Technology Center 1600 ____________ Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and KRISTI L. R. SAWERT Administrative Patent Judges. SAWERT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 9–24 of U.S. Patent Application No. 12/996,977 (“the ’977 application”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Shiseido Company Ltd. as the real party in interest. Appeal Br. 1. Appeal 2014-005890 Application 12/996,977 2 STATEMENT OF THE CASE The claimed invention relates to cosmetic compositions, such as lipsticks. Claims 9–24 stand rejected under 35 U.S.C. § 103(a) for obviousness over Arnaud2 and Sakuta.3 This rejection is before us on appeal. The claimed compositions are oil-in-oil type compositions comprising three ingredients: a non-volatile hydrocarbon oil, methylphenylpolysiloxane (a silicone oil), and a dextrin fatty acid ester. According to the written description of the ’977 application, the claimed ratio of non-volatile hydrocarbon oil to non-volatile silicone oil results in improved spreadability, transfer resistance, and stability. Spec. ¶¶ 13–14. Examples of suitable non- volatile hydrocarbon oils include hydrogenated polyisobutene, polybutene, polyisobutylene, polyisoprene, liquid paraffin, squalane, hydrogenated polydecene, and Vaseline. Id. ¶ 10. The written description further provides that the claimed dextrin fatty acid ester acts as a stabilizer and thickener. Id. ¶¶ 16, 35–37. Dextrin fatty acid ester is described as an ester of dextrin and a higher (C12 to C22) fatty acid. Id. ¶ 15. Examples include palmitic acid dextrin, myristic acid dextrin, and (palmitic acid/ethylhexanoic acid) dextrin. Id. The Examiner rejected claims 9–24. Claims 9 and 17 are in independent form, and claims 10–16 and 18–24 are in dependent form. Claims 10–16 trace back to claim 9, and claims 18–24 trace back to claim 2 Pascal Arnaud, U.S. Patent Publication No. 2001/0031269 (Oct. 18, 2001). 3 Koji Sakuta, U.S. Patent Application No. 10/296,593 (Oct. 23, 2003). Appeal 2014-005890 Application 12/996,977 3 17. Although Appellants point out the limitations of dependent claims 10– 16 and 18–24, Appellants do not present any separate patentability arguments as to those dependent claims. See Appeal Br. 7–17. Thus, we choose independent claim 9 as representative of claims 9–16, and independent claim 17 as representative of claims 17–24, and limit our analysis to those independent claims. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 9 provides: 9. An oil-in-oil type cosmetic composition comprising: (a) 5 to 80% by mass of non-volatile hydrocarbon oil, (b) 1 to 70% by mass of methylphenylpolysiloxane, and (c) 0.1 to 10% by mass of dextrin fatty acid ester, wherein the non- volatile hydrocarbon oil (a) and methylphenylpolysiloxane (b) are formulated at a ratio (mass ratio) of (a)/[(a)+(b)]= 0.4 to 0.8. Appeal Br. 18. Claim 17 provides: 17. An oil-in-oil type lipstick comprising: (a) 5 to 80% by mass of non-volatile hydrocarbon oil, (b) 1 to 70% by mass of methylphenylpolysiloxane, and (c) 0.1 to 10% by mass of dextrin fatty acid ester, wherein the non- volatile hydrocarbon oil (a) and methylphenylpolysiloxane (b) are formulated at a ratio (mass ratio) of (a)/[(a)+(b)]= 0.4 to 0.8. Appeal Br. 19. DISCUSSION Obviousness A claimed invention is unpatentable if the differences between it 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.” 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject Appeal 2014-005890 Application 12/996,977 4 matter would have been obvious, the Board follows guidance in Graham v. John Deere Co., 383 U.S. 1 (1966) and KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Under that guidance, the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Thus, 35 U.S.C. § 103 requires an inquiry into “‘whether the improvement is more than the predictable use of prior-art elements according to their established functions.’” Monolithic Power Sys., Inc. v. Micro Int'l Ltd, 558 F.3d 1341, 1352 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 417). The obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Applying this standard, we conclude that the Examiner did not err in determining that representative claims 9 and 17 would have been obvious to an ordinarily-skilled artisan over Arnaud in view of Sakuta. Findings of Fact Arnaud teaches oil-in-oil type cosmetic compositions (including lipsticks) comprising, inter alia, 0.5 to 90% of a non-volatile hydrocarbon oil and 3.5 to 40% of a non-volatile silicone compound. Arnaud ¶¶ 40, 114– 115; Final Act. 3–4. Although Arnaud teaches that the non-volatile silicone compounds are preferably from a genus of polydimethylsiloxanes including alkyl, alkoxy, or phenol groups, Arnaud does not specifically disclose the species methylphenylpolysiloxane recited in claims 9 and 17. Arnaud ¶ 56; Final Act. 3–4. Arnaud further teaches that the disclosed cosmetic Appeal 2014-005890 Application 12/996,977 5 compositions may also contain “the constituents conventionally used in the fields under consideration, which are present in an amount which is suitable for the desired presentation form,” such as fatty acid esters. Arnaud ¶¶ 107, 110; Final Act. 4. Arnaud does not explicitly disclose the dextrin fatty acid ester recited in claims 9 and 17. Final Act. 4. Sakuta also discloses anhydrous cosmetic compositions, including lipstick. Sakuta ¶¶ 80, 119; Final Act. 4. Sakuta teaches the use of non- volatile hydrocarbon oils and non-volatile silicone oils. Sakuta ¶¶ 68, 74; Final Act. 4. Sakuta provides methylphenylpolysiloxane as an example of a silicone oil. Sakuta ¶ 74. Like Arnaud, Sakuta teaches that cosmetic compositions may be formulated with “components usually used in cosmetic materials,” and provides dextrin fatty acid esters as examples of an oil- soluble gelatinizer. Id. ¶¶ 110–111. Sakuta specifically discloses an example composition (Example 10) containing 8% of the dextrin fatty acid ester palmitic acid/dextrin ethyl hexanoate. Id. ¶ 158; Final Act. 4. Claims 9–16 On appeal, the Board “reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.” Ex parte Frye, 94 USPQ2d 1072, 1075–76 (Bd. Pat. App. & Interf. 2010) (Precedential). The issues Appellants raise on appeal as to the rejection of claims 9–16 are: (1) whether a person of ordinary skill in the art would have been motivated to combine Arnaud and Sakuta, and (2) whether a person of ordinary skill in the art would have had a reasonable expectation of success in doing so. Appeal Br. 8–12. “[W]hether there is a reason to combine prior art references is a question of Appeal 2014-005890 Application 12/996,977 6 fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012). “The presence or absence of a reasonable expectation of success is also a question of fact.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). For the reasons stated below, we find that a preponderance of the evidence supports the Examiner’s finding that an ordinarily-skilled artisan would have been motivated to combine Sakuta with Arnaud and would have had a reasonable expectation of success in doing so. As noted above, although Arnaud teaches that the non-volatile silicone oils are preferably from a genus of polydimethylsiloxanes and lists several examples of polydimethylsiloxanes with phenyl groups, Arnaud does not specifically disclose the species methylphenylpolysiloxane. Supra at 5. Similarly, Arnaud discloses compositions comprising fatty acid esters, but not specifically teach dextrin fatty acid ester. Id. The Examiner reasoned that it would have been prima facie obvious to employ methylphenylpolysiloxane and dextrin fatty acid esters (as taught by Sakuta) as the polydimethylsiloxane and fatty acid ester, respectively, in Arnaud’s lipstick compositions. Final Act. 7–8. The Examiner explained that using methylphenylpolysiloxane and dextrin fatty acid esters amounted to “a simple substitution of one polysiloxane for another [and] a fatty acid ester for another” that provided predictable results. Id. at 7. The Examiner further explained that the skilled artisan would have been motivated to use routine experimentation to optimize the specific ingredients of Arnaud’s compositions because polysiloxanes are known in the art to have “excellent spreading properties, clean feel and high safety,” and because dextrin fatty acid esters are known “thickeners for low viscosity silicone oils” that Appeal 2014-005890 Application 12/996,977 7 “increase the stability of the cosmetic by preventing the separation of the silicone oils.” Id. at 7–8. On appeal, Appellants advance several reasons why the skilled artisan would not have been motivated to combine the disclosures of Arnaud and Sakuta, and would not have had a reasonable expectation of success. Appeal Br. 8–12. We address each in turn. First, Appellants argue that “one of ordinary skill in the art would not be motivated to combine the references” because “Sakuta discloses methylphenylpolysiloxane . . . as a single species among an extremely large genus of non-volatile oils.” Appeal Br. 8 (citing Sakuta ¶¶ 0067–74). Appellants allege that the genus of non-volatile oils that a skilled artisan would choose from must include all hydrocarbon oils disclosed in Sakuta because Sakuta teaches that hydrocarbon oils and silicon oils have the same function, i.e., to blend with and cause swelling of an insoluble, cross-linked silicone paste. Appeal Br. 8. In response, the Examiner states that the “selection of the methylphenylpolysiloxane of Sakuta is not just a random pick of a chemical from a vast list.” Answer 6. Instead, “the selection of methylphenylpolysiloxane is based upon the teaching of an oil-in-oil lipstick composition comprising methyls and polysiloxane with one or more phenol groups” in Arnaud. Id. at 6-7. “As such,” the Examiner explained, “one of ordinary skill in the art would not be searching for any general oil in Sakuta[,] but rather only a siloxane with methyl and phenol.” Id. at 7. We find that the preponderance of the evidence supports the Examiner’s reasoning as to the reason to combine. As the Examiner detailed, a person of ordinary skill in the art seeking to improve Arnaud’s composition would have been motivated to vary the type of Appeal 2014-005890 Application 12/996,977 8 polydimethylsiloxane used, because, as the Examiner asserts, and Appellants do not dispute, polysiloxanes were known in the art to affect spreading and “feel” properties. Final Act. 7–8. And, contrary to Appellants’ argument, the skilled artisan “would not have been required to try all possibilities in a field unreduced by the prior art.” Bayer Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341, 1350 (Fed. Cir. 2009). Instead, because Arnaud discloses a genus of preferred polydimethylsiloxanes compounds and lists several with phenol groups, see Arnaud ¶ 56, a person of ordinary skill would have been led to polydimethylsiloxanes with phenol groups. We agree with the Examiner that Sakuta illustrates a small, finite number of such chemicals for use in cosmetic compositions. Answer 7. Specifically, as the Examiner explained and Appellants do not dispute, Sakuta discloses less than 10 siloxanes, and one example of a siloxane with both a methyl group and a phenol group, i.e., methylphenylpolysiloxane. Answer 7; see also Sakuta ¶ 74. The Federal Circuit has explained that “[w]here a skilled artisan merely pursues ‘known options’ from ‘a finite number of identified, predictable solutions,’ the resulting invention is obvious under Section 103.” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070 (Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421). The instant situation of selecting known elements for use in cosmetics is also similar to that in Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012). In that case, the Federal Circuit found a “strong case of obviousness based on the prior art references of record” based on the recitation in the claim at issue of “ a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known . . . agent for another.” Here, Appeal 2014-005890 Application 12/996,977 9 a skilled artisan would have been motivated to pursue the known polydimethylsiloxanes disclosed in Sakuta, in order to optimize the spreading and “feel” properties of Arnaud’s cosmetic compositions. Thus, we reject Appellants’ argument that the Examiner did not present a credible reason for combining Arnaud and Sakuta. KSR, 550 U.S. at 421. Next, Appellants argue that Sakuta is not relevant prior art because Sakuta “does not teach or suggest that the oils are immiscible” and “makes no mention of oil-in-oil emulsions.” Appeal Br. 8–9; see also id. at 11 (stating that “the teachings of Sakuta are inapplicable to the oil-in-oil emulsions claimed in the present application”). Appellants’ point seems to be that a skilled artisan would not look to Sakuta because Sakuta does not appear to explicitly disclose oil-in-oil emulsions. The Examiner responds that this argument “overlooks the similarities” between the two references. Answer 7. We agree with the Examiner. As the Examiner explained, both references relate to the same field of endeavor (cosmetic compositions for the skin and hair), both disclose cosmetic compositions (including lipsticks), both disclose the use of non-volatile hydrocarbons and non-volatile silicone compounds in cosmetic compositions, and both disclose anhydrous compositions. Id. And even if, arguendo, Sakuta does not explicitly disclose oil-in-oil emulsions, the Supreme Court has rejected the notion that a skilled artisan would ignore certain prior art merely because that prior art is directed to a purpose other than that of the claimed invention. KSR, 550 U.S. at 420 (“Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together Appeal 2014-005890 Application 12/996,977 10 like pieces of a puzzle.”). Thus, a skilled artisan working in the art of cosmetic compositions would have reasonably looked to Sakuta as teaching several ingredients of those compositions. Similarly, Appellants argue that Sakuta teaches away from selecting methylphenylpolysiloxane because the addition of that chemical requires a “deselection” of the water in Sakuta’s examples as well as “deselection” of Sakuta’s crosslinked silicone polymer, the latter of which Appellants assert is “the very invention being taught by Sakuta.” Appeal Br. 10. Again, the disclosure in Sakuta of other cosmetic compositions (e.g., cosmetic compositions containing water and a crosslinked silicone polymer) does not negate the obviousness of Appellants’ claimed composition. KSR, 550 U.S. at 420. Nothing in Sakuta discourages a person of ordinary skill from employing the limited number of phenol-containing polydimethylsiloxanes disclosed therein to improve the oil-in-oil type cosmetic composition of Arnaud. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (finding that a secondary prior art reference that failed to teach an element of the claimed invention did not teach away where “there [was] nothing about the [prior art] to warn a person of ordinary skill against using” that element). Moreover, Appellants’ argument that the Examiner’s selection of methylphenylpolysiloxane would change Sakuta’s method of operation, Appeal Br. 10, is not relevant. The prior art chemical composition modified in this case is that of Arnaud, not Sakuta. Finally, Appellants argue that the skilled artisan would not have had a reasonable expectation of success, because Sakuta teaches “an indeterminate and nearly infinite number of species.” Appeal Br. 9. Again, we disagree. Appellants’ argument that there was no reasonable expectation of success as Appeal 2014-005890 Application 12/996,977 11 to “every oil known in the art of cosmetics,” is inapt because, as explained above, the skilled artisan would not have been “merely throwing metaphorical darts at a board in hopes of arriving at a successful result.” Cyclobenzaprine, 676 F.3d at 1071 (quotation omitted). Instead, Arnaud directs the skilled artisan to a genus of preferred methyl- and phenol- containing polysiloxanes, Arnaud ¶ 56, and Sakuta illustrates a small, finite number of such chemicals for use in cosmetic compositions, Sakuta ¶ 74. See also Answer 7. We note that Appellants have not challenged the Examiner’s assertion that varying the siloxane species would have provided predictable results. Thus, we agree with the Examiner that the skilled artisan would have had a reasonable expectation of success in using methylphenylpolysiloxane as the polydimethylsiloxane in Arnaud’s cosmetic composition. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365– 66 (Fed. Cir. 2007) (finding a reasonable expectation of success where the skilled artisan only had to choose among a limited number of options). Turning to dextrin fatty acid esters, Appellants argue that Sakuta discloses “an indeterminate number of species” of thickening agents and that the skilled artisan would not have been led to dextrin fatty acid esters because none of Sakuta’s examples combine a dextrin fatty acid ester with methylphenylpolysiloxane. Appeal Br. 11. The Examiner responds that Arnaud discloses an oil-in-oil cosmetic composition comprising fatty acid esters, and that Sakuta discloses a specific type of fatty acid ester, i.e., dextrin fatty acid esters. Answer 11. The Examiner asserts that it would have been a matter of routine experimentation to try dextrin fatty acid esters from the finite number of fatty acid esters identified in Sakuta. Id. Appeal 2014-005890 Application 12/996,977 12 We agree with the Examiner that using or trying dextrin fatty acid esters as the fatty acid ester in Arnaud’s cosmetic composition would have been obvious as a simple substitution of one fatty acid ester for another that provides predictable results. KSR, 550 U.S. at 421. Contrary to Appellants’ argument, the skilled artisan would have been motivated to at least try dextrin fatty acid esters given that dextrin fatty acid esters were well known in the art as thickeners that prevent separation and leaking of silicone oil from a cosmetic composition. See Sakuta ¶ 4 see also Answer 11. Indeed, both Arnaud and Sakuta characterize fatty acid esters as a conventional ingredient of a cosmetic composition. See Arnaud ¶¶ 107, 110; Sakuta ¶¶ 110-111. Appellants have provided no specific argument or evidence of unpredictability. See Appeal Br. 11-12. Thus, we agree with the Examiner that a skilled artisan would have been motivated to use or try dextrin fatty acid esters as the fatty acid ester in Arnaud’s cosmetic composition. Claims 17–24 As to the rejection of claims 17–24, Appellants again argue that a person of ordinary skill in the art would not have been motivated to combine Arnaud and Sakuta, and would not have had a reasonable expectation of success. Appeal Br. 13–19. Appellants repeat, almost verbatim, the same arguments they advanced with respect to claims 9–16. We reject Appellants’ arguments as to claims 17–24 for the same reasons we rejected the arguments as to claims 9–16, explained supra, and additionally note that we agree with the Examiner that a person of ordinary skill would have been motivated to improve the water repellence of Arnaud’s lipstick. See Final Act. 6–7. Specifically, as the Examiner explained and Appellants do not Appeal 2014-005890 Application 12/996,977 13 dispute, it was known in the art that a lipstick should have a “glossy deposit, very good staying power, which undergoes little or no transfer, and is water resistant.” Id. 6. It would have been a matter of routine experimentation for the skilled artisan to have substituted the polydimethylsiloxane and the fatty acid ester of Arnaud’s cosmetic composition with methylphenylpolysiloxane and dextrin fatty acid ester, as disclosed by Sakuta. Id. Appellants also argue that the Examiner erred in concluding that Sakuta teaches lipstick compositions. Appeal Br. 14–15. “What a reference teaches is a question of fact.” In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992). For support, Appellants assert that Sakuta merely recites “lipstick” in a “laundry list of every conceivable cosmetic product.” Id. at 14. Appellants conclude that “[o]ne of ordinary skill in the art would not derive from [Sakuta] the teaching that any of Sakuta’s compositions are suitable for use, or could be modified for use, in the oil-in-oil emulsion lipstick compositions of Arnaud.” Id. at 15. The Examiner responds that “[t]here is no requirement stating the number of times a specific embodiment needs to be recited in the prior art or that a specific embodiment needs to be the preferred embodiment.” Answer 16. We agree with the Examiner. Sakuta clearly teaches lipstick as a cosmetic composition. Sakuta ¶ 119. And as to the Examiner’s point, there is no requirement that Sakuta’s compositions be incorporated into Arnaud’s cosmetic compositions. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of a primary reference. . . .”). Instead, “the test [for obviousness] is what the combined teaches would have suggested to those of ordinary skill in the art.” Id. Appeal 2014-005890 Application 12/996,977 14 Here, the Examiner has presented a preponderance of the evidence that the skilled artisan would have been motivated to modify the oil-in-oil type lipstick composition of Arnaud with the specific chemical species (i.e., dextrin fatty acid ester and methylphenylpolysiloxane) taught by Sakuta. SUMMARY We affirm the rejection of claims 9–24 under 35 U.S.C. § 103(a) 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 Copy with citationCopy as parenthetical citation