Ex Parte Tomita et al

Patent Trial and Appeal Board

May 9, 2016

12996977 (P.T.A.B. May. 9, 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.
12/996,977 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.

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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).
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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
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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
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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
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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
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“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
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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,
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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
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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
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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.
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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
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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.
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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