Ex Parte Weber et al

Patent Trial and Appeal Board

Feb 3, 2015

11352600 (P.T.A.B. Feb. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT WEBER and NISHITH PATEL
__________

Appeal 2012-007947
Application 11/352,600
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a multi-
unit kit for making custom-colored nail polish varnishes. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the Real Party in Interest as L'Oréal S.A. (see
App. Br. 2).
Appeal 2012-007947
Application 11/352,600

2
Statement of the Case
Background
“Conventional nail varnishes, because of their pre-formulation,
provide little opportunity for customization of nail polish colors” (Spec. 1
¶ 1). “A need, therefore, exists for a nail polish composition . . . which
easily facilitates customization of nail polish varnish color” (Spec. 1 ¶ 3).
The Claims
Claims 18–23 are on appeal. Independent claim 18 is representative
and reads as follows:
18. A multi-unit kit for making custom-colored nail polish
varnishes, the kit comprising:
a. at least one unit having a first gelled nail polish
composition having a Brookfield viscosity of at least about 20
poise, the composition containing: (a) (i) at least one gelling
agent; (a) (ii) at least one film former; (a) (iii) at least one
solvent; and (a) (iv) at least one colorant;
b. at least one unit having a second gelled nail polish
composition having a Brookfield viscosity of at least 20 poise,
the composition containing: (b) (i) at least one gelling agent; (b)
(ii) at least one film former; (b) (iii) at least one solvent; and (b)
(iv) optionally, at least one colorant different from (a) (iv) ;
c. at least one unit containing at least one chemical
reducing agent capable of reducing the viscosity of the first
and/or second gelled nail polish composition.

The Issue
The Examiner rejected claims 18–23 under 35 U.S.C. § 103(a) as
obvious over Busch2 and Abrahamian3 (Ans. 4–9).

2 Busch, Jr., F., US 3,864,294, issued Feb. 4, 1975.
3 Abrahamian, S.L., US 5,778,901, issued July 14, 1998.
Appeal 2012-007947
Application 11/352,600

3
The Examiner finds that Busch teaches a “kit, which include two
dispensing bottles of nail polish and tools such as mixing cups, mixing
paddles and application brushes and tubes of color” (Ans. 5). The Examiner
finds that Busch teaches “to provide nail polish kit which allows an
individual to selectively produce desired nail polish and combine the two
nail polishes with colors provided and utensils to mix and then paint the
nails with the brush” (Ans. 6).
The Examiner acknowledges that Busch “does not teach unit (a) and
unit (b) being gelled nail polish compositions and unit (c) containing
chemical reducing agent” (Ans. 7).
The Examiner finds that Abrahamian teaches “gelled coating
compositions . . . [and] clay as the gelling agent” (Ans. 7). The Examiner
finds that Abrahamian teaches “adding orthophosphoric acid to the gelled
composition” as the reducing agent (Ans. 8).
The Examiner finds that “[r]egarding claimed Brooke field [sic]
viscosity, this is achieved by using a Brooke field [sic] viscometer and since
the example meets the claimed first gelled composition this meets the
claimed Brooke field [sic] viscosity” (Ans. 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Busch and Abrahamian
render the claimed nail polish kit obvious?
Findings of Fact
1. Abrahamian teaches “a nail polish kit which allows an
individual to selectively produce a desired nail polish having a particular
color and hue” (Abrahamian, col. 2, ll. 15–17).
Appeal 2012-007947
Application 11/352,600

4
2. Abrahamian teaches that “a ‘Mix It’ bottle 10 of clear nail
polish is provided with a pump 12. Another ‘Mix It’ bottle 14 of white
pigmented nail polish with a similar pump 12 is shown pumping drops 16 of
its white nail polish into a wooden cup 18 having a handle 20” (Abrahamian,
col. 3, ll. 25–30).
3. Abrahamian teaches that a “user can begin with either clear or
white nail polish solutions and then add small amounts of one or more liquid
pigment colors selected from the tubes of color” (Abrahamian, col. 3, ll. 31–
34).
4. Busch teaches “an improved coating composition (e.g., nail
polish enamel, paint, ink, etc.) which utilizes a rheological control system
wherein the resulting composition is in the form of a gel” (Busch, col. 1, ll.
4–6).
5. Busch teaches “a gel which can be broken up by the application
of a relatively small force at a relatively small shearing rate” (Busch, col. 2,
ll. 54–56).
6. The Specification teaches that “[e]xamples of suitable gelling
agents for aqueous mediums include, but are not limited to, hydrophilic
clays . . . . Suitable hydrophilic clays may include, but are not limited to,
clays of the family of smectites such as montmorillonites, hectorites,
bentonites” (Spec. 3 ¶¶ 14, 16).
7. The Specification teaches that the “gelling agent may be present
in the gelled nail polish composition in an amount of from 1 to 5% by
weight, preferably from 1.5 to 4% by weight, preferably from 2 to 3.5% by
Appeal 2012-007947
Application 11/352,600

5
weight, all weights based on the total weight of the composition” (Spec. 5
¶ 29).
8. Busch teaches that the “montmorillonite clay portion of these
compounds may be derived from bentonite rock . . . . A synthetic form of
montmorillonite may be used of similar chemical composition” (Busch, col.
4, ll. 10–15).
9. Busch teaches that “the amine-modified montmorillonite clay
component is generally in an amount of 0.5 percent to 5.0 percent by weight
of the total composition” (Busch, col. 5, ll. 60–63).
10. Busch teaches that “[n]ail enamels comprise a film-former, a
solvent system for the film-former, and a plasticizer. They usually contain a
pigment and often a resin” (Busch, col. 5, ll. 28–30).
11. The Specification teaches that “[s]uitable film-forming
polymers include, but are not limited to . . . nitrocellulose . . . cellulose
acetate butyrate” (Spec. 6 ¶ 35).
12. The Specification teaches that the “film-forming polymer may
be present in the gelled nail polish composition in an amount of from 0.5 to
20% by weight, preferably from 1 to 15% by weight, preferably from 5 to
12% by weight, based on the total weight of the composition” (Spec. 7 ¶ 39).
13. Busch teaches that “[e]xamples of conventional film-formers
useful in forming nail enamel compositions in accordance with this
invention are: nitrocellulose . . . cellulose acetate butyrate” (Busch, col. 6, ll.
23–29).
14. Busch teaches that the “film-former is in an amount
conventionally used in nail enamel compositions such, for example, as 5.0
Appeal 2012-007947
Application 11/352,600

6
percent amounts conventionally employed) in conventional to 25 percent by
weight of the total composition and preferably 8 percent to 12 percent by
weight” Busch, col. 6, ll. 32–35).
15. The Specification teaches that “[s]uitable organic solvents . . .
include, but are not limited to . . . ethanol, isopropanol . . . ethyl acetate,
methyl acetate, propyl acetate, n-butyl acetate” (Spec. 7 ¶ 42).
16. The Specification teaches that the “at least one solvent may be
present in the gelled nail polish composition in an amount of from 10 to 80%
by weight, preferably from 20 to 70% by weight, preferably from 30 to 60%
by weight, based on the weight of the composition” (Spec. 8 ¶ 45).
17. Busch teaches that a “typical conventional solvent system for
nail polish composition is as follows: a. solvent – n-butyl acetate, n-amyl
acetate, and ethyl acetate; b. coupler or co-solvent – isopropanol and
ethanol” (Busch, col. 6, ll. 39–43).
18. Busch teaches that the “the solvent system is in an amount 30
percent to 85 percent by weight of the total nail polish composition, and
preferably 60 percent to 80 percent by weight” (Busch, col. 6, ll. 45–48).
19. The Specification teaches pigments including titanium dioxide
(Spec. 8 ¶ 50).
20. The Specification teaches that “the colorant is present in at least
one of the gelled nail polish compositions in an amount of from greater than
0 to 25% by weight, preferably from 1 to 20% by weight, preferably from 5
to 15% by weight, based on the total weight of the composition” (Spec. 9
¶ 56).
Appeal 2012-007947
Application 11/352,600

7
21. Busch teaches that “[e]xamples of conventional pigments useful
in forming nail enamel compositions in accordance with this invention are
titanium dioxide . . . iron blue . . . D&C Red 6 Ba lake” (Busch, col. 6, ll.
62–66).
22. Busch teaches that “the pigment is in an amount of 0.01 percent
to 10 percent by weight of the total composition, and preferably 0.05 percent
to 3 percent by weight” (Busch, col. 7, ll. 1–3).
23. The Specification teaches that when “the chemical viscosity
reducing agent is combined with the gelled nail polish composition (s) , the
Brookfield viscosity, as defined above, of the resultant mixture, i. e. , the
custom-colored nail polish varnish, is at most 30 poise” (Spec. 9–10 ¶ 60).
24. The Specification teaches that a “chemical viscosity reducing
agent may be chosen from an alkaline compound[,] an acidic compound and
combinations thereof” (Spec. 10 ¶ 60).
25. The Specification teaches that the viscosity reducing agent “will
typically be employed in an amount of from 0.05% to 0.20% by weight,
preferably from 0.07 to 0.10% by weight, based on the weight of the
composition” (Spec. 11 ¶ 63).
26. Busch teaches that “[p]aste composition A is formed by adding
. . . 7.5 parts of an amine-modified clay (dimethyl dioctadecyl ammonium
montmorillonite clay)” (Busch, col. 7, ll. 36–40).
27. Busch teaches that after a lacquer base is formed with a
plasticizer (camphor), a film former (nitrocellulose), a solvent (isopropyl
alcohol), and a colorant (titanium dioxide, iron blue, or D&C Red 6 Ba
lake), “[t]wenty-three parts by weight of the . . . [p]aste [c]omposition is
Appeal 2012-007947
Application 11/352,600

8
added to 77 parts by weight of pigmented Lacquer [b]ase composition with
stirring” (Busch, col. 8, ll. 6–25).
28. Busch teaches that to the lacquer base and paste composition
“mixture is added 0.02 parts of ortho phosphoric acid (swelling agent) and
the resulting composition” (Busch, col. 8, ll. 25–27).
29. The Specification teaches an Example 1 with a “‘Deep-Red’
Shade Gelled Nail Polish Composition having a Brookfield viscosity of
3000 poise” and an Example 2 with a “‘Gold-Pearlescent’ Shade Gelled Nail
Polish Composition having a Brookfield viscosity of 4000 poise” (Spec. 17).
30. The Specification teaches that:
A custom-blended nail polish varnish was prepared by
dispensing approximately 1 ml. of the gelled nail polish
compositions of Examples 1 and 2 into a single glass mixing
jar, adding 3 drops of a 0.22 molar solution of potassium
hydroxide to the mixing jar, and stirring the contents of the
mixing jar with a spatula to form a custom-colored nail
polish varnish in accordance with the present invention. The
custom-colored nail polish varnish had a Brookfield
viscosity of 20 poise.

(Spec. 18 ¶ 92.)
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 421.

Appeal 2012-007947
Application 11/352,600

9
Analysis
We begin with claim interpretation. Independent claim 18 requires a
kit with two different types of components: gelled nail polish compositions
including “a first gelled nail polish,” “a second gelled nail polish,” and a
chemical reducing agent composition “capable of reducing the viscosity of
the first and/or second gelled nail polish composition.”
“gelled nail polish composition”
For the two gelled nail polish compositions, claim 18 requires the
compositions to have “a Brookfield viscosity of at least about 20 poise.”
Because claim 18 states “at least about 20 poise,” we interpret claim 18 to
encompass any gelled nail polish compositions with a viscosity higher than
20 poise.
“chemical reducing agent”
For the “chemical reducing agent,” claim 18 requires an agent that
will function to reduce the gelled nail polish composition viscosity, but does
not require any specific amount of the “chemical reducing agent.” In
addition, claim 18 does not require any specific amount of reduction in the
viscosity of the gelled nail polish compositions to occur, only that the
composition is “capable of reducing the viscosity.”
The Specification teaches that the chemical reducing agent may be
any alkaline or acidic compound (FF 24).
Having interpreted the claims, we now address how the cited prior art
applies to the limitations of claim 18.
Abrahamian teaches a nail polish kit composed of two different nail
polish compositions which may be separately colored (FF 1–3). The
Appeal 2012-007947
Application 11/352,600

10
Examiner relies upon Busch to teach nail polish compositions composed of
the same materials as those required by claim 18 as well as the required
chemical reducing agent (Ans. 7–9).
Busch teaches nail polish gels which are composed of: a gelling agent
such as montmorillonite clay in amounts overlapping those required by the
Specification (FF 6–9); a film forming agent such as nitrocellulose in
amounts overlapping those required by the Specification (FF 11–14); a
solvent such as n-butyl acetate or ethanol in amounts overlapping those
required by the Specification (FF 15–18); and different colorants in amounts
overlapping those required by the Specification (FF 19–22). Busch further
teaches the addition of ortho phosphoric acid to the nail polish compositions
(FF 28).
We agree with the Examiner that it would have been obvious to use
the gelled nail polish compositions of Busch in the nail polish kit of
Abrahamian because “(i) the shelf life of the gelled compos[i]tions is longer
since pigment is suspended for a longer time and (ii) when both the
compositions are combined any custom colored nail polish is obtained
depending on the color choice of the consumer” (Ans. 9). We also agree
with the Examiner that it would have been obvious to “add ortho phosphoric
acid to the two gelled compositions at the time of use so that ortho
phosphoric acid causes the clay (bentone) to swell and mix the two nail
polish compositions to obtain the desired colors and then apply it on nails
with the help of brush” (id.).
Appellants contend that Busch “is completely silent with respect to
the provision of at least two gelled composition, each of which having a
Appeal 2012-007947
Application 11/352,600

11
Brookfield viscosity of at least about 20 poise, to be used in combination
with the claimed chemical reducing agent” (App. Br. 4). Appellants contend
that “since the Examiner has failed to provide a basis in fact and/or technical
reasoning to support a determination that the composition of ‘294 [Busch]
inherently possesses the claimed Brookfield viscosities, for this reason alone
a prima facie case of obviousness cannot be established against the present
invention based on the disclosure of the ‘294 [Busch] reference” (App. Br.
5–6).
We are not persuaded. While we agree that claim 18 requires
Brookfield viscosities “at least 20 poise,” we find that the Examiner has
provided sufficient evidence to demonstrate that the gelled nail polish
compositions of Busch would have reasonably been expected to inherently
possess this characteristic. Specifically, Busch teaches a composition with
the same components in overlapping amounts as those taught by the instant
Specification (FF 6–22) where the composition of the Specification, prior to
the addition of the chemical reducing agent, results in a Brookfield
viscosities of 3000 or 4000 poise (FF 29).
Appellants do not identify any difference in the composition of Busch
relative to the exemplary compositions in the Specification that would result
in a Brookfield viscosity less than the 20 poise required by claim 18, nor
have Appellants provided evidence that the Busch nail polish compositions
would have a Brookfield viscosity less than the 20 poise prior to the addition
of ortho phosphoric acid. See In re Best, 562 F.2d 1252, 1254–55 (CCPA
1977). (“[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
Appeal 2012-007947
Application 11/352,600

12
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102,
on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.”)
Appellants contend that, unlike the Busch nail polish composition,
“the present composition’s initial viscosity is reduced NOT by shear, but
rather, by use of the claimed chemical viscosity reducing agent” (App. Br.
6).
We are not persuaded. The issue is not how Busch reduces the initial
viscosity, but rather whether the initial viscosity of the Busch nail polish
composition is “at least 20 poise” as required by claim 18. Thus, arguments
that the viscosity of the Busch nail polish composition is high and is reduced
by shear serve to support, rather than refute, the Examiner’s rejection
because this evidence suggests that Busch’s nail polish composition begins
with a high, unspreadable viscosity which would reasonably satisfy the
requirement of claim 18 for a viscosity of “at least 20 poise” until after a
shear force was applied.
Appellants contend that
[T]he presence of orthophosphoric acid, in an amount of
0.02%, must be for a reason other than to reduce the
viscosity of the ‘294 [Busch] gelled composition is further
supported by the fact that the ‘294 [Busch] reference
CLEARLY employs physical shear to reduce the viscosity of
Appeal 2012-007947
Application 11/352,600

13
its gelled composition, and NOT a chemical viscosity
reducing agent.

(App. Br. 7.)
We are not persuaded. First, Appellants’ argument is not consistent
with the limitations of claim 18, which does not require any specific amount
or concentration of the chemical reducing agent, instead only requiring the
presence of an agent “capable of reducing the viscosity” of the nail polish
compositions. Because the Specification expressly teaches that acids are
“capable of reducing the viscosity” of nail polish compositions (FF 24), the
Examiner reasonably relies upon the ortho phosphoric acid of Busch as
inherently functioning as a chemical reducing agent (Ans. 8; FF 28). See In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail
from the outset because . . . they are not based on limitations appearing in
the claims.”)
Second, the reason for using the ortho phosphoric acid in Busch need
not be identical to that of Appellants, so long as there is a reason for
incorporating this agent into the kit. Busch provides such a reason, teaching
that ortho phosphoric acid serves as a swelling agent (FF 28). See In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.”)
Appellants contend that:
NOWHERE within the four corners of any of the references
relied upon by the Examiner, is it taught, suggested or
motivated to provide TWO units, each containing a different
gelled compositions, each gelled composition having the
Appeal 2012-007947
Application 11/352,600

14
claimed Brookfield viscosity, in a kit which also contains a
third unit comprising the claimed chemical reducing agent.

(App. Br. 7.)
We are not persuaded. Abrahamian teaches a kit with two different
nail polish compositions (FF 1–3) and Busch teaches that a gelled nail polish
composition is desirable (FF 4). Busch also teaches the use of the ortho
phosphoric acid as a final component for transforming the nail polish into
final form (FF 28). “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. Here, the substitution of
Busch’s gelled nail polish composition for Abrahamian’s nail polish
composition represents a predictable variation of nail polishes and if “a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” Id. at 417.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Busch and Abrahamian render the claimed nail polish kit obvious.
SUMMARY
In summary, we affirm the rejection of claim 18 under 35 U.S.C.
§ 103(a) as obvious over Busch and Abrahamian. Pursuant to 37 C.F.R.
§ 41.37(c), claims 19–23 fall with claim 18, as these claims were not argued
separately.

Appeal 2012-007947
Application 11/352,600

15
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

cdc