Ex Parte Yagyu et al

Patent Trial and Appeal Board

Nov 8, 2017

12283956 (P.T.A.B. Nov. 8, 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.
12/283,956 09/17/2008 Tomohiro Yagyu 14434.0203USW1 9180
52835 7590 11/13/2017
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
EXAMINER
CRAIGO, WILLIAM A
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
11/13/2017 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):
PTOMail @hsml. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOHIRO YAGYU, SHIGERU YANAGASE, and
HISAO ISHIBE
Appeal 2017-0036561
Application 12/283,956
Technology Center 1600
Before RICHARD M. LEBOVITZ, TAWEN CHANG, and TIMOTHY G.
MAJORS, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a cosmetic containing glass
flakes. The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). The rejections are affirmed.
STATEMENT OF THE CASE
Claims 1, 2, 5, and 6 stand rejected by the Examiner as follows:
1 The Appeal Brief (“Br.”) identifies Nippon Sheet Glass Company, Limited,
as the real-party-in-interest. Br. 2.
Appeal 2017-003656
Application 12/283,956
1. Claims 1, 2, 5, and 6 under pre-AIA 35 U.S.C. § 103(a) as obvious
in view of Japanese Patent Application Publication No. 2002006732 (A),
publ. Aug. 14, 2002 (English translation) (“Matsuba”), U.S. Patent
Application Publication No. 2003/0180336 Al, publ. Sep. 25, 2003
(“Sasaki”), and U.S. Patent No. 4,842,848, issued Jun. 27, 1989 (“Saita”).
2. Claims 1, 2, 5, and 6 under pre-AIA 35 U.S.C. § 103(a) as obvious
in view of Bagala, U.S. Patent Application Publication No. 2006/0223910
Al, publ. Oct. 5, 2006 (“Bagala”), and Saita.
Claim 1, the only independent claim on appeal, is reproduced below:
1. A cosmetic containing glass flakes,
wherein the glass flakes have the following composition
of E glass or boron-free E glass in mass%:
CompoBesi? E glass Boron-free E glass
SOj 52 to 56 55 to 6?
AEG, 12 to 16 5 to 15
CaO 16 to 25 17 to 25
MgO 0 to 6 0 to 6
NaiO+KzO 0 to 0.8 0 to 5
5 to 13 -
IKE - 0 to 2
0 to 0.5 -
the glass flakes have an average thickness of 0.1 to 1.0
pm, an average particle diameter of 1 to 100 pm, and an
average aspect ratio of 10 or greater, the average aspect ratio
being obtained by dividing the average particle diameter by the
average thickness,
a particle diameter distribution index of the glass flakes is
5.0 or less, the particle diameter distribution index being
obtained by dividing D90 by D10, where in a particle size
distribution of the glass flakes, D10 is a particle diameter at
which the cumulative mass distribution of particle diameters
reaches 10% when counted from the smaller side, and D90 is a
particle diameter at which the cumulative mass distribution of
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Application 12/283,956
particle diameters reaches 90% when counted from the smaller
side,
the glass flakes are contained as an extender pigment in
the cosmetic, and
a surface of each of the glass flakes is coated with no
coating, or at least part of the surface of each of the glass flakes
is directly coated with a hydrophobizing agent.
REJECTION BASED ON MATSUBA, SASAKI, AND SAIT A
Rejection
Claim 1 is directed to a cosmetic containing glass flakes. The glass
flakes are required by the claim to be an “E glass” comprising specific
amounts of oxides and fluorine and recited values for thickness, diameter,
and aspect ratio. The glass flakes are an “extender pigment.” The claim
further requires the glass to have “no coating” or have at least part of the
surface coated with a hydrophobizing agent.
The Examiner found that Matsuba teaches glass flakes having the
same composition as the E glass recited in claim 1, but not as an extended
pigment. Final Act. 4—5. The Examiner further found that the claimed
thickness, diameter, and aspect ratio described in Matsuba overlap or
encompass the claimed ranges making them obvious to one of ordinary skill
in the art. Id., 5—6.
The Examiner acknowledged that Matsuba does not describe the
recited particle diameter distribution. Id., 6. However, the Examiner found
that Sasaki teaches that a particle size distribution that meets the claimed
limitation is desirable to improve spreadability, blending, and provide a
finish which is smoother and less sticky after application, making it obvious
to have selected such distribution for the glass flakes of Matsuba. Id., 6—7.
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Application 12/283,956
With respect to the requirement of the claim that the glass flakes are
an “extender pigment,” Saita explains that an extender pigment is a base
material that improves spreadability, adherence, and touch. Saita, col. 1,11.
17—32. Saita describes a flaky metallic oxide of low refractive index that
can be used as an extender pigment to give improved touch and stability.
Id., col. 2,11. 5-9.
The Examiner found that it would have been obvious to have used the
glass flakes of Matsuba as modified by Sasaki as an extender pigment as
taught by Saita for the advantages described in each of the publications, such
as for the improved spreadability, adherence, and stability. Final Act. 9-10.
The Examiner also found that Saita teaches that its extender pigment
can be uncoated, meeting the corresponding limitation of claim 1 that the
flakes have “no coating.” Id., 8.
Appellants argue that it would not be reasonable to utilize Matsuba’s
particles as an extender because Saita teaches that metal oxides shine too
much as an extender pigment. Br. 7—8. Appellants also contend that
Matsuba teaches coated glass particles and that there would have been no
reason “to separate the glass particles from the metallic coating that Matsuba
specifically chooses for them, then use them with either no coating or a
hydrophobic coating as required by claim 1.” Id.,1. Finally, Appellants
contend that Saita only teaches coated glass flakes. Id., 6. Specifically,
Appellants argue that Examples 1—3 of Saita describe flakes which are
coated with the pigment iron oxide. Id., 6—7.
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Application 12/283,956
Discussion
Appellants contend that one of ordinary skill in the art would not have
had reason to use Matsuba’s metal oxide glass flakes as extender pigments
because, citing column 1, lines 63—64 of Saita, Saita teaches that metal
oxides “shine[] too much.” Br. 7—8.
This argument does not persuade us that the Examiner erred. As
noted by the Examiner, the teaching in Saita is not a general disparagement
of using metal oxides as flakes. Ans. 7—8. The complete passage is
reproduced below:
Flaky pigments having thin layers of a metallic oxide having a
high refractive index on platelet crystals of barium sulfate
having a thickness of 0.05 to 1 pm (hereinafter abbreviated to
p) and a size of 5 to lOOp are proposed . . . However, such
pigments have disadvantages in that processes are long for
depositing barium sulfate and then a metallic oxide, etc, and the
resulting metallic oxide shines too much as an extender pigment
because of pearly luster exhibited by the thin layers thereof
having a thickness within the range of 0.01 to 0.1 p.
Saita, col. 1,11. 56—66 (emphasis added).
Thus, Saita is discussing the disadvantages of a flaky pigment
comprised of a metal oxide on platelet crystals of barium sulfate. This
teaching does not disparage the metal oxide glass flakes of Matsuba because
the metal oxide glass flakes in Matsuba and the barium sulfate platelet
crystal in Saita are different materials. Appellants did not establish that
Matsuba’s flakes would have the same property as barium sulfate crystals.
Moreover, Saita teaches that the pearly luster on the barium sulfate is
conferred by “thin layers thereof having a thickness within the range of 0.01
to 0.1 p.” Id. Appellants did not establish that Matsuba’s E glass possesses
such characteristics.
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Application 12/283,956
Appellants also contend that all of Matsuba’s E glass substrates are
coated and one of ordinary skill in the art would not have had reason to use
them with “no coating” as required by the claims. Br. 6. This argument is
not persuasive.
While Matsuba teaches that the glass base material is used to make a
luster pigment, Matsuba expressly teaches that the E glass substrate (the
same E glass as claimed) is advantageous because it “does not contain a
substance with a possibility of having influence harmful to environment or a
human body, and its safety is high.” Matsuba 111; see also Ans. 6.
Consequently, one of ordinary skill in the art would have had reason to use
the E glass flakes of Matsuba because it is less detrimental to the
environment and body. One of ordinary skill in the art would have had
reason to use Matsuba’s flake as an extender pigment in Matsuba’s
composition to improve its spreadability and adherence as taught by Saita.
Ans. 5, 7; Saita, col. 4,11. 51—52; col. 8,11. 15—21. Thus, while Matsuba
may have described its substrates as coated, this was when it is used as a
luster pigment, not as an extender pigment as required by the claims.
Appellants contend that Saita only describes coated extender
pigments. Appellants’ argument is not persuasive. Saita teaches “the
synthetic flaky metallic oxide may be coated with colorants.” Saita, col. 3,
11. 67—68. The term “may”2 is permissive indicating that it is possible that
the flakes are coated, but also that is possible that they are uncoated.
2 “used to indicate possibility or probability - you may be right - things you
may need — sometimes used interchangeably with can.”
https://www.merriam-webster.com/dictionary/may (Accessed Oct. 8, 2017).
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Appellants did not explain why the term “may” as used in the context in
Saita would require a coating with a colorant.
Appellants argue that Examples 1, 2, and 3 of Saita used coated flakes
because those Examples disclose the ingredient iron oxide, which is a
colorant disclosed in Saita. Br. 6. However, while we agree iron oxide is
present, the examples do not expressly state that the iron oxide is used as
coating. Nonetheless, even assuming Appellants are correct that the flakes
in Examples 1—3 of Saita are coated, such a teaching does not negate the
more general disclosure in Saita that the flakes “may be coated,” indicating
that they “may not” be coated, as well. Ans. 3.
For the foregoing reasons, the rejection of claim 1 as obvious in view
of Matsuba, Sasaki, and Saita is affirmed. Claims 2, 5, and 6 were not
argued separately and thus fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
2. REJECTION BASED ON MATSUBA, BAGALA, AND SAITA
This rejection relies on Matsuba and Saita for the same teachings in
Rejection 1, but cites Bagala — rather than Sasaki — for teaching the particle
size distribution recited in the claims. Final Act. 12—13.
Appellants contend that Bagala is not pertinent because it teaches that
its glass flakes are coated, instead of not coated as required by the claims.
Br. 8—9. Appellants also contend that Bagala “focuses on avoiding small
particles so as to prevent the small particles from scattering light and
imparting opacity to the pigment.” Id., 9.
Appellants’ arguments are not persuasive. The Examiner relied upon
Bagala for its teaching of glass flakes of similar size to Matsuba and having
a particle diameter distribution that overlaps with the claimed range. Ans.
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Application 12/283,956
8—9. The Examiner found that Bagala teaches that “particles having this size
distribution are useful in all types of compositions including cosmetics,. . .
provide a uniform surface to pigmented films and reduce the light scattering
effect of the smallest sized particles.” Id., 9. Appellants have not provided
evidence that the Examiner erred in finding that the size distribution
described by Bagala would be beneficial to Matsuba’s similar E glass flakes
when utilized as an uncoated flake.
With regard to Appellants’ argument that Bagala focused on avoiding
small particles to avoid scatter and possible resulting opacity (Br. 9), we
note that
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of
the patentee controls. . . . [A]ny need or problem known in the field
of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). Neither have
Appellants have not established that reducing scatter or opacity should be
avoided in an extender pigment.
Appellants also argue that the recited particle diameter distribution
results in a cosmetic which is smooth, “good to the touch,” “good in
spreading on the skin,” and ease of removal. Br. 9. However, the Examiner
found that such particle distribution is described or suggested by Bagala.
Thus, the distribution diameter relied upon by Appellants to achieve the
aforementioned benefits would have been characteristic of Bagala’s particle
size distribution, even if unrecognized. “Mere recognition of latent
properties in the prior art does not render nonobvious an otherwise known
invention.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
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Application 12/283,956
1991). Appellants have not demonstrated that the claimed range has any
properties which are different from those that would be inherent to the size
distribution of Bagala and distinguishable from those outside the range. See
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
For the foregoing reasons, the rejection of claim 1 as obvious in view
of Matsuba, Bagala, and Saita is affirmed. Claims 2, 5, and 6 were not
argued separately and thus fall with claim 1. 37 C.F.R § 41.37(c)(l)(iv).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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