L'ORÉAL

Patent Trials and Appeals Board

May 15, 2020

2019006030 (P.T.A.B. May. 15, 2020)

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.
14/931,316 11/03/2015 Ruisong XU 462002US99 1057
22850 7590 05/15/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
05/15/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUISONG XU, ALINE AUDE GUIMONT,
ALLEN SHA, RAMAKRISHNAN HARIHARAN, and
CHAITRALI GOTHE1
Appeal 2019-006030
Application 14/931,316
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a nail
polish composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as L’Oreal. Appeal Br. 1. We
use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a).
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STATEMENT OF THE CASE
“Traditional nail polish products contain a large amount of cellulose
based polymers such as nitrocellulose, primarily . . . [to] provide good
adhesion of the compositions to nails.” Spec. 1:13–16. However, “[a]lthough
nitrocellulose is . . . the ‘gold standard’ of adhesive agents in nail polish
compositions, the traditional nail compositions containing nitrocellulose are
generally known for poor long wear characteristics.” Id. at 1:16–21.
“Further, nitrocellulose does not impart high gloss.” Id. at 1:25–26.
“In the past, proposed solutions to improve adhesion and gloss
included incorporating into compositions containing nitrocellulose high
levels of plasticizers.” Id. at 1:28–30. “For instance, U.S. Pat. No. 6,939,551
[Amato] relates to the use of nitrocellulose in the presence of butyl
phthalimide isopropyl phthalimide.” Id. at 1:31 to 2:1.
Claims 1, 4, 9, 12, 16, 18–23, and 25–29 are on appeal. Claims 1 and
29, reproduced below, are the independent claims and are illustrative:
1. A nail composition comprising:
at least one adhesive agent, wherein the at least one adhesive
agent is selected from the group consisting of radical or
polycondensate synthetic polymers, polymers of natural origin,
and mixtures thereof;
at least one primary film former, wherein the at least one
primary film former is a silicone/acrylates copolymer having an
acid value (number) ranging from about 40 to about 95 and
having a Tg value ranging from about 40°C to about 95°C; and
at least one plasticizer selected from the group consisting of
ethyl tosylamide, an ester of a glycol, an ester of an acid, and
mixtures thereof; and
wherein the composition has shine higher than about 60 GU at 20°, wherein
the weight ratio of the at least one primary film former to the at least one
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plasticizer is greater than or equal to about 1:1, and wherein the composition
does not contain butylphthalimide isopropylphthalimide.

29. A nail composition comprising:
at least one adhesive agent, wherein the at least one adhesive
agent is nitrocellulose;
at least one primary film former, wherein the at least one
primary film former is a silicone/acrylates copolymer having an
acid value (number) ranging from about 40 to about 95 and
having a Tg value ranging from about 40°C to about 95°C; and
at least one plasticizer which is ethyl tosylamide; and
wherein the composition has shine higher than about 60 GU at 20°, wherein
the weight ratio of the at least one primary film former to the at least one
plasticizer is greater than or equal to about 1:1, and wherein the composition
further comprises at least one secondary film former which is tosylamide
epoxy resin.

OPINION
Subheading
Claims 1, 4, 9, 12, 16, 18–23, and 25–29 stand rejected under 35
U.S.C. § 103 as obvious based on Amato.2 Ans. 3. The Examiner finds that
Amato discloses nail polish compositions that “combine film forming
polymers, film forming resins, and BIP [butylphthalimide isopropyl-
phthalimide] falling outside of the instant claim[] limitations on
plasticizers.” Id. at 4. The Examiner also finds, however, that Amato
discloses that when dibutyl phthalate or acetyl tributyl acetate3 is used as a

2 Amato et al., US 6,939,551 B2, issued Sept. 6, 2005.
3 Although the Examiner and Appellant refer to Amato’s disclosure of
“acetyl tributyl acetate,” Amato instead refers to acetyl tributyl citrate or
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plasticizer, “the nail polish compositions provided are ‘at least as good’ in
terms of hardness, adhesion, flexibility, and performance as those which
employ the most preferred BIP as a plasticizer.” Id. The Examiner also finds
that Amato discloses “plasticizers including each of dibutyl phthalate, acetyl
tributyl acetate [sic], dipropylene glycol dibenzoate, propylene glycol
dibenzoate, and propylene glycol monobenzoate as esters of carboxylic
acids, benzoates, and esters of glycols . . . , and N-ethyl-o/p-
toluenesulfonamide.” Id. at 5.4
The Examiner finds that “Amato describes a colored nail enamel
combining nitrocellulose, which appellants utilize and [c]laim as their
exemplary ‘adhesive agent,’ tosylamide/epoxy resin, which appellants
describe as a film-forming agent and specifically the ‘secondary’ film
former, solvents . . . , and coloring agents.” Id. at 4. Finally, the Examiner
finds that Amato teaches “[a]dditional film-forming polymers,” including
“the silicone/acrylate copolymer required by Claim 1, . . . more specifically
the identical ‘Shin-Etsu KP-543 (acrylic-silicone resin)’ (Col.4, L.41–42)
[that] appellants recite as an exemplary silicone/acrylates copolymer
possessing the required properties according to the instant disclosure and
claims.” Ans. 5.
Reasoning that “‘[w]hen a patent simply arranges old elements with
each performing the same function it had been known to perform and yields
no more than one would expect from such an arrangement, the combination

acetyl tributylcitrate. See, e.g., Amato 5:14, 6:6, 7:6; Tables 1, 6, 7, 10. The
term “acetyl tributyl acetate” does not appear in Amato.
4 The Examiner finds that N-ethyl-toluenesulfonamide is synonymous with
the ethyl tosylamide recited in the claims. Ans. 3.
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is obvious,’” the Examiner concludes that “it would have been prima facie
obvious to have selected various combinations of various otherwise well-
known nail polish components from within a prior art disclosure, to arrive at
compositions ‘yielding no more than one would expect from such an
arrangement.’” Id. at 6 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007)).
Appellant argues that “[t]he invention compositions exclude
butylphthalimide isopropylphthalimide (BIP). In stark contrast, Amato
requires the presence of BIP.” Appeal Br. 3. Appellant argues that “one of
ordinary skill in the art, seeking to follow Amato, would use BIP in his or
her composition. This is the only take away from Amato – use BIP.” Id.
Appellant also argues that,
with respect to the comparative compositions in Amato which
are allegedly “Just as good as” Amato’s BIP-containing
compositions, these comparative compositions do not anticipate
the pending claims (for example, they do not contain a silicone
acrylates copolymer). So the question is whether one of
ordinary skill in the art would be motivated by Amato’s
disclosure to add a silicone acrylates copolymer to the
comparative compositions without also adding BIP to the
composition. And the answer is “no.” No motivation would
have existed to modify the comparative examples in such a
manner. As noted above, the first modification that one of
ordinary skill in the art would be motivated to make to the
comparative compositions is to add BIP to the compositions,
directly contrary to the invention compositions.
Id. at 4.
We agree with the Examiner, however, that the composition of claim
1 would have been obvious based on Amato. Amato states that “[n]ail
polishes have typically included pigments and dyes that are suspended in a
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viscous matrix. The viscous matrix typically includes a film forming
component and a plasticizer, namely dibutyl phthalate.” Amato 1:30–33.
Amato states, however, that exposure to phthalates “has been undesirable for
some users because the users are sensitized to these materials.” Id. at 1:37–
39.
Amato discloses “a cosmetic film . . . [that] includes butylphthalimide
isopropylphthalimide, one or more primary film forming polymers and one
or more secondary film forming resins.” Id. at 1:48–51. Although Amato’s
inventive compositions all contain BIP, Amato discloses two control
compositions, one comprising dibutyl phthalate and the other comprising
acetyl tributylcitrate. Id. at 5:55–65. BIP, dibutyl phthalate, and acetyl
tributylcitrate are all plasticizers. See id. at 1:33, 3:4–5, 5:10–14. Amato
discloses that the inventive (BIP-containing) formulation “was at least as
good, when measured in terms of hardness, adhesion, and flexibility, as the
performance of the topcoat free of BIP and containing dibutyl phthalate and
the topcoat free of BIP and containing acetyl tributylcitrate.” Id. at 7:3–6.
More specifically, the composition comprising BIP and the
composition comprising acetyl tributylcitrate showed identical performance
in tests of adhesion and flexibility. Id., Tables 3 and 4. With respect to
hardness, the two compositions both had a hardness indicated by 26
oscillations at 2 hours; at 168 hours, the BIP- and acetyl tributylcitrate-
containing compositions had hardnesses indicated by 96 and 98 oscillations,
respectively. Id., Table 2.
Thus, Amato discloses that its control containing acetyl tributylcitrate
as a plasticizer performed almost identically to a composition that was
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otherwise the same but contained BIP as a plasticizer. Based on this
disclosure, and notwithstanding Amato’s focus on using BIP as a plasticizer
in its inventive compositions, it would have been obvious to a person of
ordinary skill in the art to use acetyl tributylcitrate as a plasticizer and to
modify a composition such as that shown in Amato’s Example 1C, which
comprises nitrocellulose and a polyester resin, to include a secondary film-
forming resin, such as Shin-Etsu KP-543, as suggested by Amato, because
Amato discloses that such secondary film-formers “strengthen and add
acceptable wear characteristics to the primary film forming polymer.” Id. at
4:2–5, 4:41–42.
The resulting composition reasonably appears to meet all of the
limitations of claim 1. Although Amato does not disclose the acid value or
the glass transition temperature (Tg) value of Shin-Etsu KP-543, as the
Examiner pointed out (Ans. 5), Appellant’s Specification describes this same
resin as suitable for use in the claimed composition. The Specification states
that “suitable silicone acrylate copolymers have a glass transition
temperature (Tg) of greater than 20°C, preferably greater than about 25°C,”
and that such copolymers include Shin-Etsu KP-543. Spec. 23:6–8, 23:15–
23. The Specification also states that suitable primary film-forming
polymers include “acrylate silicone copolymers” and that such polymers
have the glass transition temperature (Tg) and acid values recited in the
claims. Id. at 19:13–14, 19:19–32.
Based on these teachings, it is reasonable to conclude that Shin-Etsu
KP-943 is a silicone/acrylates copolymer having an acid value and Tg value
within the ranges recited in the claims.
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Where . . . the claimed and prior art products are identical or
substantially identical . . . the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . [The]
fairness [of the burden-shifting] is evidenced by the PTO’s
inability to manufacture products or to obtain and compare
prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellant argues that “[n]owhere does Amato teach or suggest the
importance of using a styrene acrylates copolymer primary film forming
agent having a high acid value.” Appeal Br. 5. This argument is
unpersuasive, for two reasons. First, the claims require a silicone/acrylates
copolymer, not a styrene acrylates copolymer. And, second, while Amato
may not teach “the importance” of including a secondary film-forming resin
such as Shin-Etsu KP-943, it nonetheless discloses that doing so has the
beneficial effect of “strengthen[ing] and add[ing] acceptable wear
characteristics to the primary film forming polymer.” Amato 4:2–5.
Appellant also argues that the composition of claim 1 would not have
been obvious based on Amato, even starting from Amato’s composition
containing acetyl tributylcitrate, because “the first modification that one of
ordinary skill in the art would be motivated to make to the comparative
compositions is to add BIP to the compositions, directly contrary to the
invention compositions.” Appeal Br. 4.
This argument is also unpersuasive. Amato discloses that both BIP
and acetyl tributylcitrate are plasticizers. Amato 3:7–11, 5:10–14. Amato
also discloses that a composition comprising acetyl tributylcitrate, alone, as
a plasticizer, performed almost identically to one that was the same but
contained BIP, alone, as a plasticizer. Id. at 7:1–7. Amato’s disclosure
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therefore does not support Appellant’s position that a skilled worker would
have considered it essential to add BIP to Amato’s acetyl tributylcitrate-
containing composition.
Appellant also argues that “Amato expressly distinguishes phthalates
and acetyl tributyl acetate [sic] from BIP and discourages/teaches away from
their use in compositions because of inferior sensitization properties.”
Appeal Br. 4. Appellant cites Amato’s disclosure that
[i]t has been observed over the years that phthalates and
aldehyde condensation product exposure has been undesirable
for some users because the users are sensitized to these
materials. There has been an effort to replace the polymeric
component with other materials that do not cause a
sensitization. However, the replacement materials have
produced a nail polish that is deficient in features such as high
gloss, defined color, long wear, chip resistance, nail flexibility
and adherence.
Id. at 5 (quoting Amato 1:37–45). Appellant argues that, “[b]ased on this
disclosure in Amato discouraging use of phthalates and acetyl tributyl
acetate [sic], one of ordinary skill in the art would not modify Amato’s
comparative compositions in any manner.” Id.
We are not persuaded that this teaching would have discouraged a
skilled worker from using acetyl tributylcitrate as a plasticizer. Amato’s
discussion, quoted above, of “aldehyde condensation product[s]” refers to an
earlier statement that “[t]he nail polish has also included an adhesion
promoter, a polymeric component formed by the condensation
polymerization of formaldehyde or other sulfonamide formaldehyde resin.”
Amato 1:33–36. Thus, although Amato teaches away from including an
aldehyde condensation product in its nail composition, those products are
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described as adhesion promoters, not plasticizers. Acetyl tributylcitrate is
described as a plasticizer. Id. at 5:10–14. Thus, Amato’s discussion of
aldehyde condensation products does not appear to apply to acetyl
tributylcitrate.
Finally, and with respect to both claim 1 and claim 29, Appellant
argues that “Amato would not lead one of ordinary skill in the art to focus on
adding styrene acrylates copolymers.” Appeal Br. 5, 6.
However, as the Examiner has pointed out, “[c]laim 29 does not recite
styrene/acrylate copolymers as a required component.” Ans. 12. Neither
does claim 1. And, as discussed above, although Amato might not focus on
silicone/acrylates copolymers such as Shin-Etsu KP-943, it discloses that
including them as secondary film-forming agents strengthens and adds wear
characteristics of the primary film-forming polymer. Amato 4:2–5, 4:41–42.
We affirm the rejection of claims 1 and 29 under 35 U.S.C. § 103
based on Amato. Claims 4, 9, 12, 16, 18–23, and 25–28 fall with claims 1
and 29 because they were not argued separately. 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 9, 12,
16, 18–23,
25–29
103 Amato 1, 4, 9, 12,
16, 18–23,
25–29

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED