L'OREAL

Patent Trials and Appeals Board

Sep 1, 2021

2020006376 (P.T.A.B. Sep. 1, 2021)

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.
15/087,066 03/31/2016 Anne-Laure Suzanne BERNARD 4000-604US 4110
143495 7590 09/01/2021
The Marbury Law Group, PLLC/L'Oreal
11800 Sunrise Valley Drive
15th Floor
Reston, VA 20191
EXAMINER
PIPIC, ALMA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
PUS@rd.us.loreal.com
ptonotices@marburylaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANNE-LAURE SUZANNE and ALEXANDRA JANE ELISA
____________

Appeal 2020-006376
Application 15/087,066
Technology Center 1600
____________

Before DONALD E. ADAMS, DEBORAH KATZ, and
ULRIKE W. JENKS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–13, 15–18, and 25 (see Final Act.2 2).3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “L’Oreal”
(Appellant’s March 16, 2020, Appeal Brief (Appeal Br.) 2).
2 Examiner’s October 21, 2019, Final Office Action.
3 Claims 19–24 stand withdrawn from consideration (Final Act. 2).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to compositions and methods for
improving the appearance of the skin” (Spec. ¶ 2). Appellant’s claim 1 is
reproduced below:
1. A skin tightening matrix comprising:
composition (A) comprising:
(a) at least one vinyl-terminated polysiloxane and
at least one hydride-functionalized polysiloxane; and
(b) at least one filler, and
composition (B) comprising:
(a) at least one vinyl-terminated polysiloxane;
(b) at least one filler; and
(c) at least one at least one[4] metal catalyst,
wherein the viscosity of the at least one vinyl-terminated
polysiloxane in each of composition (A) and (B) ranges from
about 50,000 to about 100,000 cSt at 25°C,
wherein the specific surface area of the at least one filler
in each of composition (A) or composition (B) is greater than
about 600 m2/g,
wherein the at least one filler in composition (A) and
composition (B) is present in a total amount ranging up to 5%
by weight, relative to the total weight of the skin tightening
matrix,
wherein composition (A) and composition (B) are present
in the skin tightening matrix in amounts such that a ratio of
composition (A):composition (B) is approximately 1:1 by
weight.
(Appeal Br. 15 (emphasis added).)

4 We note the duplication of the phrase “at least one” in claim 1 and, in the
event of further prosecution, encourage the correction of this typographical
error.
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Claims 1–13, 15–18, and 25 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Jeram,5 Smith,6 and Sigma-Aldrich.7

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner’s findings concerning the scope and content of
the prior art (Final Act. 2–7), and provide the following for emphasis.
FF 1. Jeram discloses:
[A]n organopolysiloxane composition combining high strength
with exceptionally good elongation and tear comprising (A) 100
parts of a first component having therein (i) 20 to 90 parts of a
vinyl-containing high viscosity organopolysiloxane or a blend
of high viscosity vinyl-containing polysiloxanes having no
more than 25 mole percent or phenyl radicals and having a
viscosity of 5,000 to 1,000,000 centipoise at 25ºC of the
formula,

where Vi stands for vinyl, R1 is selected from the class
consisting of lower alkenyl, alkyl and aryl radicals and R is
selected from the class consisting of monovalent hydrocarbon

5 Jeram et al., US 3,957,713, issued May 18, 1976.
6 Smith, US 3,635,743, issued Jan. 18, 1972.
7 SIGMA-ALDRICH, Poly(dimethylsiloxane-co-methylhydrosiloxane),
trimethylsilyl terminated Product Sheet, poly(dimethylsiloxane-co-
methylhydrosiloxane) trimethylsilyl terminated,
http://www.sigmaaldrich.com/eatafog/product/aldrieh/482196?lang=en&
reigion=US, last accessed Sept. 11, 2017.
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radicals and halogenated monovalent hydrocarbon radicals, R2
is selected from the class consisting of alkyl and aryl radicals, x
varies from 100 to 10,000 and y varies from 0 to 300. This
high viscosity vinyl-containing organopolysiloxane is mixed
with (ii) from 5 to 40 parts of a low viscosity vinyl-containing
organopolysiloxane or a blend of low viscosity polysiloxanes
having a vinyl content that may vary from 0.01 mole percent
vinyl to 60 mole percent vinyl and a viscosity that varies from
50 to 5,000 centipoise at 25ºC and having no more than 25
mole percent phenyl radicals of the formula,

wherein R1, R2 and R are as previously defined, R" is selected
from the class consisting of alkyl, aryl and alkenyl radicals, w
varies from 0 to 500 and z varies from 0 to 200; and these two
vinyl-containing organopolysiloxanes are mixed with (iii) from
5 to 70 parts of a filler; (iv) from 0.1 to 50 parts per million of
the total organopolysiloxane composition of a platinum catalyst
which may be any type of known platinum catalyst such as,
chloroplatinic acid. Per 100 parts of (A) composition and at the
time there is desired to cure the composition there may be
mixed the second component of this composition which
comprises from 1 to 100 parts based on 100 parts of (A) of a
second component (B) which is a hydrogen silicone
composition selected from the class consisting of hydrogen
containing silanes and hydrogen containing polysiloxanes and
mixtures of hydrogen containing polysiloxanes with fillers and
high viscosity polysiloxanes. Hydrogen containing
polysiloxanes are the preferred second component (B). This
composition when the two components are mixed together may
either be cured at room temperature for 17 hours to produce the
desired composition or may be cured at elevated temperatures
such as, 300ºC for 10 seconds. Note –– when only a hydrogen
polysiloxane is present in component (B) that B is preferably
present at a concentration of 1 to 10 parts per 100 parts of
component (A) but that when a part of the filler and/or high
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viscosity vinyl-containing polysiloxane is mixed in with
component (B) there may be used 100 parts of component (B)
per 100 parts of component (A).
(Jeram 2:21–3:21 (emphasis added); see also id. at 8:53–55 (Jeram
discloses that “fillers are generally utilized in a concentration of 5 to
70 parts of treated filler for each 100 parts of component (A)”); id. at
13:1–41 (Jeram exemplifies a composition comprising component
(A), which contains “40 parts of silazane treated filler . . . as disclosed
in Smith” and component (B), which contains “2 parts of the same
silazane treated filler as was used on Component A” per 10 parts of
Component B); Final Act. 3–4.)
FF 2. Jeram discloses that its “high viscosity vinyl containing polysiloxane
generally may have a viscosity of 5000 to 1,000,000 centipoise at 25ºC”
(Jeram 4:36–39; see Final Act. 5).
FF 3. Jeram discloses that “[i]n order to get the high desired tensile
strength in the compositions of the instant case and particularly when such
compositions are formed to thin coatings or films, it is desirable to
incorporate a filler into the composition” and that “silazane treated
filler . . . are preferred as the treated fillers to be utilized in the compositions
of the present case” (Jeram 8:23–27; id. at 47–52 (citing Smith); see Final
Act. 4).
FF 4. Smith discloses a silica filler having “a surface area of at least 50
square meters per gram and preferably 150 to 500 square meters per gram”
(Smith 1:59–61; see Final Act. 4–5).
FF 5. Examiner relies on Sigma-Aldrich to disclose that “a
poly(dimethylsiloxane-co-methylhydrosiloxane)trimethylsilyl terminated

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having an average molecular weight of about 950 has a viscosity of 12
cSt[ ]at 25ºC” (Final Act. 11).
ANALYSIS
Jeram discloses a composition comprising a mixture of component
(A) a composition comprising at least one high viscosity vinyl-terminated
polysioloxane, at least one hydride-functionalized polysiloxane, and at least
one filler (see FF 1, Composition B) and component (B) a composition
comprising at least one high viscosity vinyl-terminate polysiloxane, at least
one filler and at least one metal catalyst (see FF 1, Composition A). Jeram
discloses that “when a . . . high viscosity vinyl-containing polysiloxane is
mixed in with component (B) there may be used 100 parts of component (B)
per 100 parts of component (A),” thus, Jeram discloses a composition
comprising a 1:1 ratio, by weight, of component (A) and component (B) (see
FF 1; see also FF 2 (Jeram discloses that its high viscosity vinyl containing
polysiloxane generally has a viscosity of 5,000 to 1,000,000 cSt at 25ºC);
Final Act. 5). The vinyl containing polysiloxane viscosity range set forth in
Appellant’s claim 1 falls within the viscosity range set forth in Jeram. See
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) (“[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.”).
Jeram discloses that filler, such as those disclosed in Smith, which
have a surface area of at least 50 m2/g, are added to its composition in order
to get the desired high tensile strength of its composition (FF 3–4). Thus,
Jeram makes clear that the tensile strength of the composition is a result
effective variable that is adjusted by the surface area of the filler. As
Examiner explains, Appellant’s claimed filler surface area range of greater
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than about 600 m2/g overlaps the range of at least 50 m2/g disclosed by
Jeram. See In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997)
(Overlapping ranges support a prima facie case of obviousness.). In
addition, we find that the rationale for determining the optimal parameters
for prior art result effective variables “flows from the ‘normal desire of
scientists or artisans to improve upon what is already generally known.’” Id.
(quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). “[W]here
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Jeram discloses that “fillers are generally utilized in a concentration of
5 to 70 parts of treated filler for each 100 parts of component (A)” (FF 1).
Jeram also exemplifies that the use of 2 parts of filler per 10 parts of
component (B) (id.). Thus, the combination of Jeram and Smith makes
obvious a composition wherein the filler in composition (A) and
composition (B) are present in a total amount ranging up to 5% by weight,
relative to the total weight of the final composition, as is required by
Appellant’s claimed invention (see FF 1; cf. Appeal Br. 15; see generally
Final Act. 5–6; Ans. 6–7).
For the foregoing reasons, we find no error in Examiner’s prima facie
case of obviousness (see Final Act. 2–7).
Appellant’s claim 1 is drawn to a composition (see Appeal Br. 15).
We recognize that the preamble of Appellant’s claim 1 recites the intended
use of the claimed composition as a skin tightening matrix (id). We find,
however, that “[i]f . . . the preamble offers no distinct definition of any of the
claimed invention’s limitations, but rather merely states, for example, the
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purpose or intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to constitute or
explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999); see also Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997) (“[W]here . . . a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim limitation.”).
Simply stated, “the patentability of . . . composition claims depend[] on the
claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). Therefore, we are not persuaded by Appellant’s contentions
regarding the intended use recitation in the preamble of its composition
claim (see Appeal Br. 6–10; Reply Br.8 2–4; see generally Ans.9 5–6).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that the combination of prior art relied upon by Examiner fails
“to teach or suggest the total amount of the at least one filler in composition
(A) and composition (B)” (see Appeal Br. 11). For the same reasons, we are
not persuaded by Appellant’s contention that
Examiner failed to articulate any reason or point to specific
guidance as to why one of ordinary skill in the art at the time of
the invention would have been motivated to select, with a
reasonable expectation of success, the amount of 5 parts per
100 parts of component A in Jeram given the disclosure of the
range of 5–70 parts per 100 parts of component A.
(Appeal Br. 12.) See Geisler, 116 F.3d at 1468 (Overlapping ranges support
a prima facie case of obviousness.).

8 Appellant’s August 7, 2020, Reply Brief.
9 Examiner’s June 10, 2020, Answer.
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We are not persuaded by Appellant’s reliance on Jeram’s disclosure
that “when only a hydrogen polysiloxane is present in component (B) that B
is preferably present at a concentration of 1 to 10 parts per 100 parts of
component (A),” which fails to account for the alternative set forth in the
remainder of the sentence, specifically, “but that when a part of the filler
and/or high viscosity vinyl-containing polysiloxane is mixed in with
component (B) there may be used 100 parts of component (B) per 100 parts
of component (A)” (see Appeal Br. 12–13; Reply Br. 4–5; cf. FF 1).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Jeram, Smith, and Sigma-
Aldrich is affirmed. Claims 2–13, 15–18, and 25 are not separately argued
and fall with claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13,
15–18,
25
103 Jeram, Smith,
Sigma-Aldrich
1–13,
15–18,
25

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) (2019).
AFFIRMED