L'OREALDownload PDFPatent Trials and Appeals BoardMar 11, 20222021003128 (P.T.A.B. Mar. 11, 2022) Copy Citation 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. 16/086,960 09/20/2018 Rita Jaky EL-KHOURI 513371US 6050 147747 7590 03/11/2022 Oblon/L'Oreal 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER FUBARA, BLESSING M ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 03/11/2022 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): iahmadi@oblon.com oblonpat@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 RITA JAKY EL-KHOURI, JODY EBANKS, and RABIA AHMAD ____________ Appeal 2021-003128 Application 16/086,9601 Technology Center 1600 ____________ Before RYAN H. FLAX, DAVID COTTA, and CYNTHIA M. HARDMAN, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a cosmetic composition capable of forming a multilayer structure after application to a keratinous material. The Examiner rejected the claims on appeal under 35 U.S.C. § 102 as anticipated and on the basis of nonstatutory double patenting. We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is L’Oréal of Paris, France. Appeal Br. 1. Appeal 2021-003128 Application 16/086,960 2 STATEMENT OF THE CASE The Specification discloses that “[m]any cosmetic compositions . . . have been formulated in an attempt to possess long wearing properties upon application,” but “many of these compositions do not generally possess both good long-wear/transfer-resistance properties as well as good application properties, good comfort properties and/or good appearance properties (for example, shine, [gloss] or matte properties).” Spec. ¶ 3. For example, the Specification explains that silicone resins were “known to provide good long wear properties and/or transfer-resistance,” but products containing such resins “possess poor application properties, poor feel upon application (for example, feel rough) and poor shine or gloss.” Id. ¶ 4. To address this problem, previously, “a second composition (topcoat) [was] separately applied to such products to improve poor properties of the compositions to make the products acceptable to consumers.” Id. However, such a “topcoat composition [had to] be reapplied continually . . . meaning that the products are effectively not ‘long-wearing’ as they require constant maintenance and reapplication.” Id. Thus, according to the Specification, “there remains a need for improved ‘single step’ cosmetic compositions having improved cosmetic properties, particularly good wear, feel, radiance, luminosity, and/or matte characteristics upon application.” Id. ¶ 6. The Specification discloses “cosmetic compositions capable of forming a multilayer structure after application to a keratinous material, wherein the compositions comprise at least two immiscible components prior to application.” Spec. ¶ 8. The disclosed “compositions allow for benefits associated with multilayer cosmetic products without having to engage in a multi-step application process.” Id. ¶ 2. Appeal 2021-003128 Application 16/086,960 3 Claims 1, 4-7, 9, 10, and 14-18 are on appeal. Claim 1 is representative and reads as follows: 1. A cosmetic composition capable of forming a multilayer structure after application to a keratinous material, wherein the cosmetic composition comprises at least two immiscible components prior to application, wherein the at least two immiscible components are Component A and Component B, wherein Component A and Component B are separated in the cosmetic composition, and wherein, prior to application to keratinous material, the cosmetic composition is mixed such that Component A and Component B are temporarily miscible upon application to keratinous material and, after application to keratinous material, Component A separates from Component B to form a multilayer structure on keratinous material comprising Layer A corresponding to Component A and Layer B corresponding to Component B. The claims stand rejected as follows: The Examiner rejected claims 1, 4-7, 9, 10, and 14-18 under 35 U.S.C. § 102 as anticipated by Bui.2 The Examiner rejected claims 1, 4-7, 9, 10, and 14-18 on the grounds of nonstatutory double patenting over claims 1-12 of US Patent No. 9,789,055 B2, claims 1-8 of US Patent No. 10,272,027 B2, and claims 1-19 of US Patent No. 10,426,722 B2.3 2 Bui et al., US Patent Publication No. 2007/0093619 A1, published Apr. 26, 2007 (“Bui”). 3 The Examiner also rejected the pending claims on the grounds of double patenting over the claims of pending US Patent Application Nos. 14/983,380, 15/857,045 (now US 10,780,040 B2) and 15/857,066 (now US 10,894,010 B2). The Examiner’s rejection based on pending US Patent Application No. 14/983,380 is moot because that application has since been abandoned. Ans. 12. Accordingly, that rejection is no longer before us on appeal. In addition, in its Reply Brief, Appellant represents that it filed a Terminal Disclaimer over US Patent Application Nos. 15/857,045 (now US 10,780,040 B2) and 15/857,066 (now US 10,894,010 B2) with the intent to Appeal 2021-003128 Application 16/086,960 4 ANTICIPATION The same issue is dispositive with respect to each of the pending claims. Accordingly, we address the pending claims together. The pending claims require a cosmetic composition comprising two components denominated Component A and Component B. The claims further require that the two components have certain properties relating to miscibility and their ability to form a multilayer structure when applied to keratinous material. Appeal Br. 10 (independent claim 1). In finding that Bui anticipates the pending claims, the Examiner determined that Bui disclosed a cosmetic lip composition that comprises acrylate/dimethicone (which the Examiner found to correspond to the claimed Component A) and polypropylsilsesquioxane (which the Examiner found to correspond to the claimed Component B). Ans. 3-4 (citing Bui ¶ 467). The Examiner finds that “[t]hese components in Bui are the same components disclosed in [A]ppellant’s Specification.” Id. at 10. The Examiner thus reasons that Bui’s composition will have the same properties as the claimed composition, explaining: “[b]ecause the composition contains the same immiscible components, the components will also separate when applied to keratinous material.” Id. at 9. Appellant argues that Bui’s composition is “stable and homogenous” and has “different blending and separation properties than are required in the invention compositions.” Appeal Br. 7. Appellant further argues that “[n]o evidence exists that Bui’s two film forming agents identified by the “narrow issues for appeal.” Reply Br. 3. We do not determine here whether Appellant’s Terminal Disclaimer is effective. Nonetheless, in view of Appellant’s express intent to narrow the issues on appeal, we no longer consider these two double patenting rejections to be challenged in this Appeal. Appeal 2021-003128 Application 16/086,960 5 Examiner, acrylate/dimethicone and polypropylsilsesquioxane . . . would be separate in Bui’s composition prior to application and would then re- separate into separate layers after mixing and application.” Reply Br. 4; see also Appeal Br. 6-8. We agree. We acknowledge that the Specification discloses both acrylate/dimethicone and polypropylsilsesquioxane, identifying both as “[f]ilm [f]orming [a]gent[s].” Spec. ¶¶ 81, 136, 142. However, the Specification does not teach that acrylate/dimethicone corresponds to Component A and that polypropylsilsesquioxane corresponds to Component B as recited in the pending claims. With respect to Component A, the Specification teaches that it may include a film forming agent. See, e.g., Spec. ¶ 17. Thus, Component A could include acrylate/dimethicone. But the Specification makes clear that the film forming agent is only part of Component A. Id. (“Component A preferably comprises about 0.01% to 60% by weight with respect to the total weight of the composition of at least one silicone-and/or hydrocarbon- containing film forming agent.”). The Examiner does not direct us to evidence to support that it is the film forming agent, rather than the other ingredients that make up Component A, that imparts the claimed properties to Component A. Thus, the evidence currently of record does not support that silicone acrylate will necessarily have the properties of the recited Component A when included in Bui’s composition. As to Component B, the Examiner does not direct us to disclosure in the Specification describing Component B as comprising film forming agents. Moreover, the Specification teaches that Component B “preferably comprises about 0.01% to 90% by weight . . . silicone compounds.” Spec. Appeal 2021-003128 Application 16/086,960 6 ¶ 17; see also id. ¶ 74 (teaching that Component B may comprise “at least one shine-enhancing agent, at least one comfort agent and/or at least one barrier agent”). And the Specification includes separate section headings for “film forming agent[s]” and “silicone compounds,” suggesting that they are two separate categories of ingredients. Accordingly, the evidence of record does not support that polypropylsilsesquioxane will necessarily have the properties of the recited Component B when included in Bui’s composition. In sum, the Examiner does not direct us to persuasive evidence to support that Bui’s cosmetic lip composition comprising acrylate/dimethicone and polypropylsilsesquioxane is the same as that recited in the claim. Absent such evidence, we have no basis on which to conclude that Bui’s cosmetic lip composition has the miscibility and layer-forming properties recited in the pending claims. Cf. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, 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.”). Accordingly, we reverse the Examiner’s rejection of claims 1, 4-7, 9, 10, and 14-18 as anticipated by Bui. DOUBLE PATENTING The same issue is dispositive with respect to each of the three double patenting rejection remaining before us. With respect to all three rejections, the Examiner asserts: “[a]lthough the claims at issue are not identical, they are not patentably distinct from each other because the issued composition and composition used in the issued method anticipates the examined composition.” Ans. 7. Appeal 2021-003128 Application 16/086,960 7 Appellant argues that all three reference patents relate to “standard cosmetic composition . . . - compositions which are homogeneous before and after application, and compositions which do not change from before application to after application.” Appeal Br. 7. Appellant further argues that the Examiner has failed to provide evidence that the compositions recited in the reference claims would have the claimed miscibility and layer-forming properties. Id.; see also Reply Br. 2. We agree. The Examiner appears to assert that the compositions recited in the reference claims have the claimed miscibility and layer-forming properties because they are “not recited as being stable, homogeneous, are not emulsions and do not contain surfactants.” Ans. 12. The Examiner, however, does not cite any evidence to support this proposition. Further, the fact that the reference claims do not recite their compositions are stable and homogenous does not necessarily mean that they lack those properties; it may be that they have those properties even if they are not expressly recited by the claims. Finally, absent further explanation and/or persuasive evidence, we are not persuaded that non-emulsion status and the absence of surfactants means that the compositions recited in the reference claims necessarily have the properties recited in the pending claims. Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999) (“Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.”) (internal citations omitted). Accordingly, we reverse the Examiner’s double patenting rejections. Appeal 2021-003128 Application 16/086,960 8 SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-7, 9, 10, 14-18 102 Bui 1, 4-7, 9, 10, 14-18 1, 4-7, 9, 10, 14-18 Nonstatutory Double Patenting US Patent No. 9,789,055 B2 1, 4-7, 9, 10, 14-18 1, 4-7, 9, 10, 14-18 Nonstatutory Double Patenting US Patent No. 10,272,027 B2 1, 4-7, 9, 10, 14-18 1, 4-7, 9, 10, 14-18 Nonstatutory Double Patenting US Patent No. 10,426,722 B2 1, 4-7, 9, 10, 14-18 Overall Outcome 1, 4-7, 9, 10, 14-18 REVERSED Copy with citationCopy as parenthetical citation