L'OREAL

Patent Trials and Appeals Board

May 22, 2020

14586105 - (D) (P.T.A.B. May. 22, 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.
14/586,105 12/30/2014 Siliu TAN 4000-493US 7268
61275 7590 05/22/2020
The Marbury Law Group, PLLC
11800 Sunrise Valley Drive
15TH FLOOR
Reston, VA 20191
EXAMINER
VENKAT, JYOTHSNA A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/22/2020 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):
ptonotices@marburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SILIU TAN, JEAN-THIERRY SIMONNET,
JIM MITCHELL SINGER, NGHI VAN NGUYEN and ADITI GOGINENI1
Appeal 2019-005546
Application 14/586,105
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 hair
styling composition comprising an oil-in-water emulsion, which have been
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as L’Oréal. Appeal Br. 2.
We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a).
Appeal 2019-005546
Application 14/586,105

2
STATEMENT OF THE CASE
“The disclosure relates to oil-in-water (O/W) emulsions comprising
(a) an aqueous dispersion of particles of at least one latex chosen from an
acrylate latex, a polyurethane latex, or a silicone latex, (b) an oil phase, and
(c) at least one surfactant.” Spec. ¶ 1. Conventional O/W emulsion products
for the hair can have drawbacks, such as lack of stability. Spec. ¶ 4. “In
order to avoid some of these drawbacks, additional components such as
surfactants may be added to stabilize the emulsion by creating a gelled
matrix which serves to set, within its three-dimensional network, the
globules of the oil phase, thereby mechanically maintaining the emulsion.”
Id. “Traditionally, however, the presence of components such as surfactants
. . . have limited the options for preparing O/W emulsions.” Spec. ¶ 5.
The Specification states that “it has now been discovered that a stable
O/W emulsion can be prepared by providing latex film forming polymer
particles at the interface of the water phase and the oil phase, without
forming a continuous closed capsule around the oily particle or droplet.”
Spec. ¶ 6.
Claims 1–4, 6, 7, and 10–12 are on appeal. Claim 1, reproduced
below, is illustrative:
1. A hair styling composition comprising an oil-in-water
emulsion, the oil-in-water emulsion comprising:
(a) an aqueous dispersion of particles of at least one latex chosen from
an acrylate latex, a polyurethane latex, or a silicone latex,
(b) an oil phase, and
(c) at least one surfactant,
wherein the amount of the (a) aqueous dispersion of particles of at
least one latex chosen from an acrylate latex, a polyurethane latex, or a
Appeal 2019-005546
Application 14/586,105

3
silicone latex, in combination with the (c) at least one surfactant is sufficient
to stabilize the oil-in-water emulsion;
wherein the total amount of surfactant present in the oil-in-water
emulsion is not, by itself, sufficient to stabilize the emulsion; and
wherein the emulsion is stable.

The claims stand rejected as follows:
Claims 1–4, 6, 7, 10, and 11 under 35 U.S.C. § 103 as being obvious
based on Walter2 in view of Snyder3 and Yahagi4 (Ans. 3);
Claim 12 under 35 U.S.C. § 103 as being obvious over Walter in view
of Snyder, Yahagi, and Auguste5 (Ans. 5).
OPINION
Obviousness based on Walter, Snyder, and Yahagi
Claims 1–4, 6, 7, 10, and 11 stand rejected under 35 U.S.C. § 103 as
obvious based on Walter, Snyder, and Yahagi. Ans. 3. The Examiner finds
that Walter teaches a “hair styling cream and thus teaches [the] claimed hair
styling compositions and . . . teaches preferred oil-in-water emulsions,”
and also teaches “emulsifiers also known as surfactants, which can be
anionic or nonionic.” Ans. 3. The Examiner finds that Walter “does not
teach claimed acrylate latex polymer . . . and also claimed polyurethane latex
polymer.” Ans. 4.
The Examiner finds that Snyder “teaches hair styling shampoos and
this teaches [the] claimed hair styling compositions and teaches dispersed

2 US 7,842,286 B2, Nov. 30, 2010.
3 US 6,268,431 B1, July 31, 2001.
4 US 4,798,721, Jan. 17, 1989.
5 US 2003/0059388 A1, Mar. 27, 2003.
Appeal 2019-005546
Application 14/586,105

4
water insoluble latex particles,” specifically, “acrylate polymers.” Id. The
Examiner finds that Yahagi teaches a “hair composition comprising
submicron polymer particles and teaches polyurethane as the polymer
particles.” Id. Specifically, Yahagi “under method 6 teaches polyurethane
latex.” Id. at 5.
The Examiner concludes that it would have been obvious
to prepare compositions of [Walter] comprising water,
surfactant, oil phase and formulate the compositions in the form
of o/w emulsions, which is the preferred emulsion taught by
[Walter] and add the latex acrylic polymer taught by [Snyder]
which also teaches hair styling compositions and add
polyurethane latex taught and claimed by [Yahagi] with the
reasonable expectation of success that the hair compositions can
be also used for hair styling.
Ans. 5.
The Examiner reasons, “[r]egarding the wherein clause, which is
‘surfactant present . . . . stabilize the emulsion and wherein the emulsion is
stable’, the combination of references renders the claim 1 prima facie
obvious, and therefore the references also necessarily and inherently meet
the ‘wherein’ clause.” Ans. 5.
Appellant argues that “the surfactant of Walter is used as an
emulsifier to stabilize the oil-in-water emulsion. . . . Even if a skilled artisan
had been motivated to add two latexes to Walter’s composition, as suggested
by the Examiner, the skilled artisan would have had no reason to reduce the
amount of emulsifier (surfactant) taught by Walter to stabilize the
emulsion.” Appeal. Br. 8. Appellant argues that “the Examiner’s rejection
fails to provide any reason to modify Walter to use a total amount of
surfactant that is not sufficient to stabilize the emulsion.” Id. Appellant
Appeal 2019-005546
Application 14/586,105

5
concludes, “the cited combination cannot ‘necessarily and inherently’ meet
the element ‘wherein the total amount of surfactant present in the oil-in-
water emulsion is not, by itself, sufficient to stabilize the emulsion.’”
Appeal Br. 9.
We agree with Appellant that the evidence cited by the Examiner does
not support a case of obviousness. Walter discloses “hair styling cream
products in emulsion form.” Walter 1:55–56. Walter explains that its
“compositions . . . can be made by conventional formulation and mixing
techniques. The cream products in the form of emulsions can be made by
emulsification of aqueous phase and fatty phase.” Walter 13:60–62.
Thus, Walter describes its product as being “in emulsion form” and as
a “cream.” Walter 1:55, 13:60. Walter also states that its product has “a
more pleasant, less sticky and less greasy or oily feeling to the touch.” Id. at
14:41–42. And, as noted above, Appellant’s Specification states that
“conventional O/W emulsion products . . . can also have drawbacks, such as
an oily feel and lack of stability. In order to avoid some of these drawbacks,
. . . surfactants may be added to stabilize the emulsion.” Spec. ¶ 4. It is
reasonable to conclude that Walter’s O/W emulsion is formulated to include
an amount of emulsifier that will result in a stable emulsion, because only a
stable emulsion could be described as being in a consistent emulsion form.
In addition, based on the Specification’s background discussion, the less oily
feel of Walter’s composition supports the conclusion that Walter’s surfactant
is present in an amount sufficient to stabilize the emulsion.
The Examiner reasons that “the combination of references renders the
claim 1 prima facie obvious, and therefore the references also necessarily
Appeal 2019-005546
Application 14/586,105

6
and inherently meet the ‘wherein’ clause.” Ans. 5. That reasoning,
however, confuses the conclusion with the supporting evidence: claim 1 is
not prima facie obvious unless the evidence shows that all of the claim
limitations, including the “wherein” clause, are inherently met or would
have been obvious based on the cited evidence.
The Examiner has not pointed to evidence showing that the teachings
of Walter, combined with Snyder and Yahagi, necessarily result in a total
amount of surfactant present in the oil-in-water emulsion that is not, by
itself, sufficient to stabilize the emulsion. “[T]he examiner must provide
some evidence or scientific reasoning to establish the reasonableness of the
examiner’s belief that the functional limitation is an inherent characteristic
of the prior art” before the burden is shifted to Appellant to disprove the
inherency. Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).
The Examiner also has not provided a reason why a person of
ordinary skill in the art would be motivated to modify Walter, based on
Snyder and Yahagi, so that the amount of surfactant in its oil-in-water
emulsion is not, by itself, sufficient to stabilize the emulsion. Rather, the
Examiner relies on Snyder and Yahagi only as providing a reason to add an
acrylate latex and a polyurethane latex to Walter’s composition, not to
modify the amount of surfactant in that composition. See Ans. 4–5.
The Examiner finds that Walter teaches a range of surfactant amounts
that overlaps with the range disclosed by the instant Specification and “also
teaches low amount of surfactant, which can be 0.5% and instant application
Appeal 2019-005546
Application 14/586,105

7
is also teaching low amount of surfactant which also can be 0.5%.” Ans.
10–11.
We are not persuaded that this finding supports a prima facie case of
obviousness. The functional language of claim 1 requires an amount of
surfactant that is not sufficient to stabilize the emulsion; it does not recite a
particular amount of surfactant to achieve this function. The range of
emulsifier amounts disclosed by Walter, whether or not it overlaps with the
range disclosed by the instant Specification, is intended to form an emulsion.
As discussed above, Walter’s disclosure suggests, even if it does not
expressly teach, using an amount of surfactant that, for a given composition,
forms a stable emulsion. The Examiner has not provided any evidence to
suggest that a skilled artisan would have considered it obvious to use an
amount of emulsifier in the emulsion disclosed by Walter that is less than the
amount that would be required to stabilize the emulsion.
We conclude that the rejection of claims 1–4, 6, 7, 10, and 11 under
35 U.S.C. § 103(a) based on Walter, Snyder, and Yahagi is not supported by
a preponderance of the evidence, and we therefore reverse it.
Obviousness based on Walter, Snyder, Yahagi, and Auguste
Claim 12 stands rejected under 35 U.S.C. § 103 as obvious based on
Walter, Snyder, Yahagi, and Auguste. Ans. 5. The Examiner relies on
Walter, Snyder, and Yahagi for the teachings discussed above, and relies on
Auguste for the additional limitations of dependent claim 12. Ans. 5–6.
Appellant argues that “Auguste does not provide any reason for
modifying the amount of emulsifier (surfactant) in the oil-in-water emulsion
Appeal 2019-005546
Application 14/586,105

8
of Walter below the amount necessary to stabilize the emulsion.” Appeal
Br. 10.
We agree with Appellant that the evidence cited by the Examiner does
not support a case of obviousness. As explained above, Walter, Snyder, and
Yahagi do not support a prima facie case of obviousness with respect to
claim 1. The Examiner points to no teachings in Auguste that make up for
the deficiencies of Walter, Snyder, and Yahagi.
We therefore reverse the rejection of claim 12 under 35 U.S.C.
§ 103(a) based on Walter, Snyder, Yahagi, and Auguste.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7,
10, 11
103 Walter, Snyder, Yahagi 1–4, 6, 7,
10, 11
12 103 Walter, Snyder,
Yahagi, Auguste
12
Overall
Outcome
1–4, 6, 7,
10–12

REVERSED