2020006378 (P.T.A.B. Jul. 21, 2021)

Nail Alliance, LLC

Patent Trials and Appeals BoardJul 21, 2021

2020006378 (P.T.A.B. Jul. 21, 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. 15/396,207 12/30/2016 Sunil Sirdesai 084728-559154 1021 27148 7590 07/21/2021 POLSINELLI PC 900 WEST 48TH PLACE SUITE 900 KANSAS CITY, MO 64112-1895 EXAMINER PROSSER, ALISSA J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 07/21/2021 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): patentdocketing@polsinelli.com rendsley@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUNIL SIRDESAI ____________ Appeal 2020-006378 Application 15/396,207 Technology Center 1600 ____________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JEFFREY N. FREDMAN, 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, 3–8, and 14–19 (see Ans.2 3).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 “Nail Alliance, LLC” (Appellant’s February 10, 2020, Appeal Brief (Appeal Br.) 2). 2 Examiner’s July 10, 2020 Answer. 3 Pending claims 9–13 stand withdrawn from consideration (Ans. 3). Appeal 2020-006378 Application 15/396,207 2 STATEMENT OF THE CASE Appellant’s disclosure “relates generally to hybrid nail coating compositions, kits containing these compositions, and methods of their use and preparation” (Spec.4 ¶ 1). Claims 1 and 14 reproduced below: 1. A hybrid nail coating system comprising: a first layer comprising: a solvent; a film former; and a photoinitiator comprising a self-initiating oligomer, wherein the self-initiating oligomer comprises a moiety selected from the group consisting of radiation curing acrylate resins, light sensitive aliphatic and aromatic urethane acrylates, Michael adducts of beta-keto esters and (meth)acrylates and (meth)acrylated urethanes, and any combination thereof. (Appeal Br. 11.) 14. A hybrid nail coating system comprising: a first layer comprising: a solvent; a film former; and a photoinitiator comprising a self-initiating oligomer; and a second layer interposed between the first layer and a nail being coated, the second layer comprising: a nail adhesion promoting monomer; and a solvent; 4 Appellant’s December 30, 2016, Specification. Appeal 2020-006378 Application 15/396,207 3 wherein the nail adhesion promoting monomer comprises an olefinically unsaturated carboxylic acid capable of free radical polymerization. (Id. at 13.) Grounds of rejection before this Panel for review: I. Claims 1 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kergosien5 and Allnex.6 II. Claims 1, 3–5, 8, 14–16, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kergosien, Allnex, and Vu ’065.7 III. Claims 1, 3–6, 8, 14–17, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kergosien, Allnex, Vu ’065, and Vu ’306.8 IV. Claims 1, 3–8, and 14–19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kergosien, Allnex, Vu ’065, Vu ’306, Nordstrom,9 and Esstech.10 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 5 Kergosien et al., WO 2012/130601 A1, published Oct. 4, 2012. 6 Allnex, EBECRYL® Resins for indirect food packaging, available at www.allnex.com (2014). 7 Vu et al., US 2011/0060065 A1, published Mar. 10, 2011. 8 Vu et al., US 2011/0081306 A1, published Apr. 7, 2011. 9 Nordstrom et al., US 2014/0261512 A1, published Sept. 18, 2014. 10 Esstech, Inc., Di-HEMA Trimethylhexyl Dicarbamate, available at www.esstechinc.com/tag/diurethane-dimethacrylate/ (2018). Appeal 2020-006378 Application 15/396,207 4 FACTUAL FINDINGS (FF) FF 1. Kergosien relates to a photo-crosslinkable cosmetic composition, which is free of reactive monomers with a molecular mass of less than 400 g/mol comprising one or more ethylenic double bonds: at least two polymers comprising ethylenic double bonds, the mean number of ethylenic double bonds per polymer molecule being greater than 1, the said at least two polymers comprising at least one polyester polymer containing (meth)acrylate groups and at least one polyether polymer containing (meth)acrylate groups, and at least one radical photoinitiator . . . [and also] to a cosmetic process for coating the nails or false nails using such a composition. (Kergosien, Abstr.; see id. at 1:3–4 (Kergosien “relates to photo- crosslinkable, monomer-free cosmetic compositions, in particular nail varnishes, and also to a process for depositing a crosslinked coating in situ using these compositions”)) FF 2. Kergosien discloses that “[t]he main drawback of . . . [prior art] compositions lies in the toxicity of the unsaturated monomers used. Specifically, these highly reactive, low molecular weight molecules diffuse readily into the subjacent and adjacent substrates, where they react with biological molecules” (Kergosien 1:24–27). FF 3. Kergosien discloses the use of a variety of polymers “sold, for example, by the company Cytec[11] under the names Ebecryl” (Kergosien 7:22–8:2; id. at 12:21–25; id. at 18:8–13; id. 21:1–3). 11 We recognize that subsequent to Kergosien’s 2012 publication date, Cytec Industries Inc. announced the divestiture of its Coating Resins business, Cytex Coating Resins, and provided notice that “[e]ffective June 1, [2013,] Cytec Coating Resins is operating as Allnex” (Allnex Notice, Effective June 1, Cytec Coating Resins is operating as Allnex (2013)). Appeal 2020-006378 Application 15/396,207 5 FF 4. Kergosien discloses the use of photoinitiators, including “copolymerizable photoinitiators” that “have the advantage, over the standard photoinitiators . . . of being able to be integrated, via the double bonds, into the macromolecular system,” which “reduce[] the content of residual free photoinitiators that have not undergone a photoinduced radical cleavage and consequently improves the harmlessness of the cosmetic compositions” (Kergosien 19:17–20:27). FF 5. Kergosien discloses the use of polymer photoinitiators or photoinitiators attached to a high molecular weight molecule. The choice of such a high-mass photoinitiator has the same advantage as the selection of exclusively polymeric copolymerizable components, namely better safety of the photo-crosslinkable cosmetic compositions due to the absence of small, highly reactive molecules capable of diffusing to the neighboring biological substrates. As for the copolymerizable components, the weight-average molecular weight of the photoinitiator is preferably at least equal to 500 g/mol. (Kergosien 21:5–12.) FF 6. Kergosien’s “photo-crosslinkable cosmetic compositions of the present invention may comprise at least one solvent chosen from physiologically acceptable organic solvents” (Kergosien 25:26–27). FF 7. Kergosien discloses a “process compris[ing] a preliminary step of applying a transparent coat to ensure good adhesion (or base coat) under the photo-crosslinkable cosmetic composition” (Kergosien 28:18–20; see Final Act.12 6 (citing Kergosien 28:17–19 and 21–22) (Examiner finds that Kergosien discloses “an embodiment comprising the application of a transparent base coat (second layer) to ensure good adhesion under the cross 12 Examiner’s January 11, 2019, Final Office Action. Appeal 2020-006378 Application 15/396,207 6 linkable composition (first layer). . . . Preferably, this coating for ensuring good adhesion is also crosslinkable.”); Final Act. 9 (citing Kergosien 29:1– 9) (Examiner finds that Kergosien discloses that the “crosslinkable composition (first layer) constitutes a protective top coat for a standard base coat or nail varnish (third layer))). FF 8. Examiner finds that “Kergosien do[es] not teach radiation curing acrylate resins; light sensitive aliphatic and aromatic urethane acrylates; Michael adducts of beta-keto esters and (meth)acrylates; (meth)acrylated urethanes; and combinations thereof as required by claim 1” and relies on Allnex to make up for this deficiency (Final Act. 5). FF 9. Allnex discloses that “[m]igration of low molecular weight photointiators into food is a major concern” and “introduces its latest development in acrylated binder technology, [EBECRYL LEO 10101[] and EBECRYL LEO 10102[],] which do[] not require an additional photoinitiator, reducing the risk of migration in indirect food contact applications and mitigating performance issues with printability” (Allnex 12; see also id. 5 (Allnex discloses “[l]ow migration resins . . . designed for use in printing inks and coatings for indirect food contact”) FF 10. Examiner finds that the combination of Kergosien and Allnex fails to suggest “radiation curing acrylate resins; light sensitive aliphatic and aromatic urethane acrylates; Michael adducts of beta-keto esters and (meth)acrylates; (meth)acrylated urethanes; and combinations thereof as required by [Appellant’s] claims 1 and 15” or a “nail adhesion promoting monomer compris[ing] an olefinically unsaturated carboxylic acid as required by [Appellant’s] claims 4 and 14” and relies on Vu ‘’065 to make up for these deficiencies (Final Act. 6–7). Appeal 2020-006378 Application 15/396,207 7 FF 11. Vu ’065 “relates generally to compositions for nail coatings, and particularly, but not by way of limitation, to polymerizable compositions and adhesion-promoting basecoats polymerized therefrom” (Vu ’065 ¶ 1). FF 12. Vu ’065’s “liquid composition comprises reactive monomers, and/or oligomers, and/or polymers which provides the polymerized composition increased adhesiveness,” wherein “such reactive monomers and/or oligomers, and/or polymers may be a . . . methacroyloxyethyl maleate (Vu ’065 ¶ 20; see also Final Act. 7 (citing Spec. ¶ 71) (Examiner finds that methacryloyloxyethyl maleate is an “olefinically unsaturated carboxylic acid” (emphasis omitted))). FF 13. Vu ’065 discloses “a basecoat as a layer intermediate between the nail and coating surfaces” (Vu ’065 ¶ 31; Final Act. 9 (citing Vu ’065 ¶ 41) (Examiner finds that Vu ’065 discloses that “the basecoat (second layer) may be applied to a nail surface and contacted with a color layer (third layer) of a nail surface – basecoat – color layer system”)). FF 14. Vu ’065’s “polymerizable liquid composition . . . further comprises at least one non-reactive solvent,” which “may be selected from the group consisting of ketones, alkyl acetates, alcohols, alkanes, alkenes, and mixtures thereof” (Vu ’065 ¶¶ 37–38). FF 15. Examiner finds that the combination of Kergosien, Allnex, and Vu ’065 does “not teach the third layer comprises a solvent, a film former, a (meth)acrylated urethane and a pigment or colorant as required by [Appellant’s claims 6 and 17] and relies on Vu ’306 to make up for this deficiency (Final Act. 9 (citing Vu ’306 ¶¶ 29, 31)). FF 16. Examiner further finds that Vu ’306 discloses a composition comprising “at least one polymerizable compound [that] is a Appeal 2020-006378 Application 15/396,207 8 (meth)acrylate,” and embodiments that “may optionally comprise monomers and/or polymers inclusive of urethane methacrylate in order to fine tune adhesion” (Final Act. 9 (citing Vu ’065 ¶ 49)). FF 17. Examiner finds that the combination of Kergosien, Allnex, Vu ’065, and Vu ’306 fail to make obvious “diurethane dimethacrylate as required by [Appellant’s] claims 7 and 18” and relies on Nordstrom and Esstech to make up for this deficiency (Final Act. 10). FF 18. Examiner finds that Nordstrom discloses “polymerizable materials include any methacrylate including di-HEMA trimethylhexyl dicarbamate (synonym for diurethane dimethacrylate as evidenced by Esstech), urethane methacrylate, diurethane methacrylate, urethane dimethacrylate, etc.” (Final Act. 10 (citing Nordstrom ¶ 24)). ANALYSIS Rejections I–III: We find Rejections I–III cumulative to Rejection IV. Therefore, we vacate Rejections I–III in favor of cumulative Rejection IV discussed below. See generally Ex parte Heiman, No. 2009-009257, 2010 WL 1003899 (BPAI 2010) (nonprecedential) (vacating cumulative rejections); Ex parte Gutsch, No. 2009-000249, 2009 WL 1899607 (BPAI 2009) (non- precedential) (vacating cumulative rejections). Rejection IV: Claim 1: Appellant’s claim 1 is reproduced above. Based on the combination of Kergosien, Allnex, Vu ’065, Vu ’306, Nordstrom, and Esstech, Examiner concludes that, it would have been prima Appeal 2020-006378 Application 15/396,207 9 facie obvious to one of ordinary skill in the art “to substitute the self-curing acrylate resins taught by Allnex inclusive of EBECRYL® LEO 10101 and EBECRYL® LEO 10102 for the polymer photoinitiators taught by Kergosien” (Final Act. 6; see FF 1–18). We agree. Kergosien discloses that “[t]he main drawback of . . . [prior art nail care] compositions lies in the toxicity of the unsaturated monomers used. Specifically, these highly reactive, low molecular weight molecules diffuse readily into the subjacent and adjacent substrates, where they react with biological molecules” (FF 2; see also FF 5 (Kergosien discusses the benefit and advantage of using a high molecular weight photoinitiator, instead of small, highly reactive molecules that are capable of diffusing to neighboring biological substrates)). Allnex, the manufacture of the EBECRYL® products cited throughout Kergosien (see FF 3), is similarly concerned with the migration, or diffusion, of low molecular weight photoinitiators into biological substrates, i.e. food (see FF 9 (Allnex discloses that “[m]igration of low molecular weight photointiators into food is a major concern”)). Allnex, as relied upon by Examiner, reports its development of two new photoinitiators, EBECRYL LEO 10101 and EBECRYL LEO 10102, which do “not require an additional photoinitiator, reducing the risk of migration in indirect food contact applications and mitigating performance issues with printability” (FF 9). Although Allnex discloses that the foregoing photoinitiators were “designed for use in printing inks and coatings for indirect food contact,” we find no error in Examiner’s combination of Allnex with Kergosien’s disclosure that these types of photoinitiators would provide advantages when used in nail care compositions (see id.; cf. FF 1–5). Based on these disclosures, on of Appeal 2020-006378 Application 15/396,207 10 ordinary skill in this art would have found it prima facie obvious to take advantage of new developments in this field and incorporate these new developments into the nail care compositions disclosed in Kergosien. For the foregoing reasons, we are not persuaded by Appellant’s contention that “the art of record does not meet the recitations of independent claim 1” (Appeal Br. 4 (emphasis omitted); see id. (Appellant contends that “[a] distinguishing characteristic of the presently claimed compositions is that they include a photoinitiator comprising a self-initiating oligomer,” such as EBECRYL LEO 10101 and EBECRYL LEO 10102); Reply Br. 2–5; cf. Spec. ¶ 52 (Appellant discloses “the photoinitiator comprises a self-initiating oligomer[, wherein] . . . commercial compounds such as Allnex’s brand of EBECRYL® LEO 10101 [and] 10102” are exemplary.)). For the foregoing reasons, we are not persuaded by Appellant’s contention that “[t]here is no teaching in either Kergosien or Allnex of selecting the particular species recited in claim 1 for use as photoinitiators in nail compositions” (Appeal Br. 6). Appellant contends that “[o]ne of skill in the art at the time of the invention would not have understood the photoinitiators disclosed in Allnex to be the functional equivalent of the conventional photoinitiators for use in nail compositions disclosed in Kergosien” (Appeal Br. 7). This unsupported attorney argument is not persuasive. As discussed above, those of ordinary skill in this art would have found it prima facie obvious to take advantage of new developments in this field by incorporating these new developments into the nail care compositions disclosed in Kergosien. “Those skilled in [this] . . . art must be presumed to know something about [this] . . . art apart Appeal 2020-006378 Application 15/396,207 11 from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA 1962); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (Skill in the art is presumed.). Further, we find it proper to “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). See also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). In addition, we note that “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). For the foregoing reasons, we find that Allnex is reasonably pertinent to the particular problem addressed by Kergosien, i.e., the toxicity associated with highly reactive, low molecular weight molecules that can diffuse readily into the subjacent and adjacent substrates, where they react with biological molecules, as well as the particular problem with which the inventor is involved (see FF 2, 9; cf. Spec. ¶ 52 (Appellant discloses that “[u]se of self-initiating oligomers is reported to eliminate concerns about migration of low molecular weight photoinitiators”)). See In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992) (“[P]rior art is analogous . . . if the reference is . . . reasonably pertinent to the particular problem with which the inventor is involved”). Therefore, we are not persuaded by Appellant’s contention that “Kergosien and Allnex are not analogous art” (Appeal Br. 7 (emphasis omitted); see also Reply Br. 5). Having found no deficiency in the combination of Kergosien and Allnex as discussed above, we are not persuaded by Appellant’s contention that Vu ’065, Vu ’306, Nordstrom, and Esstech do not make up for the deficiencies non-persuasively asserted by Appellant (Appeal Br. 7). Appeal 2020-006378 Application 15/396,207 12 Claim 14: Appellant’s claim 14 is reproduced above. As discussed above, based on the combination of Kergosien, Allnex, Vu ’065, Vu ’306, Nordstrom, and Esstech, we find no error in Examiner’s conclusion that it would have been prima facie obvious, at the effective date of Appellant’s claimed invention, to obvious “to substitute the self-curing acrylate resins taught by Allnex inclusive of EBECRYL® LEO 10101 and EBECRYL® LEO 10102 for the polymer photoinitiators taught by Kergosien” (Final Act. 7–8; see FF 1–18). We also find no error in Examinen’s conclusion that based on the combination of Kergosien, Allnex, Vu ’065, Vu ’306, Nordstrom, and Esstech it would have been prima facie obvious, at the time Appellant’s invention was made, “to substitute the adhesion promoting basecoats as taught by Vu '065 comprising reactive monomers inclusive of the[, olefinically unsaturated carboxylic acid,] methacryloyloxyethyl maleate[, which is capable of free radical polymerization,] and at least one solvent for the transparent base coat of Kergosien which ensures good adhesion under the crosslinkable composition” (Final Act. 8; see FF 1–18). For the foregoing reasons, we are not persuaded by Appellant’s contention that “[t]he art of record does not meet the recitations of independent claim 14” (Appeal Br. 8; see also Reply Br. 5). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945). Therefore, we are not persuaded by Appellant’s contention that a person of ordinary skill in this Appeal 2020-006378 Application 15/396,207 13 would not have found it prima facie obvious to select methacryloyloxyl maleate from Vu ’065’s “list of ten possible chemical species of ‘reactive monomers, and/or oligomers, and/or polymers’ that may be selected for use in the disclosed composition” (Appeal Br. 8 (emphasis added); see also id. at 8–9; Reply Br. 5–6). See also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005) (“[S]pecific disclosure, even in a list, makes this case different from cases involving disclosure of a broad genus without reference to the potentially anticipating species.”); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of a multitude of combinations failed to render any particular formulation less obvious); Purdue Pharma Products L.P. v. Par Pharm., Inc., 377 Fed. Appx. 978, 982 (Fed. Cir. 2010) (Because Oshlack lists tramadol as one of fourteen different opioid analgesics to use in a controlled- release formulation that provides effective blood levels for twenty-four hours, Oshlack itself renders the selection of tramadol obvious regardless whether or not the patent lists tramadol as a preferred embodiment.). Appellant’s claim 14 does not require “a self-initiating oligomer in a first layer may photochemically cleave to provide oligomers bearing a free radical, which in turn, polymerizes the olefinic compounds in an adjacent layer present on the nail at the time of application” (Appeal Br. 9; see also Reply Br. 6). We are not persuaded by contentions that are not related to Appellant’s claimed invention. Having found no deficiency in the combination of Kergosien, Allnex, and Vu ’065, as discussed above, we are not persuaded by Appellant’s contention that Vu ’306, Nordstrom, and Esstech do not make up for the deficiencies non-persuasively asserted by Appellant (Appeal Br. 9). Appeal 2020-006378 Application 15/396,207 14 CONCLUSION We vacate Rejections I–III. The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness with respect to Rejection IV. Thus, the rejection of claims 1 and 14 under 35 U.S.C. § 103(a) as unpatentable over the combination of Kergosien, Allnex, Vu ’065, Vu ’306, Nordstrom, and Esstech is affirmed. Claims 3–8 are not separately argued and fall with claim 1. Claims 15–19 are not separately argued and fall with claim 14. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8 103 Kergosien, Allnex13 1, 3–5, 8, 14–16, 19 103 Kergosien, Allnex, Vu ’06514 1, 3–6, 8, 14–17, 19 103 Kergosien, Allnex, Vu ’065, Vu ’30615 1, 3–8, 14–19 103 Kergosien, Allnex, Vu ’065, Vu ’306, Nordstrom, Esstech 1, 3–8, 14–19 Overall Outcome 1, 3–8, 14–19 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 13 As explained above, we vacate this cumulative rejection. 14 As explained above, we vacate this cumulative rejection. 15 As explained above, we vacate this cumulative rejection.