Satoshi Sakuma et al.

Patent Trials and Appeals Board

Apr 1, 2022

2021000896 (P.T.A.B. Apr. 1, 2022)

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. 13/520,689 07/05/2012 Satoshi Sakuma 1009682-000205 5855 21839 7590 04/01/2022 BUCHANAN, INGERSOLL & ROONEY PC 1737 KING STREET SUITE 500 ALEXANDRIA, VA 22314-2727 EXAMINER PROSSER, ALISSA J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SATOSHI SAKUMA and TAKAYUKI HAYAKAWA ____________ Appeal 2021-000896 Application 13/520,6891 Technology Center 1600 ____________ Before ERIC B. GRIMES, ULRIKE W. JENKS, and TAWEN CHANG, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims directed to an aqueous cosmetic product containing alumina coated titanium oxide. Examiner rejects the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as MITSUBISHI PENCIL COMPANY, LIMITED. Appeal Br. 2. Appeal 2021-000896 Application 13/520,689 2 STATEMENT OF THE CASE According to the Specification, when titanium oxide is incorporated into an aqueous cosmetic it tends to settle down and form a hard cake. Spec. ¶ 2. This hard cake is not easily dispersed by stirring. Id. ¶ 5. By including an alkali-soluble acryl resin, the ability to disperse any settled titanium oxide is improved. Id. ¶ 21. Claims 1, 2, 7, 12, 13, and 15 are on appeal,2 and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows: 1. An aqueous cosmetic consisting essentially of 8 to 25 % by mass of alumina coated titanium oxide, an acid dye, an alkyl acrylate/octylacrylamide copolymer as an alkali- soluble acryl resin having no styrene group, at least one fungicide selected from the group consisting of parabens, sodium dehydroacetate, and phenoxyethanol, 1 to 20 % by mass of a water soluble organic solvent, and water, with a mass ratio of the alkali-soluble acryl resin to alumina coated titanium oxide of 0.01 to 1, wherein the viscosity of the aqueous cosmetic at a shear rate of 3.83 s-1 is 150 mPa·s or less, and the viscosity of the aqueous cosmetic at a shear rate of 383 s-1 is 20 mPa·s or less measured at 25°C by means of a cone plate type viscometer. Appeal Br., Claims Appendix 1 (formatting added). 2 Claims 3-6, 8-11, 14, and 16 are canceled. Ans. 3. Appeal 2021-000896 Application 13/520,689 3 Appellant requests review of Examiner’s rejection of claims 1, 2, 7, 12, 13, and 15 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Kergosien,3 as evidenced by Sheehan4 in view of Chen,5 Fishman6 as evidenced by Martino,7 and Ellingson.8 As Appellant does not argue the claims separately, we focus our analysis on claim 1, and claims, 2, 7, 12, 13, and 15 stand or fall with that claim. 37 C.F.R. § 41.37 (c)(1)(iv) (2013). The issue is whether a preponderance of the evidence of record supports Examiner’s conclusion that the aqueous cosmetic product as claimed is obvious. Findings of Fact FF1. Kergosien teaches a cosmetic felt tip pen containing a composition for making up and/or caring for keratin materials chosen from the skin, the lips and the eyelashes, or the teeth, comprising . . . a continuous aqueous phase comprising a particulate phase having an average particle size of less than or equal to 0.5 μm, at least one film-forming polymer and a dispersing agent. Kergosien, Abstract; see Final Act. 4.9 FF2. Kergosien teaches mineral pigments including “titanium dioxide, [and] optionally surface-treated” titanium dioxide.10 Kergosien 7; see 3 Kergosien, WO 2008/087508 A2, published July 24, 2008. 4 Sheehan, US 4,795,631, issued Jan. 3, 1989. 5 Chen et al., Effect of Al2O3 coating on the properties of nano-TiO2, 6(1) World J. Eng’g 133-135 (1999), Abstract only (“Chen”). 6 Fishman, US 6,190,681 B1, issued Feb. 20, 2001. 7 Martino et al., US 5,288,493, issued Feb. 22, 1994 (“Martino”). 8 Ellingson et al., US 5,965,111, issued Oct. 12, 1999 (“Ellingson”). 9 Final Office Action dated October 18, 2019. 10 Appellant does not dispute that “titanium oxide,” as recited in claim 1, includes the titanium dioxide described by Kergosien. See Appeal Br. 4 Appeal 2021-000896 Application 13/520,689 4 Ans. 14. The pigments may be present in proportions from 0.01% to 15% by weight. Kergosien 7; see Final Act. 5. FF3. Kergosien teaches compositions that include “water-soluble or liposoluble dyes at a content ranging from 0.01% to 10% by weight . . . [such as] Sudan brown, DC Yellow 11, DC violet 2, DC Orange 5 and quinoline yellow.” Kergosien 40; see Final Act. 6. FF4. The Specification provides a list of acid dyes that are suitable for aqueous cosmetics and the list includes “Violet No. 401 (Ext. D & C Violet No. 2).” Spec. 9. FF5. Kergosien teaches the use of dispersing agents. Dispersing agents include acrylic acid copolymer salts. See Kergosien 17, 25-26. “The dispersing agent may be present at a content ranging from 0.01% to 10% by weight.” Kergosien 17; see Final Act. 5. FF6. Kergosien teaches that film forming polymer may be present “from 0.1% to 60% by weight, and in particular from 1% to 50%, and better still from 5% to 40% by total weight of solids of film-forming polymer, relative to the total weight of the composition.” Kergosien 20; see Final Act. 20. Kergosien teaches that “radical-type film- forming polymers may in particular be acrylic and/or vinyl homopolymers or copolymers.” Kergosien 17; see Final Act. 5. “[T]he term ‘acrylic polymer’ is intended to mean polymers comprising at least 50% at least of monomer units chosen from acrylic acid, methacrylic acid and their esters, in particular from C1-C18 alkyl (“Kergosien discloses a composition comprising at least DC Red 7 Pigment or titanium oxide,” among other ingredients.). Appeal 2021-000896 Application 13/520,689 5 (meth)acrylate monomers as reported hereinafter.” Kergosien 25; see Final Act. 5. FF7. Sheehan teaches alkali-dispersible or alkali-soluble, water insoluble, thermoplastic, film-forming resins. Particularly suitable are copolymers of acrylic acid, methacrylic acid, acrylamides, and acrylate or methacrylate esters, including terpolymers of acrylic acid, methacrylic acid and acrylamide. Sufficient acid residues should be incorporated in the polymer to allow the formation of a stable polymer dispersion in aqueous alkali, or to render the polymer soluble in aqueous alkali. Sheehan 2:31-40; see Final Act. 5-6. FF8. Kergosien teaches that the composition can contain additional “ingredients commonly used in cosmetics, and more especially in the cosmetic and/or nail care field . . . [including] preserving agents” Kergosien 40. FF9. Kergosien teaches that the term “aqueous” is intended to mean a liquid medium based on water and/or on hydrophilic solvents. This aqueous liquid medium may consist essentially of water. It may also comprise a mixture of water and of water- miscible organic solvent(s) (miscibility in water of greater than 50% by weight at 25°C), for instance lower monoalcohols containing from 1 to 5 carbon atoms, such as ethanol or isopropanol, glycols containing from 2 to 8 carbon atoms, such as propylene glycol, ethylene glycol, 1,3-butylene glycol or dipropylene glycol, C3-C4 ketones and C2-C4 aldehydes. Kergosien 19. FF10. Chen teaches that aluminum oxide coating improves titanium oxide dispersibility. Chang tested “Al2O3 [(aluminum oxide)] coating on the properties of nano-TiO2 and find[s] that the aggregation of nano-TiO2 Appeal 2021-000896 Application 13/520,689 6 powders is inhibited effectively and the dispersibility is improved.” Chen, Abstract; Final Act. 7. FF11. Fishman teaches “it is believed that the acrylates/octylacrylamide copolymer acts to bind the colorant to the skin.” Fishman 2:30-31. Fishman teaches using Dermacryl® products that are acrylates/octylacrylamide copolymer. See Fishman 2:30-45. FF12. Martino teaches that [t]he acrylate or methacrylate/acrylamide/acid copolymers . . . will comprise from about 0.1 to 10% and preferably about 0.3 to 5% by weight of the cosmetic skin care composition. This copolymer is soluble in organic materials such as alcohols and is insoluble in water, but may become water dispersible/soluble through neutralization of its carboxyl groups with an alkaline material such as triethanolamine, 2-amino-2-methyl-1- propanol, sodium, ammonium and potassium hydroxide. Martino 4:52-61. “Depending on the type and degree of neutralization and solubilization, the copolymers can be made suitable for use in many different skincare media.” Id. 2:35-37. FF13. Ellingson teaches adding a preservative to a nail polish. Explaining that “[o]ne or more preservatives may optionally be added to the present compositions to prevent, inhibit, or retard microbial growth in the composition. Preferred preservatives include methyl paraben, ethyl paraben, propyl paraben, . . . sodium dehydroacetate, . . . [and] phenoxyethanol.” Ellingson 12:64-13:19 Principle of Law “If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Appeal 2021-000896 Application 13/520,689 7 Analysis We adopt the findings concerning the scope and content of the prior art as well as the conclusion as set forth in Examiner’s Answer and the Final Office Action. The findings of fact reproduced above are referenced to highlight certain pertinent evidence. We address Appellant’s arguments below. Appellant argues that Examiner erred in rejecting claim 1 as obvious over Kergosien, Sheehan, Chen, Fishman, Martino, and Ellingson. Appeal Br. 5-10. We are not persuaded by Appellant’s contentions. Kergosien teaches a makeup composition comprising a continuous aqueous phase, a particulate phase, a film-forming polymer, and a dispersing agent. FF1, FF6. Kergosien’s particulate phase includes titanium oxide and, optionally, surface treated titanium oxide at a concentration ranging from 0.01-15%. FF2. Kergosien’s formulation can also encompass suitable dyes such as DC violet No. 2. FF3. The Specification identifies Violet No. 401 (Ext. D & C Violet No. 2) as a suitable acid dye. FF4. Kergosien teaches using dispersing agents such as acrylic acid polymers in a range from 0.01% to 10% by weight. FF5. Kergosien teaches that film forming polymer may be present from 0.1% to 60% by weight and the polymers comprising at least 50% of monomer units chosen from acrylic acid, methacrylic acid and their esters, in particular from C1-C18 alkyl (meth)acrylate monomers. FF6, FF7. Kergosien also teaches including preserving agents in the composition. FF8. Applying the KSR standard of obviousness to the findings of fact, we agree with Examiner that the substitution of aluminum oxide coated titanium oxide taught by Chen (FF10) for the titanium oxide of Kergosien would have been obvious to the skilled artisan because Kergosien already suggests Appeal 2021-000896 Application 13/520,689 8 using surface treated titanium oxide. FF2. Examiner recognizes that Kergosien does not exemplify using the copolymer species acrylates/octylacrylamide. Final Act. 6. Examiner finds that, at the time of the invention, it would have been obvious to a skilled artisan to modify the “dispersion film former of Kergosien comprising inter alia copolymers of acrylic acid, methacrylic acid and their esters, in particular Cl-C18 alkyl (meth)acrylate monomers[,] to further comprise the specific acrylate copolymer acrylates/octylacrylamide[,] because Fishman teach acrylates/octylacrylamide copolymers bind colorants to the skin imparting long lasting color.” Final Act. 9; FF6, FF7, FF11. In other words, Fishman provides a reason to have selected acrylates/octylacrylamide from Kergosien’s dispersion films because it has the property of providing long lasting color. Examiner concludes that based on these teachings it would have been obvious to substitute one art-recognized acrylic acid polymer for another, especially as the acrylates/octylacrylamide are taught to help bind colorant to the skin. See Final Act. 9; FF11. Finally, Examiner concludes that adding a preservative as taught by Ellingson also would have been obvious because Kergosien expressly suggests the inclusion of preservatives in the cosmetic product. See Final Act. 9-10; FF8, FF13. Appellant contends that Chen has nothing to do with an aqueous cosmetic and therefore the combination of Kergosien and Chen lacks a reasonable expectation of success. See Appeal Br. 4-5; see also Reply 2 (There “seems to be a jump of logic to combine Kergosien with Chen”). We are not persuaded by Appellant’s contention. “Kergosien desires films which exhibit ‘good homogeneity, in particular the colour [sic] generated is uniform and the film obtained is uniform, smooth and even.’” Ans. 4 (citing Kergosien 2); FF1, FF2. Examiner is relying on Kergosien for Appeal 2021-000896 Application 13/520,689 9 teaching a nail varnish composition that uses mineral pigments such as titanium dioxide. See Final Act. 4-5. Kergosien teaches incorporating titanium dioxide as well as surface treated titanium dioxide into the composition. FF2. Thus, Kergosien already identifies surface treated titanium dioxide as a suitable pigment for incorporation into the composition. FF2. Examiner explains that “Chen is drawn to a basic research study of the effect of alumina coating on the properties of nano-titania. . . . Chen found [that] alumina-coated titania forms a uniform coating layer.” Ans. 4. We are not persuaded by Appellant’s contention that there is no reason to look to Chen. Here, Chen explains that adding an aluminum oxide coating onto titanium dioxide particles improves the dispersibility of the powder. FF10. In other words, the surface treated titanium dioxide is less likely to form clumps when used in a composition. Chen’s teaching, therefore, provides motivation to select the surface treated titanium dioxide from Kergosien’s list of pigments. See FF2; see also Kergosien 6-7 (listing pigments). Appellant contends that “Kergosien does not disclose or suggest employing a mass ratio for resin to titanium oxide of 0.01 to 1.” Appeal Br. 8. To support their position, Appellant calculates the ratios of resin to titanium oxide as disclosed in Kergosien’s examples. Id. We are not persuaded by Appellant’s contention, because a reference is not limited to preferred embodiment or tested embodiments. “A disclosure in a reference is not limited to its specific illustrative examples, but must be considered as a whole to ascertain what would be realistically suggested thereby to one of ordinary skill in the art.” In re Uhlig, 376 F.2d 320, 323 (CCPA 1967). It is well settled that “in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all Appeal 2021-000896 Application 13/520,689 10 disclosures of the prior art, including unpreferred embodiments, must be considered.’” Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); In re Mills, 470 F.2d 649, 651 (CCPA 1972). Appellant contends that Fishman fails to disclose or suggest a water- containing composition and that the disclosure is specific to nonaqueous media. Appeal Br. 5. Appellant concludes that there is no reasonable expectation of success in combining Fishman with the teachings of Kergosien. Id. We are not persuaded by Appellant’s contention. Just because Fishman does not exemplify acrylate/octylacrylamide copolymer in an aqueous environment does not convince us that a skilled artisan would not consider the particular polymer useful in such an environment. Examiner explains that “[i]mplicit to the teaching of Fishman that the acrylate/octylacrylamide copolymer acts to bind colorant to the skin is that the acrylate copolymer forms a film on the skin.” Ans. 5; FF11 (“it is believed that the acrylates/octylacrylamide copolymer acts to bind the colorant to the skin.”). Examiner explains that Kergosien teaches that acrylate copolymers are exemplary radical film forming polymers that also function as dispersing agents. Ans. 5; FF5, FF6. Examiner relies on Sheehan and Martino as evidence that acrylate copolymers can be made water dispersible/water soluble. Ans. 5 (“The teachings of Sheehan and in particular of Martino further evidence acrylate copolymers inclusive of acrylate/octylacrylamide function as film-formers in aqueous compositions.”); FF7, FF12. We find no error with Examiner’s reliance on Sheehan and Martino for establishing that one of ordinary skill in the art would have known that neutralization of acrylate/octylacrylamide copolymer Appeal 2021-000896 Application 13/520,689 11 would make the polymer water soluble. See FF7, FF12 (“Depending on the type and degree of neutralization and solubilization, the copolymers can be made suitable for use in many different skincare media.”). Appellant contends that Ellingson’s fast drying compositions contained preferably from 20 to 90% by weight of volatile organic solvents, therefore, one of ordinary skill in the art would not have been motivated to employ lesser amounts of organic solvent. Appeal Br. 6. We are not persuaded. We agree with Examiner that Appellant concedes that Ellingson discloses composition comprising at least 20% by weight volatile organic solvent. Ans. 6. As Examiner notes, the claim recites the use of volatile organic solvent in an amount ranging from 1 to 20%. Id. Here, the range of the prior art overlaps the claimed range, which is sufficient for establishing prima facie obviousness based on overlapping ranges. Id.; see In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“[W]e and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). A case based on overlapping ranges may be rebutted “by establishing that the claimed range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” Id. at 1330 (citations omitted). As explained further below, Appellant has not shown that the claimed range achieves unexpected results as compared to the range taught in Ellingson or otherwise established that the claimed range is critical. Accordingly, the record supports Examiner’s obviousness determination and, as explained below, we are not persuaded by Appellant’s arguments to the contrary. Appellant contends that the claimed product provides unexpected results. Appeal Br. 7. Appellant directs our attention to Tables 1 and 2 of the Specification but does not otherwise explain what the results of the tables Appeal 2021-000896 Application 13/520,689 12 mean and how they would be interpreted by one of ordinary skill in the art. Appellant’s argument that the comparative example using lower levels of titanium oxide showed inferior masking power when compared to test examples that used higher levels of titanium oxide is not persuasive because the comparison is not made to an otherwise equivalent composition. An argument made by counsel in a brief does not substitute for evidence lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). We have reviewed the tables in the Specification but agree with Examiner that they are insufficient to show unexpected results. See Ans. 8. As Examiner explains “Appellant’s data are not a comparison to the closest prior art / Kergosien.” Id. Appellant has not met their burden of showing that Examiner erred in rejecting the claims, or otherwise rebutted Examiner’s response found in the Answer and Final Action. Accordingly, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Kergosien, Sheehan, Chen, Fishman, Martino, and Ellingson. As claims 2, 7, 12, 13, and 15 have not been argued separately, they fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013). SUMMARY We affirm the rejection of claims 1, 2, 7, 12, 13, and 15 under pre- AIA 35 U.S.C. 103(a) over Kergosien, Chen, Fishman, Martino, and Ellingson. Appeal 2021-000896 Application 13/520,689 13 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7, 12, 13, 15 103(a) Kergosien, Sheehan, Chen, Fishman, Martino, Ellingson 1, 2, 7, 12, 13, 15 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) (2013). AFFIRMED