Anne Simonnet et al.

Patent Trials and Appeals Board

Mar 23, 2022

2021003298 (P.T.A.B. Mar. 23, 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. 13/885,588 10/15/2013 Anne Simonnet 415323US99PCT 3501 22850 7590 03/23/2022 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER VU, JAKE MINH ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): OBLONPAT@OBLON.COM iahmadi@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 ANNE SIMONNET and STEPHANE MASSON ____________ Appeal 2021-003298 Application 13/885,588 Technology Center 1600 ____________ Before DONALD E. ADAMS, TAWEN CHANG, and RACHEL H. TOWNSEND, 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 1-11, 14, 15, and 22 (Appeal Br. 3).2 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as “L’Oreal of Paris France” (Appellant’s November 19, 2020, Appeal Brief (Appeal Br.) 2). 2 Claims 17-20 stand withdrawn from consideration (Appeal Br. 3). Appeal 2021-003298 Application 13/885,588 2 STATEMENT OF THE CASE Appellant’s disclosure “relates to an intermediate composition for the preparation of . . . a [care and/or makeup] cosmetic composition, to a process for manufacturing this cosmetic composition, and to a process for coating the skin with the said cosmetic composition” (Spec.3 1). Appellant’s independent claim 1 is reproduced below: 1. A solid composition, comprising, in a physiologically acceptable medium: a pulverulent phase, an emulsifying system comprising a nonionic surfactant with a Griffin HLB value of less than 8 at 25°C that is a saccharide ester, a hydrophilic gelling agent, at least one organopolysiloxane elastomer present in a solids content of from 0.2% to 8% by weight relative to the total weight of the composition, and a hydrophilic active agent in a content of greater than or equal to 10% by weight relative to a total weight of the composition, wherein the composition comprises less than 2% by weight of water relative to a total weight of the composition, wherein the composition is made via an injection process with water as a dilution solvent, and wherein the composition is a compact powder makeup or cosmetic care composition. (Appeal Br. 15.) 3 Simonnet et al., US 2014/0030202 A1, published Jan. 30, 2014. Appeal 2021-003298 Application 13/885,588 3 Grounds of rejection before this Panel for review: I. Claims 1-11, 14, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Verdon,4 Hadasch,5 Kaye,6 HLB,7 Kishida,8 and Seagren.9 II. Claims 1-11, 14, 15, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Verdon, Hadasch, Kaye, HLB, Kishida, Seagren, and Shah.10 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Verdon: [R]elates to press molded cosmetic compositions with good color pay-off characteristics. The press molded products provide for a more facile use of the cosmetic composition and avoid the disadvantages resulting from the use of the cosmetic 4 Verdon et al., US 4,994,264, issued Feb. 19, 1991. 5 Hadasch et al., EP 1 550 432 A2, published July 6, 2005, as machine translated by “Patent Translate Powered by EPO and Google” (Sept. 12, 2015). 6 Kaye et al., US 3,296,078, issued Jan. 3, 1967. 7 The HLB System a time-saving guide to emulsifier selection, 1-22 (ICI Americas Inc., Wilmington, Delaware 1980). 8 Kishida et al., US 6,251,411 B1, issued June 26, 2001. 9 Seagren, WO 98/30195, published July 16, 1998. 10 Shah et al., US 2009/0142382 A1, published June 4, 2009. Appeal 2021-003298 Application 13/885,588 4 composition in loose powder form, e.g., messiness, loss of powder by spilling and other known disadvantages. (Verdon 1:7-13; see also id. at Abstr. (Verdon discloses “[p]ress molded cosmetic compositions . . . prepared by first forming a paste of the composition with the aid of a gum containing aqueous solution and then extruding, pressing and drying the composition into one or more various shapes.”); id. at 1:66-2:1 (Verdon “relates to a novel press molded cosmetic composition having good color pay-off characteristics”).) FF 2. Examiner finds that Verdon discloses Appellant’s claimed subject matter with the exception of “an organopolysiloxanes elastomer; using a different non-ionic surfactant, such as sorbitan stearate; adding another surfactant that is an anionic surfactant; or using an injection process” (Ans. 4). FF 3. Hadasch “relates to a powdery composition, in particular cosmetic, comprising organopolysiloxane elastomer particles and additional particles” and “to a process for making up or for the nontherapeutic treatment of keratinous materials of human beings, such as the skin, nails, eyelashes, eyebrows, hair, and in particular the skin, comprising . . . applying the composition to keratin materials” (Hadasch ¶ 1; see generally Ans. 11). FF 4. Hadasch discloses: It is known from WO 02/053126 cosmetic compositions comprising crosslinked organopolysiloxane elastomer particles in an aqueous medium, and powders such as pigments and fillers present in a weight ratio of organopolysiloxane elastomer / powders ranging from [0.4] . . . to 1.2; these compositions exhibit a pulverulent to pasty texture. These paste compositions include packaged in a cup and have a sample surface with an elastic character and providing an original touch Appeal 2021-003298 Application 13/885,588 5 and different from that of conventional compact powders whose touch is hard, rigid. To use the compositions described in WO 02/053126, the user collects a quantity of product with an applicator such as sponge, powder puff or brush, or finger and the applies to the keratin substance to be treated or to be made up, for example on the skin. Now the product is difficult to apply to the skin due to the high content of powders and low liquid content: the user feels a brake during spreading of the product because the product dries too quickly during application. Because of this difficulty of application, the user can not [sic] work makeup deposited on the skin to be well spread evenly over the entire surface of the skin it wants makeup. The product is then deposited on the skin unevenly and the makeup obtained is not homogeneous since traces of product (notably traces of color) are visible on the skin. (Hadasch ¶¶ 5-6; see Ans. 4-5.) FF 5. Hadasch discloses “a powder composition comprising particles of elastomeric crosslinked organopolysiloxane and powders . . . [that] can spread easily by using an applicator or the finger to the keratin materials, in particular on the skin” (Hadasch ¶ 7; see Ans. 5). FF 6. Hadasch discloses that its “composition is obtained by using a particular weight ratio of elastomeric crosslinked organopolysiloxane particles and additional particles,” wherein “[t]his particular weight ratio makes it possible to improve the ease of application of the composition to keratinous materials, in particular on the skin,” such that “[t]he composition spreads easily on the skin and allows the user to work well distributed in the skin, leading to a homogeneous makeup, well distributed on the skin without leaving visible traces” (Hadasch ¶ 8; see id. ¶ 9 (Hadasch “relates to a powdery composition comprising water, solid particles of elastomeric crosslinked organopolysiloxane, additional particles, elastomeric crosslinked Appeal 2021-003298 Application 13/885,588 6 organopolysiloxane particles and additional particles being present in an elastomeric crosslinked organopolysiloxane weight ratio / additional particles greater than 1.2 and less than or equal to 2.5.”)). FF 7. Examiner finds that Kaye discloses “a face powder compact composition . . . using wetting agents, such as sodium lauryl sulfate, which is an anionic surfactant” (Ans. 5). FF 8. Examiner relies on HLB to teach[] the prior art had known of the importance of blending emulsifiers (see Chapter 4), wherein one skilled in the art can approximate what required HLB based on the oil content for an O/W (see Chapter 2), wherein depending on the desired HLB, one of the emulsifier HLB can be 4.7, such as SPAN 60, which is sorbitan monostearate and is derived from saccharide and is also known as sorbitan stearate, and the other emulsifier HLB can be 14.9, such as Tween 60, wherein the amount of these emulsifiers would change the total HLB of the emulsifier system (see Chapter 3, chart on pg. 7) or other higher HLB such as sodium lauryl sulfate (see pg. 21, 1st col), which is an anionic surfactant. Additional disclosures include: comparing emulsion stability (see pg. 5, 1st col and pg. 8, 1st col); an emulsifier that works, does not mean that every emulsifier or blend with the same HLB value will work (see pg. 5, 1st col.); you can blend emulsifiers to make any HLB you want, and blends usually work best (see pg. 5, 1st col.); most stable emulsion systems usually consist of blends of two or more emulsifiers, one portion having lipophilic tendency (low HLB value), the other hydrophilic (high HLB value) (see pg. 9, 1st col.); variances in the HLB value can be as high as +/-6 (see pg. 18). (Ans. 5.) FF 9. Kishida “relates to compositions used in preparing cosmetic products and to such cosmetic products made therewith and specifically to liquid and Appeal 2021-003298 Application 13/885,588 7 solid cosmetic products for external use and having the characteristics of being smooth, adhesive, spreadable, and long-lasting” (Kishida 1:10-14). FF 10. Kishida discloses that “[s]olid or solid-like, cake cosmetic products, such as make up preparations (e.g. face powder, powder foundation, eye shadow, mascara, rouge and the like) are conventionally produced by filling a cosmetic powder into a metal or plastic pan or case followed by molding the powder by a press,” wherein “[t]he cosmetic powder is filled into a pan or case and molded by a press” (Kishida 1:17-31; see also Ans. 6). FF 11. Examiner finds that Kishida discloses a process of making solid compact powder cosmetics by putting the slurry of cosmetic ingredients through an injection machine well-known in the art using water . . ., wherein the resulting product had excellent skin feel extendibility and uniformity . . . compared to the prior art of filling cosmetic powder into a case followed by molding the powder by a press. (see Ans. 5-6 (citing Kishida 3:23-31, 6:59-61, 6:65-67, 7:20-23, 7:25- 28), id. Ans. 16; see also Kishida 10:14-16 (Kishida claims a cosmetic product formed by injecting a slurry “through a back injection machine.”).) FF 12. Seagren discloses “[a] process is provided for forming a molded cosmetic product by back injection molding, in which a molding is formed from a slurry of a powder and a non-volatile solvent” (Seagren, Abstr.; see also Seagren 2 (Seagren discloses feeding a slurry “into [a] back injection molding apparatus, which injects the slurry into a mold of the desired shape, to form a molded cosmetic product.”); Ans. 6). FF 13. Examiner finds that Seagren discloses a “back injection molding process for cosmetic, in which a molding is formed from a slurry of a powder and a solvent . . ., which appears to be the same method used by Applicant and the apparatus is . . . sold by . . . Nanyo Co. Ltd.” (Ans. 6; see Appeal 2021-003298 Application 13/885,588 8 also Seagren 2 (Seagren discloses that “[b]ack injection molding processes and apparatus for conducting same are known in the art. Specifically, back injection molding machinery is available in the United states from the Nanyo Company of Japan”); cf. Spec. ¶ 65 (Appellant discloses passing its composition “through a machine such as the Pilote Back Injection Machine sold by the company Nanyo Co. Ltd.”)). FF 14. Examiner relies on Shah to disclose “preservatives, such as methylparaben, which is a methyl-para-hydroxy benzoates, and EDTA, which is an aminocarboxylic acid . . ., used in cosmetic powder compositions” (Ans. 8 (citing Shah ¶ 62)). ANALYSIS Rejection I: Based on the combination of Verdon, Hadasch, Kaye, HLB, Kishida, and Seagren, Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious to, inter alia, incorporate an organopolysiloxanes elastomer into VERDON’s composition . . ., because it would provide easy application to the skin and provide a pleasing feel compared to the hard and rigidity of the conventional cosmetic powder as discussed above, and reasonably would have expected success because both references dealt with the same field of endeavor, such as cosmetic powders. (Ans. 6; see also id. at 6-7; FF 1-13.) Examiner reasons that, although “[t]he references do not specifically teach adding the ingredients in the amounts claimed by Applicant,” “[i]t would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results, such as ease of skin application and the pleasing skin feel of the powder cosmetics” (Ans. 7). Appeal 2021-003298 Application 13/885,588 9 See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.”) (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Examiner further concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious “to incorporate [the use of] . . . the same back injection machine used by Applicant and SEAGREN, such as the commercially available machine from NANYO, with steps of injecting a watery slurry into a mold and removing solvent by vacuum to make VERDON’s composition” (Ans. 7; see also FF 1-13). In support of this conclusion, Examiner reasons that those of ordinary skill in this art “would have been motivated to make those modifications and reasonably would have expected success because it [is] a well-known process of making molded powder cosmetic from slurry” (Ans. 7-8; id. at 16 (citing Kishida’s teaching of using an “injection machine well-known in the art” and putting the slurry of cosmetic ingredients through it using water, which process achieves a product that “had excellent skin feel extendibility and uniformity compared to the prior art” process of press molding a powder); see also FF 9-13)). Verdon discloses “press molded products [that] provide for a more facile use of [a] cosmetic composition and avoid the disadvantages resulting from the use of [a] cosmetic composition in loose powder form, e.g., messiness, loss of powder by spilling and other known disadvantages” (FF 1). Hadasch also discloses improvements to “conventional compact powder” cosmetic compositions that are hard and rigid to the touch (FF 4). As Examiner explains, cosmetic compositions comprising organopolysiloxane are known in the art, as disclosed by Hadasch, and are Appeal 2021-003298 Application 13/885,588 10 “known to give an original and different touch feel, which is an improvement over the conventional compact powders whose touch is ‘hard’ and ‘rigid’” (Ans. 11). Thus, Examiner reasons, a person of ordinary skill in this art would have found it prima facie obvious to “add organopolysiloxane to cosmetic . . . compact powders to avoid the [hard and rigid] feel” (id.; see FF 3-6). In sum, we find that the preponderance of evidence on this record supports Examiner’s rationale (see FF 1-6). Therefore, we are not persuaded by Appellant’s contention that “Examiner has not reasonably established that this type of [organopolysiloxane] modification of feel is something that a person of ordinary skill would seek to achieve or want from the disclosure in Verdon” (Appeal Br. 6). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Hadasch discloses that a weight ratio of greater than 1.2 and less than or equal to 2.5 “of elastomeric crosslinked organopolysiloxane particles and additional particles . . . makes it possible to improve the ease of application of the composition to keratinous materials, in particular . . . the skin” (FF 6; see also Ans. 12). As Examiner explains, “because Appellant’s claim 1 does not recite the amount of pulverulent phase, . . . Appellant’s claim 1 encompass[es] [Hadasch’s] . . . weight ratio” (Ans. 12). Examiner further explains that Hadasch makes clear that the use of “organopolysiloxane in cosmetic powder was well-known in the prior art” (id.). Thus, we find the preponderance of evidence on this record supports Examiner’s rationale that those of ordinary skill in this art would have found it prima facie obvious to determine the optimum amount of organopolysiloxane for a particular Appeal 2021-003298 Application 13/885,588 11 composition, keeping in mind Hadasch’s disclosed weight ratio of elastomeric crosslinked organopolysiloxane particles to additional particles (see id.). See Geisler, 116 F.3d at 1470 (“[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.”). Therefore, we are not persuaded by Appellant’s contention that “the combination of Verdon and Hadasch do not inform the range of the at least one organopolysiloxane elastomer present in a solids content of from 0.2% to 8% by weight relative to the total weight of the composition” (Appeal Br. 7). For the same reason, we are not persuaded by Appellant’s contentions regarding “a result-effective variable” (id. at 8). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner’s reliance “on Kishida [to disclose an injection process within the scope of Appellant’s claimed invention] is acknowledged but it is nonetheless incorrect,” because “Verdon clearly teaches a novel process for forming a press-molded composition that avoids problems with earlier compositions and processes” (Appeal Br. 9; cf. Ans. 15 (Examiner finds that “Appellant is avoiding the teaching of KISHIDA, which teaches the injection process is better at making cosmetic powders as compared to the molding of powder by a press as taught by VERDON”). If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. For the same reasons, we are not persuaded by Appellant’s contention that “the proposed modification or combination of Appeal 2021-003298 Application 13/885,588 12 the prior art would change the principle of operation of” Verdon, relies on “improper hindsight” and, thus, “are not sufficient to render the claims prima facie obvious” (Appeal Br. 10). “Under a presumption that there was sufficient basis for the prima facie contention underlying [Examiner’s] rejection,” Appellant directs attention to the Declaration of Anne Simonnet, signed September 20, 2017 (“Simonnet Decl.”), which compares a composition comprising one particular combination of organopolysiloxane elastomers, within the scope of Appellant’s claimed invention, that is made via an injection process with water as a dilution solvent to either: (a) the same composition made by a process that does not utilize an injection process with water as a dilution solvent or (b) does not comprise an organopolysiloxane elastomer (Appeal Br. 11; see Simonnet Decl. 1-6). We find, however, that Declarant’s evidence relating to a composition comprising one particular combination of organopolysiloxane elastomers, which falls within the scope of Appellant’s claimed invention, that is made via an injection process with water as a dilution solvent, is not reasonably commensurate with the scope of Appellant’s claimed invention. Therefore, we find that the evidence presented in the Simonnet Decl. is not commensurate in scope with Appellant’s claimed invention. See In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (In order to be persuasive of non-obviousness, “[e]vidence of secondary considerations must be reasonably commensurate with the scope of the claims.”). For the foregoing reasons, we are not persuaded by Appellant’s contention that the Simonnet Declaration provides a sufficient evidentiary basis to support a finding that “the combination of the silicone elastomer and Appeal 2021-003298 Application 13/885,588 13 the preparation with an injection process with water as the dilution solvent[, as broadly claimed by Appellant,] yielded considerable improvements in terms of drop resistance and homogeneity, neither of which could have been reasonably expected from the teachings of the cited art” (Appeal Br. 11 (Simonnet Decl.); see also Reply Br. 4-5 (citing Simonnet Decl.)). In addition, we find no limitation in Appellant’s claim 1 that requires “drop resistance” or “homogeneity,” therefore, we are not persuaded by Appellant’s contention that “none of the art recognized or disclosed the drop resistance and homogeneity problems,” which are not commensurate in scope with Appellant’s claimed invention (Reply Br. 3). For the foregoing reasons, we are not persuaded by Appellant’s contention that “Examiner’s position that Kishida is better than Verdon as a basis to modify Verdon remains a key reversible error in this case” (Reply Br. 2). Rejection II: Based on the combination of Verdon, Hadasch, Kaye, HLB, Kishida, Seagren, and Shah, Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious to use “an injection machine” to prepare a cosmetic composition, comprising inter alia, a preservative, such as EDTA, as made obvious by the combination of Verdon, Hadasch, Kaye, HLB, Kishida, Seagren, and Shah (Ans. 8). In support of this conclusion, Examiner reasons that those of ordinary skill in this art would have reasonably “expected success because it a well-known process of making powder cosmetic from slurry” and “because EDTA and methylparaben are functional equivalents used as preservatives” (Ans. 8-9). Appeal 2021-003298 Application 13/885,588 14 For the reasons set forth above and having found no deficiency in Examiner’s combination of Verdon, Hadasch, Kaye, HLB, Kishida, and Seagren, we are not persuaded by Appellant’s contention that Shah cited to account for adding an aminocarboxylic acid . . . is similarly unsustainable given the lack of additional teachings in Shah that would have motivated the modification of Verdon with Hadash or Kishida as well as providing no further basis upon which the improvements obtained by the present invention would have been reasonably expected. (Appeal Br. 13-14.) 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 Verdon, Hadasch, Kaye, HLB, Kishida, and Seagren is affirmed. Claims 2-11, 14, and 22 are not separately argued and fall with claim 1. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Verdon, Hadasch, Kaye, HLB, Kishida, Seagren, and Shah is affirmed. Claims 2-11, 14, 15, and 22 are not separately argued and fall with claim 1. Appeal 2021-003298 Application 13/885,588 15 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-11, 14, 22 103(a) Verdon, Hadasch, Kaye, HLB, Kishida, Seagren 1-11, 14, 22 1-11, 14, 15, 22 103(a) Verdon, Hadasch, Kaye, HLB, Kishida, Seagren, Shah 1-11, 14, 15, 22 Overall Outcome 1-11, 14, 15, 22 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