Ex Parte Barrios et al

Patent Trial and Appeal Board

Dec 5, 2016

11755169 (P.T.A.B. Dec. 5, 2016)

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.
11/755,169 05/30/2007 Jaimie J. Barrios 14591-00007-USl 8686
30678 7590 12/07/2016
POT STNFT T T PC
EXAMINER
(DC OFFICE)
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ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/07/2016 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):
dcdocketing@novakdruce.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAIMIE J. BARRIOS, DINA BURAKOV,
CARMEN CASTILLO-BUCCI, URIEL HENAO-CANO,
and MURAT QUADIR1
Appeal 2015-000873
Application 11/755,169
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
cosmetic composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“Pigments are used in cosmetic compositions to alter the color and
appearance of hair, eyes, lips, skin and nails.” (Spec. 12.) The
Specification discloses “cosmetic hair compositions containing metal-oxides
1 Appellants identify the Real Party in Interest as L’Oreal U.S.A. (Br. 2.)
Appeal 2015-00873
Application 11/755,169
layered pigments.” (Id. 11.) “The metal-oxide layered pigments provide
improved optical effects when applied to hair. For example, hair color shifts
depending upon viewing angle (color travel effect) and the pigments
improve the shine of hair.” (Id. 13.)
Claims 37—54, 57, and 58 are on appeal. Claim 37 is illustrative and
reads as follows:
37. A cosmetic composition comprising:
(a) a metal-oxide layered pigment comprising at least two layers of
metal-oxide coating;
(b) 0.05 to 15 wt% of at least one film-former selected from the
group consisting of polyvinylpyrrolidone/vinyl acetate
copolymer, polyvinylpyyrolidone, polysilicone 8,
polyquatemium-4, polyquatemium-11, acrylates/steareth-2
methacrylate crosspolymer, and vinylacetate/vinyl
neodecanoate copolymer;
(c) 0.05 to 15 wt% of at least one stabilizer selected from the group
consisting of polyacrylate-3, hydroxyethylcellulose, PEG-40,
Laureth-4, polyquatemium-37, PEG-14 dimethicone, polysorbate
20, Oleth-20, cocamidopropyl betaine, stearyl alcohol, cetyl
alcohol, and propylene glycol dicaprylate/dicaprate; and
(d) at least one auxiliary ingredient selected from the group
consisting of caprylyl glycol, glycerin, propylene glycol,
hexylene glycol, and dimethicone,
wherein the cosmetic composition is in the form of a gel
or mousse; and
the gel or mousse exhibits a lower pigment dust effect
when applied to hair than the gel or mousse lacking at least one
of components (b), (c), and (d).
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Application 11/755,169
The claims stand rejected as follows:
Claims 37, 38, 41^13, 45, 49, 51, 57, and 58 under 35 U.S.C. § 103(a)
as obvious based on Franzke2 and Colorona3 (Ans. 3);
Claims 39 and 40 under 35 U.S.C. § 103(a) as obvious based on
Franzke, Colorona, and Pfaff4 (Ans. 6);
Claims 44 and 50 under 35 U.S.C. § 103(a) as obvious based on
Franzke, Colorona, and Patel5 (Ans. 7);
Claims 45, 46, 51, and 52 under 35 U.S.C. § 103(a) as obvious based
on Franzke, Colorona, and Richard6 (Ans. 8);
Claims 47 and 53 under 35 U.S.C. § 103(a) as obvious based on
Franzke, Colorona, and Laureth-47 (Ans. 9); and
Claims 48 and 54 under 35 U.S.C. § 103(a) as obvious based on
Franzke, Colorona, and Oleth-208 (Ans. 10).
I
The Examiner has rejected claims 37, 38, 41—43, 45, 49, 51, 57, and
58 as obvious based on Franzke and Colorona. The Examiner finds that
2 US 6,328,950 Bl, issued Dec. 11, 2001.
3 117190 Colorona® Majestic Green, customer.service(at)merckchem.co.uk,
Merck KGaA (Dec. 13, 2010).
4 US 2003/0039836 Al, published Feb. 27, 2003.
5 US 4,719,104, issued Jan. 12, 1988.
6 US 2006/0099159 Al, published May 11, 2006.
7 Cosmeticsinfo.org,
http://www.cosmeticsinfo.org/ingredient_details.php?lngredient_id=387
(last visited April 18, 2012).
8 Skin Deep® Cosmetics Database, Environmental Working Group,
http://www.ewg.org/skindeep/ingredient/721109/OLETH-20/ (last visited
Apr. 18,2012).
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Application 11/755,169
Franzke teaches a foamable gel for coloring hair, teaches using film-formers
and stabilizers (thickeners) in amounts that overlap those recited in claim 37,
and exemplifies a composition containing “Colorona Majestic Green
(titanium dioxide/mica/chromoxide green pigment, green luster, component
(a), polyvinylpyrrolidone, polyvinylpyrrolidone/vinyl acetate copolymer
(component (b)), and hydroxyethylcellulose (component (c)).” (Ans. 3—4.)
The Examiner also finds that Franzke suggests including water-soluble
solvents such as glycerol or propylene glycol. (Id.) The Examiner
concludes that the composition of claim 37 would have been obvious based
on Franzke’s teachings. (Id.9)
We agree with the Examiner’s findings and conclusion. Franzke
exemplifies a composition containing 10 wt% Colorona Majestic Green,
1 wt% polyvinylpyrrolidone, 1 wt% polyvinylpyrrolidone/vinyl acetate
copolymer, 0.1% hydroxyethylcellulose, and water. (Franzke 9:30-45.)
Franzke also discloses that “[gjlycerol and propylene glycol in amounts of
up to 30 percent by weight are especially preferred as additional water-
soluble solvents in the composition according to the invention.” (Id. at
8:14—17.) Thus, it would have been obvious to include an auxiliary
ingredient such as glycerol or propylene glycol in the composition shown in
Franzke’s Example 2.
9 As we understand it, the Examiner cites the Colorona reference only as
evidence that Colorona Majestic Green is a titanium
dioxide/mica/chromoxide green pigment. Appellants do not dispute that
Colorona Majestic Green is a pigment meeting the requirements of claim 37.
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Application 11/755,169
Appellants argue that the rejection is based on hindsight (Br. 7)
because Franzke discloses an “enormous list of pigments,” “an enormous list
of film-forming polymers,” and “a long list of thickeners” {id. at 8), and
describes additional water-soluble solvents as optional {id. at 9).
This argument is unpersuasive, because Franzke describes a specific
composition that includes components (a), (b), and (c) of claim 37, and
suggests including glycerol or propylene glycol in its compositions. Thus,
Franzke itself provides a reason to modify its composition of Example 2 in a
way that meets the limitations of claim 37.
Appellants also argue that “[t]he rejection is improper because
Franzke does not account for the improved dust effect on hair.” (Br. 10.10)
Appellants argue that the Examiner’s reliance on inherency is improper {id.
at 10-12) and that the Specification’s Table 1, as clarified in the Barrios
Declaration,* 11 presents evidence of unexpected results. {Id. at 12—15.)
We agree with the Examiner (Ans. 15), however, that Appellants’
evidence does not show a comparison to the closest prior art. See Bristol-
Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir.
2014) (“To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention.”).
10 “Pigment dust effect is the amount of dust generated from the pigment
from the hair in everyday use.” (Spec. 1141 (Table 1, footnote 4).)
11 Declaration under 37 C.F.R. § 1.132 of Jaimie J. Barrios, signed July 26,
2013.
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Application 11/755,169
The Examiner points out that Franzke’s “Examples 1 and 2 . . .
contain the general components a-d (i.e. a metal oxide layered pigment, a
film former, a stabilizer, and at least one auxiliary ingredient).” (Ans. 15—
16.) Specifically, the composition of Franzke’s Example 1 includes 6 wt%
Dichrona® BG; 2 wt% polyvinylpyrrolidone; 1.8 wt% 1,2 propylene glycol,
and 0.18 wt% PEG-40 hydrogenated castor oil. (Franzke 9:5—18.)
Appellants’ Specification states that “examples of the metal-oxide layered
pigment includes pigments marketed under the trade designations . . .
Dichrona®” and that “[tjypical stabilizers include . . . PEG-40 hydrogenated
castor oil.” (Spec. Tflf 7 and 32.)
Franzke’s Example 2 composition, described above, contains
components (a), (b), and (c) of claim 37, in amounts encompassed by the
claim, and also contains 10 wt% propane/butane 2.7. (Franzke 9:44.)
Appellants’ Specification states that “[tjypical auxiliaries include . . .
propane.” (Spec. 1135.) Thus, the compositions of both of Franzke’s
Examples 1 and 2 contain a pigment, a film-former, a stabilizer, and an
auxiliary ingredient, although not all of the components of Franzke’s
compositions are recited in claim 37.
Appellants’ data, however, compare compositions that are
encompassed by claim 37 to compositions that omit completely one of
components (b), (c), or (d) recited in claim 37. Since Franzke’s
compositions include all of the components of claim 37, but differ only in
the identity of the (c) or (d) component, Appellants’ evidence does not show
a comparison to the closest prior art.
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Appellants argue that their “comparative compositions, however, are
more closely related to what is claimed because they do not include the
extraneous ingredients of Examples 1 and 2 ofFranzke.” (Br. 16.) Footnote
1 of Table 1, however, states that the compositions shown in the table
“include water and other components necessary to complete the type of hair
formulation.” (Spec. 1141 (Table 1, footnote 1.).) The evidence therefore
does not support Appellants’ argument that the comparative examples are
more closely related to the claimed compositions than Franzke’s. In any
case, “evidence of unexpected results must establish that there is a difference
between the results obtained and those of the closest prior art.'” Bristol-
Myers Squibb, 752 F.3d at 977 (emphasis added). That comparison has not
been shown.
For the reasons discussed above, we affirm the rejection of claim 37
under 35 U.S.C. § 103(a) based on Franzke and Colorona. Claims 38, 41—
43, 45, 49, 51, 57, and 58 have not been argued separately and therefore fall
with claim 37. 37 C.F.R. § 41.37(c)(l)(iv).
II
The Examiner has rejected claims 39, 40, 44-48 and 50—54 as obvious
based on Franzke, Colorona, and one of Pfaff, Patel, Richard, Laureth-4, or
Oleth-20.
Appellants have waived arguments based on any of Pfaff, Patel,
Richard, Laureth-4, or Oleth-20. (Br. 19—21.) We therefore affirm those
rejections for the reasons set out by the Examiner and as discussed above.
See 37 C.F.R. § 41.37(c)(l)(iv) (“The arguments of appellant with respect to
each ground of rejection . . . shall explain why the examiner erred as to each
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Application 11/755,169
ground of rejection contested by appellant.”) See also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived. In the event of such a waiver,
the PTO may affirm the rejection of the group of claims that the examiner
rejected on that ground without considering the merits of those rejections.”).
SUMMARY
We affirm all of the rejections on appeal.
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).
AFFIRMED
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