Ex Parte Bui et al

Patent Trial and Appeal Board

Aug 2, 2017

13171831 (P.T.A.B. Aug. 2, 2017)

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.
13/171,831 06/29/2011 Hy Si Bui 382128US99 6195
22850 7590 08/04/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CAO, PING
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HY SI BUI and ANITA CHON TONG
Appeal 2015-007802
Application 13/171,8311
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
DAVID COTTA, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to an emulsion
composition useful in lipsticks. The Examiner rejected the claims for
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1,3, 6-9, 11, 13-19, 21, and 22, under 35 U.S.C. § 103(a)
as unpatentable over Herrmann,2 Hohner,3 and Toumilhac4 (Ans. 3—8);5 and
1 Appellants state that the “real party in interest herein is L’Oreal S.A. of
Paris, France.” App. Br. 1.
2 US 2007/0031361 A1 (published Feb. 8, 2007).
Appeal 2015-007802
Application 13/171,831
(2) Claims 1, 13, and 14, under 35 U.S.C. § 103(a) as unpatentable
over Herrmann, Hohner, Toumilhac, and Mondet3 4 5 6 (Ans. 8—9).
Claim 1, the only independent claim on appeal, is representative and
reads as follows (App. Br. 7):
1. A composition comprising:
water,
an oil phase comprising at least one oil-soluble polar
modified polymer consisting of polypropylene and/or
polyetheylene monomers, and maleic anhydride units, wherein
the oil soluble polar modified polymer has a melting point
above 75°C,
at least one polyvinyl alcohol,
and at least one hyperbranched polyol having at least two
hydroxyl groups,
wherein the composition is in the form of an emulsion
and wherein the weight ratio of hyperbranched polyol to oil-
soluble polar modified polymer is 3:1 to 1:3.
DISCUSSION
The Examiner found that Herrmann taught or suggested an emulsion
useful in cosmetic compositions, including in stick form, having each of the
ingredients required by claim 1, except for the hyperbranched polyol having
at least two hydroxyl groups, also recited in the claim. Ans. 4. The
Examiner found, however, that Toumilhac taught that hyperbranched
polyols encompassed by claim 1 were useful in the same types of
3 US 5,998,547 (issued Dec. 7, 1999).
4 US 6,287,552 B1 (issued Sep. 11, 2001).
5 Claim 12 was canceled in an amendment filed September 22, 2014 (“After-
Final Amendment”). See After-Final Amendment 3; see also Advisory
Action 1—2 (entered October 28, 2014) (entering After-Final Amendment).
6 WO 2008/046763 A1 (published Apr. 24, 2008).
2
Appeal 2015-007802
Application 13/171,831
compositions taught in Herrmann. Id. at 4—5. The Examiner reasoned,
therefore, that an ordinary artisan would have considered it obvious to
include Toumilhac’s hyperbranched polyols in Herrmann’s emulsion
compositions. Id. at 5.
As to claim 1 ’s requirement for the weight ratio of the hyperbranched
polyol to the oil-soluble polar modified polymer to be within the range of
3:1 to 1:3, the Examiner found that Toumilhac taught including the
hyperbranched polyol in compositions at concentrations of 0.1% to 5% by
weight, and that Herrmann taught including its polymers in compositions at
concentrations of 0.1% to 2% by weight. Ans. 6.7 Based on calculations of
the relative concentrations of the two ingredients as taught in Toumilhac and
Herrmann, the Examiner reasoned as follows:
The prior art teaches a weight ratio range of hyperbranched
polyol to oil soluble polar modified polymer [of] 1:1 to 2.5:1
that falls within the claimed range of 3:1 and 1:3 as required by
claim 1, where the variation in the amount of the hyperbranched
polyol/dendritic molecule added to the composition containing
oil-soluble polar modified polymer wax can increase or
decrease viscosity of the composition due to the role of
hyperbranched polyol/dendritic molecule as the thickening
agent (Toumi[l]ha[c] et al. col 3/ line 30 -35).
In the case where the claimed ranges “overlap or lie
inside ranges disclosed by the prior art” a prima facie case of
obviousness exists. See MPEP 2144.05 Obviousness of
Ranges [R-5].
Id. at 6—7.
7 The rejection addresses the ratio range of 3:1 to 1:3 in relation to claim 12.
Ans. 6. As noted above, however, claim 12 was canceled, and the 3:1 to 1:3
ratio was inserted into claim 1 in the After-Final Amendment filed
September 22, 2014. See After-Final Amendment 2—3; see also Advisory
Action 1—2 (entered October 28, 2014) (entering After-Final Amendment).
3
Appeal 2015-007802
Application 13/171,831
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In the present case, Appellants do not persuade us that the
preponderance of the evidence fails to support the Examiner’s conclusion
that the composition of claim 1 would have been obvious to an ordinary
artisan.
Appellants contend that the Examiner did not explain sufficiently why
the cited references inherently teach or suggest a composition meeting claim
1 ’s requirement for the weight ratio of the hyperbranched polyol to the oil-
soluble polar modified polymer to be within the range of 3:1 to 1:3. App.
Br. 4—5; Reply Br. 1.
In particular, Appellants contend, “[n]one of the asserted references
teaches or suggests the required hyperbranched polyol and the required oil-
soluble polar modified polymer, so they cannot possibly teach or suggest the
requirement of a weight ratio of hyperbranched polyol to oil-soluble polar
modified polymer of 3:1 to 1:3 in the same composition.” App. Br. 4.
The Examiner responds that, based on calculations of the relative
concentrations of the two ingredients as taught in Toumilhac and Herrmann,
the “prior art teaches a weight ratio range of hyperbranched polyol to oil
soluble polar modified polymer [of] 1:1 to 2.5:1 that falls within the claimed
range of 3:1 and 1:3 as required by claim 1.” Ans. 10. The Examiner
explains that, “[i]n the case where the claimed ranges ‘overlap or lie inside
ranges disclosed by the prior art’ a prima facie case of obviousness exists.
4
Appeal 2015-007802
Application 13/171,831
See MPEP 2144.05 Obviousness of Ranges [R-5].” Id.
In reply, Appellants assert that they “believe that the ratios should be
20:1 to 1:50 (based on a range of 2 %: 0.1% to 0.1 %: 5%).” Reply Br. 1.
Moreover, Appellants contend, the Examiner “attempts to misdirect the
analysis from whether the Examiner improperly relied upon inherent
properties resulting from the asserted combination of art to support the
rejection — the Examiner never addressed this issue.” Id.
We find that the Examiner has the better position.
As is evident from the discussion above, rather than inherency, the
Examiner’s rejection is based on the finding that Toumilhac and Herrmann,
respectively, teach including in the same type of composition,
hyperbranched polyol and oil-soluble polar modified polymer at relative
concentrations yielding a range of concentration ratios that overlaps the ratio
range recited in claim 1. See Ans. 7, 10 (citing “MPEP [§] 2144.05
Obviousness of Ranges”) (emphasis in original).
We discern no error in the Examiner’s finding. As the Examiner
found, Toumilhac discloses cosmetic compositions that include a dendritic
polymer, encompassed by claim l’s hyperbranched polyol, at a
concentration of 0.1 to 5% by weight. Toumilhac 5:48—51 (“The dendritic
polymer is present in the compositions of the present invention in a preferred
amount of 0.1 to 5% by weight and more preferably in an amount of 0.5 to
2% by weight relative to the total composition.”)
As the Examiner also found, Herrmann discloses cosmetic
compositions that include a modified polymer wax, having the features of
the modified polymer recited in Appellants’ claim 1, at an especially
preferred concentration of 0.1 to 2 % by weight:
5
Appeal 2015-007802
Application 13/171,831
In an especially preferred embodiment, the preparations
according to the invention are in the form of emulsions of the
water-in-oil type, preferably cosmetic or dermatological
emulsions of the water-in-oil type, and comprise, based on the
total weight of the preparations . . . up to 5% by weight,
preferably 0.01 to 5% by weight, particularly preferably 0.05 to
3% by weight, especially preferably 0.1 to 2% by weight, of
homopolymer and/or copolymer wax.
Herrmann 109—113.
As the Examiner found, Toumilhac and Herrmann teach that those
ingredients are suitable for inclusion, at the disclosed concentrations, in
“lipsticks.” Toumilhac 6:23; Herrmann || 32, 37.
Thus, Toumilhac teaches that it is desirable to include, in lipsticks, a
hyperbranched polyol encompassed by claim 1 at a concentration of 0.1 to
5% by weight, and Herrmann teaches that it is desirable to include, in
lipsticks, a modified polymer encompassed by claim 1 at a concentration of
0.1 to 2% by weight. Given these teachings, we discern no error in the
Examiner’s conclusion that the combined teachings of the references suggest
including, in lipsticks, the claimed hyperbranched polyol and modified
polymer at relative concentrations by weight, that is, at weight ratios, which
overlap the weight ratio of 3:1 to 1:3 recited in Appellants’ claim 1.
Because the range of weight ratios of the claimed ingredients
suggested by the prior art overlaps claim l’s weight ratio range of 3:1 to 1:3,
we agree with the Examiner that the claimed range of ratios of the
ingredients would have been prima facie to an ordinary artisan. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of obviousness.”
6
Appeal 2015-007802
Application 13/171,831
Thus, even if we were to agree with Appellants that the range
suggested by the combination of Toumilhac and Herrmann is 20:1 to 1:50
(Reply Br. 1), that prior art range entirely overlaps claim l’s range of 3:1 to
1:3, thereby rendering claim l’s range prima facie obvious. See id.
In addition, contrary to Appellants’ suggestion that the claimed range
must appear in a single reference (App. Br. 4), our reviewing court has
explained that multiple references may be consulted to determine a suitable
range of claim elements suggested by the prior art. See Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). (“There is, to
be sure, one distinguishing feature of the[ court’s previous] range cases.
Each involved a range disclosed within a single patent, while here the range
is disclosed in multiple prior art patents. But, under the circumstances of
this case, that is a distinction without a difference.”).
Indeed, Appellants’ analysis of the cited references’ disclosures in
isolation (App. Br. 4) is directly contrary to the well settled principle that,
when evaluating claims for obviousness “[n]on-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner’s
conclusion that a composition having all of the ingredients and features
required by claim 1 would have been obvious to an ordinary artisan. We,
therefore, affirm the Examiner’s rejection of claim 1 over Herrmann,
7
Appeal 2015-007802
Application 13/171,831
Hohner, and Toumilhac. Because they were not argued separately, claims 3,
6—9, 11, 13—19, 21, and 22, also rejected over those references, fall with
claim 1. See 37 C.F.R. § 41(c)(l)(iv).
The Examiner also rejected claims 1,13, and 14, for obviousness over
Herrmann, Hohner, Toumilhac, and Mondet. Ans. 8—9. The Examiner cited
Mondet as evidence that it would have been obvious to include polyvinyl
alcohol in the composition suggested by the other references, at the
concentrations recited in claims 13 and 14, both of which depend from claim
1. Id.
Other than the arguments discussed above, Appellants do not address
this rejection specifically. Accordingly, because we do not discern, nor do
Appellants identify, error in the Examiner’s rationale for rejecting claims 1,
13, and 14 over Herrmann, Hohner, Toumilhac, and Mondet, we affirm the
Examiner’s rejection of those claims over those references.
SUMMARY
We affirm each of the Examiner’s rejections.
TIME PERIOD
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
8