Ex Parte El-Khouri et al

Patent Trials and Appeals BoardMar 28, 2019

14983380 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/983,380 12/29/2015 Rita Jaky El-Khouri 22850 7590 04/01/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 454129US99 4118 EXAMINER SOROUSH, ALI ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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 iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RITA JAKY EL-KHOURI and HY SI BUI Appeal2018-006058 Application 14/983,380 Technology Center 1600 Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-006058 Application 14/983,380 Appellants 1 seek our review, under 35 U.S.C. Â§ 134(a), of the Examiner's decision to reject claims 1---6, 8-18, 20, and 21 (Appeal Brief filed January, 2, 2018 ("App. Br.") 2.) Claims 7 and 19 are withdrawn from consideration. Id. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm but designate our affirmance as a new ground of rejection. Appellants' Specification relates to skin compositions which have good cosmetic properties such as, good feel, flake-resistance and/or transfer- resistance upon application. (Specification ("Spec.") ,r 6.) In particular, Appellants' Specification describes compositions including at least two alkylated silicone acrylate copolymers. (Spec. ,r,r 7-8.) The Specification describes the alkylated silicon acrylate copolymers as having a (meth)acrylate backbone and pendant alkyl groups. (Spec. ,r 34.) The Specification further states: The pendant alkyl groups can be substituted or unsubstituted. If substituted, preferable substitution groups include hydrophilic groups such as alkoxy such as glyceryl, ethoxy (CH2CH20) or propoxy (CH2CH2CH20), hydroxy (OH), hydroxyalkyl such as, for example, hydroxymethyl, hydroxyethyl, hydroxypropyl, hydroxybutyl, etc., and perfluoro alkyl. Preferably, the alkoxy, hydroxyalkyl and the perfluoro alkyl substitutions, if present, contain alkyl portions containing from 1 to 8 carbon atoms, preferably 2 to 4 carbon atoms. (Spec. ,r 35.) The Specification explains that "[s]uitable alkylated silicone acrylate copolymers in accordance with the present invention are disclosed, 1 Appellants report that the real party in interest is L' Oreal. 2 Appeal2018-006058 Application 14/983,380 for example, in Japanese patent 2704730, the entire contents of which is hereby incorporated by reference." (Spec. ,r 31.) Appellants' claim 1 recites: A composition comprising at least one substituted alkylated silicone acrylate copolymer and at least one unsubstituted alkylated silicone acrylate copolymer, wherein the substituted alkylated silicone acrylate copolymer comprises at least one substitution group selected from the group consisting of hydroxy, a Cl to C8 alkoxy, a Cl-C8 [sic] perfluoro alkyl and a C 1 to C8 hydroxyalkyl. (App. Br. 8.) Analysis The Examiner rejects Appellants' claims under 35 U.S.C. Â§ 103 as obvious over Nakanishi (US 2002/0114771 Al; published August 22, 2002) (Final Office Action mailed June 16, 2017 ("Final Act.") 4--5.) The Examiner finds Nakanishi teaches a composition including at least one substituted alkylated silicone acrylate copolymer (Shin-Etsu KP56I stearyl-modified acrylsilicone resin) and at least one unsubstituted alkylated silicone acrylate copolymer (Shin-Etsu KP545 acrylsilicone resin). (Final Act. 4--5, citing Nakanishi ,r 252.) The Examiner acknowledges that the stearyl-modified acrylsilicone resin teaches the specifically claimed substitution groups of the substituted alkylated silicon acrylate copolymer. (See Examiner's Answer mailed February 23, 2018 ("Ans.") 3.) However, the Examiner finds Nakanishi suggests modifying the silicone acrylate polymer with a methoxy or ethoxy group that would result in an alkoxy or hydroxyalkyl substitution. (Id., citing Nakanishi ,r,r 30, 31.) 3 Appeal2018-006058 Application 14/983,380 We find Nakanishi teaches that desirable acrylsilicone resins include "at least one moiety selected from the group consisting of pyrrolidone, long- chain alkyl, polyoxyalkylene and fluoro-alkyl moieties." (Nakanishi ,r,r 105-106.) Therefore, Nakanishi teaches the desirability of an unsubstituted alkylated silicone acrylate copolymer (acrylsilicone resin with long-chain alkyl moiety) and at least one of the claimed substituted alkylated silicone acrylate copolymers (polyoxyalkylene and fluoro-alkyl). Although Nakanishi does not specifically teach C1---Cs polyoxyalkylene and fluoro- alkyl moieties, we determine that it would have been obvious to use the specific substitutions previously identified in Nakanishi, including C1---C6 alkoxy groups (methoxy and ethoxy) and fluorinated alkyl groups, such as a trifluoropropyl group. 2 (Nakanishi ,r,r 30-31.) In particular, we find that it would have been obvious for a person of ordinary skill in the art to use known substitutions for silicone containing copolymers, such as trifluoropropyl, methoxy, and ethoxy taught by Nakanishi, for the substituted alkyl group. "If a person of ordinary skill can implement a predictable variation [ of a known work], Â§ 103 likely bars its patentability." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). 2 Appellants acknowledge that the claimed alkylated silicone acrylate copolymers are taught in JP '730 (JP 2704730 B, published January 26, 1990 (we rely on the machine translation submitted in the Information Disclosure Statement of December 29, 2015)). JP '730 teaches unsubstituted alkyl methacrylate monomers include methyl(meth)acrylate, ethyl(meth)acrylate, n-butyl(meth)acrylate, and 2-ethylhexyl(meth)acrylate. (JP '730 p. 3) Substituted alkyl methacrylate monomers include hydroxyalkyl(meth) acrylates such as 2-hydroxyethyl(meth)acrylate and 2- hydroxypropyl (meth)acrylate, and perfluoroalkyl(meth)acrylates with 1-10 fluoro chains. (Id.) 4 Appeal2018-006058 Application 14/983,380 Because our reasoning differs slightly from that of the Examiner and because we rely upon portions of Nakanishi that were not relied upon by the Examiner, we designate our affirmance as a New Ground of Rejection. We address Appellants' arguments below. Appellants argue that Nakanishi's stearyl-modified acrylsilicone resin is not the claimed substituted alkylated silicone acrylate copolymer. (App. Br. 3.) In particular, Appellants argue the stearyl group includes 18 carbons, and therefore is not a C1---Cs hydroxyalkyl group. (Id.) As to the Examiner's proposed modification, Appellants argue Nakanishi discusses synthesis methods and not the required modification. (See id. at 4.) We are not persuaded by Appellants' argument regarding the teachings of the prior art. Nakanishi teaches the combination of two acrylsilicone resins, which may include at least one unsubstituted alkylated silicone acrylate copolymer (long-chain alkyl) and at least one substituted alkylated silicone copolymer (polyoxyalkylene and fluoro-alkyl). We find that it would have been obvious for a person of ordinary skill in the art to use known substitutions for silicone containing copolymers, such as trifluoropropyl, methoxy, and ethoxy taught by Nakanishi, for the substituted alkyl group. We note that Appellants' Specification indicates that these substitutions were previously known. (See Spec. ,r 31.) "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'!, 550 U.S. at 416. 5 Appeal2018-006058 Application 14/983,380 Appellants argue "the evidence of record in the specification as filed more than suitably serves as a secondary consideration rebutting [obviousness]." (App. Br. 5.) Appellants argue "the inventive samples including the combination of the two silicone acrylate copolymers demonstrate the basis for[] improved flake resistance." (Id. at 6.) We are not persuaded by Appellants' arguments and evidence with respect to secondary considerations. "Evidence of secondary considerations must be reasonably commensurate with the scope of the claims." In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). To establish the evidence is commensurate with the scope of the claims, Appellants must demonstrate that an embodiment has an unexpected result and provide an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner. See id. We find Appellants' submitted evidence demonstrates that different embodiments falling within the claims will not behave in the same manner. Appellants cite formulations 3 and 4, for demonstrating improved flake resistance, i.e., a rating of 1 and 1.5, respectively, on a scale of 1-3. (See Spec. ,r,r 100-102, 108-110). In contrast, Appellants' comparative formulation 5, containing both substituted alkylated silicone acrylate copolymer and unsubstituted alkylated silicone acrylate copolymer as claimed, demonstrates "completely flaking off." (See id.) Because the claims encompass an embodiment that does not demonstrate improved flake resistance, we find that the evidence of secondary considerations is not commensurate with the scope of the claims. Therefore we are not persuaded 6 Appeal2018-006058 Application 14/983,380 that the Examiner erred in determining the claims would have been obvious to a person of ordinary skill in the art at the time the invention was made. Conclusion Upon consideration of the record and the reasons given, the rejection of claims 1---6, 8-18, 20, and 21 is sustained. Therefore, we affirm the decision of the Examiner. We have designated our affirmance as a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). 37 C.F.R. Â§ 4I.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 4I.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l)(iv) (2010). 7 Appeal2018-006058 Application 14/983,380 AFFIRMED 37 C.F.R. Â§ 4I.50(b) 8