Ex Parte Farcet et alDownload PDFPatent Trial and Appeal BoardSep 26, 201813120437 (P.T.A.B. Sep. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/120,437 06/23/2011 Celine Farcet 22850 7590 09/28/2018 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. 377064US99PCT 1157 EXAMINER FALKOWITZ, ANNA R ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 09/28/2018 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 CELINE FARCET, LISA HOUILLOT, MAUD SA VE, and BERNADETTE CHARLEUX Appeal2017-005691 Application 13/120,437 1 Technology Center 1600 Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and DAVID COTTA, Administrative Patent Judges. COTT A, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a dispersion of polymer particles. The Examiner rejected the claims on appeal under 35 U.S.C. § 112 for failure to comply with the written description requirement, under 35 U.S.C. § 103(a) as obvious, and on the ground of obviousness-type double patenting. We affirm. 1 According to Appellants, the real party in interest is the L 'Oreal of Paris. App. Br. 2. Appeal2017-005691 Application 13/120,437 STATEMENT OF THE CASE The Specification discloses that it was known in cosmetics to use polymer particles in dispersions. Spec. 1. As an example, the Specification states that EP 07 497 4 7 describes "a cosmetic composition comprising a dispersion of polymer particles, in an organic medium, ... said dispersion being stabilized by adding stabilizing polymers that bond non-covalently by means of physical interactions to the polymer particles." Id. The Specification then notes that the composition of EP 07 497 4 7 "has the drawback of requiring the addition to the organic medium of an amount of stabilizing polymer higher than that effectively bonded to the polymer particles, in order to obtain a relatively stable dispersion." Id. As another example, the Specification states that EP 1428844 discloses a cosmetic dispersion in an organic medium "of acrylic polymer particles comprising a backbone that is insoluble in the said medium, and a part that is soluble in the said medium, formed from side chains covalently bonded to the said backbone." Id. The polymer particles in this dispersion are "stabilized by a macromonomer that is chemically bonded to the polymer particles." Id. The Specification teaches that the films obtained from these dispersions "do not make it possible to obtain optimum cosmetic properties" and "have a certain tacky nature and sensitivity to fatty substances, especially over time." Id at 2. The Specification discloses, "[t]he aim of the present invention is to overcome these limitations and to propose dispersions, in oily medium, of polymer particles that make it possible to obtain good cosmetic properties such as good adhesion to the support (skin or hair), and thus good 2 Appeal2017-005691 Application 13/120,437 remanence of the cosmetic composition, good resistance to attack and good gloss, while at the same time being non-tacky." Id. Claims 1-15 are on appeal. Claim 1 is illustrative and reads as follows: 1. A dispersion of polymer particles, comprising: a liquid carbon-based medium, and particles having a flexible polymeric core and being surface-stabilized with a block stabilizing polymer such that the block stabilizing polymer is noncovalently adsorbed onto the particles and produced by a process comprising preparing the block stabilizing polymer by polymerization and adding that prepared block stabilizing polymer to one or more monomers forming the flexible polymeric core of the particles and polymerizing the one or more monomers forming the flexible polymeric core of the particles in the presence of the block stabilizing polymer, wherein the block stabilizing polymer comprises at least one block that is soluble in the carbon-based medium and at least one block that is insoluble in the carbon-based medium, the insoluble block comprises 50 wt% to 100 wt % of at least one insoluble monomer in the medium, selected from the the [sic] group of monomers, and salts thereof consisting of: (i) (meth)acrylates of formula: CH2=C(CH3)-COOR'1 or CH2=CH-COOR'1 in which R'1 is one selected from the group consisting of: a linear or branched alkyl group containing from 1 to 6 carbon atoms, optionally comprising in its chain one or more heteroatoms selected from the group consisting of 0, N and S; and/or optionally comprising one or more substituents selected from the group consisting of -OH, halogen atoms and -NR'R" wherein R' and R", are independently linear or branched C 1-C4 alkyls; optionally substituted with at least one polyoxyalkylene group comprising a repetition of from 5 to 30 oxyalkylene units; with the proviso that tert-butyl methacrylate and isobutyl acrylate are excluded from this definition; 3 Appeal2017-005691 Application 13/120,437 a cyclic alkyl group containing from 3 to 6 carbon atoms, optionally comprising in its chain one or more heteroatoms chosen from 0, N and Sand/or possibly comprising one or more substituents selected from the group consisting of OH and halogen atoms; (ii) (meth)acrylamides of formula: CH2=C(CH3)- CONR'3R'4 or CH2=CH-CONR'3R4, wherein: R'3 and R'4 , are independently a hydrogen atom or a linear or branched alkyl group containing from 1 to 6 carbon atoms, optionally comprising one or more substituents selected from the group consisting of -OH, halogen atoms and -NR'R" wherein R' and R", are each independently linear or branched C 1-C4 alkyls; or R'3 represents a hydrogen atom and R'4 represents a 1, 1-dimethyl-3-oxobutyl group; (iii) ethylenically unsaturated monomer(s) comprising at least one carboxylic, phosphoric or sulfonic acid function, and salts thereof; (iv) vinyl esters of formula R'6-COO-CH=CH2 wherein R'6 is a linear or branched alkyl group containing from 1 to 6 atoms or a cyclic alkyl group containing from 3 to 6 carbon atoms and/or an aromatic group; (v) ethylenically unsaturated monomers comprising at least one tertiary amine function; (vi) di-n-alkylitaconates of formula CH2=C(CH2- COO(CH2)n-1-CH3)-COO(CH2)n-1-CH3, wherein n is an integer from Oto 4; (vii) ethylenic monomers having an ester group which contains silanes, silsesquioxanes, siloxanes or carbosiloxane dendrimers, with the exception of monomers containing only one silicon atom; and (viii) PDMS macromonomers selected from the group consisting of polydimethylsiloxanes containing monoacryloyloxy or monomethacryloyloxy end group, and monomers of following formula: R C'-' t"H t ! ~ f'''' <,·, :,, yH. .. ! .. I ·'1 '"-···.._ ...... ,..... ...... ,.._.., _...,,, -~ ... , t1.,_;\.,...--- - ,~-f.( ........ U-K~~ . .::::i-. ~.J - i~A-.-- (J - . :ii~-F! .. -.. ··· I 1 ,, I I I '··· 0 CH.1 CM., 11 Cl-ti 4 Appeal2017-005691 Application 13/120,437 wherein Rs is a hydrogen atom or a methyl group; R9 is a linear or branched, divalent hydrocarbon-based group containing from 1 to 10 carbon atoms and optionally containing one or two ether bonds-0-; Rio is a linear or branched alkyl group containing from 1 to 10 carbon atoms; n is an integer ranging from 1 to 300. App. Br. 3---6 (Claims Appendix). 2 The claims stand rejected as follows. Claims 1-15 were rejected under 35 U.S.C. § 112 for failure to comply with the written description requirement. Claims 1-15 were rejected under 35 U.S.C. § I02(b) as anticipated by Farcet3 as evidenced by Sigmaaldrich4 and Chem YQ. 5 Claims 1, 6, 7, 8, 9 and 11-15 were rejected on the ground ofnon- statutory obviousness-type double patenting over claims 1, 12, 14, 15, 28, 37--44 of Farcet. WRITTEN DESCRIPTION A description adequate to satisfy 35 U.S.C. § 112, first paragraph, must "'clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.'" Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc) (citation omitted, alteration in original). "[T]he test for sufficiency is whether the disclosure of the 2 Revised Claims Appendix from Appeal Brief dated June 27, 2016. 3 Farcet, US 2006/0193803 Al, published Aug. 31, 2006. 4 Sigmaaldrich, REFERENCE: POLYMER PROPERITES, THEREMAL TRANSITIONS OF HOMOPOLYMERS: GLASS TRANSITION & MELTING POINT 5 Chem YQ, Information: Poly(methyl acrylate), http://chemyq.com/En/xz/ xz3 /2412 lhlf df.htm 5 Appeal2017-005691 Application 13/120,437 application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. "If ... the specification contains a description of the claimed invention, albeit not in ipsis verb is (in the identical words), then the examiner ... , in order to meet the burden of proof, must provide reasons why one of ordinary skill in the art would not consider the description sufficient." In re Alton, 7 6 F.3d 1168, 1175 (Fed. Cir. 1996). Claim 1 requires, inter alia, that "the block stabilizing polymer is non- covalently adsorbed onto the particles." The Examiner finds that the term "non-covalent," which was added by amendment, is used in the Specification only to describe the prior art composition of EP 07 497 4 7. Final Act. 2-3; Ans. 7-8. According to the Examiner, "EP 749747 and the drawbacks of polymers bonded non-covalently are discussed [in the Specification] and the aim of the present invention is to overcome the drawbacks of the prior art." Final Act. 3 (citing Spec. p. 2, 11. 16-20). The Examiner further found "that not only does the specification not teach the limitation of 'non-covalently' bonded but teaches away from the instant limitation." Id. We agree with the Examiner that the Specification does not convey to those skilled in the art that the inventor invented a block stabilizing polymer that was non-covalently adsorbed onto the claimed particles. We address Appellants' arguments below. Appellants argue that "[t]he specification on page 1, lines 10-29 notes that surface stabilization as a term in the art means non-covalent interactions." App. Br. 6. We are not persuaded because Appellants have not provided persuasive evidence to support their position that the skilled 6 Appeal2017-005691 Application 13/120,437 artisan would understand "surface stabilization" to mean "non-covalent." In particular, the passage from the Specification relied upon by Appellants does not support Appellants' position. It reads, in its entirety: It is known practice to use in cosmetics dispersions of polymer particles, generally of nanometric size, in aqueous or organic media. Thus, European patent application EP-A-0 749 747 describes a cosmetic composition comprising a dispersion of polymer particles, in an organic medium, the said dispersion being stabilized by adding stabilizing polymers that bond non- covalently by means of physical interactions to the polymer particles. However, this type of composition has the drawback of requiring the addition to the organic medium of an amount of stabilizing polymer higher than that effectively bonded to the polymer particles, in order to obtain a relatively stable dispersion. Now, during the addition of adjuvants such as pigments, some of the stabilizing polymers have a tendency to be desorbed from the polymer particles and to associate with the said adjuvants, which contributes towards destabilizing the dispersion, especially by formation of aggregates between the polymer particles. Spec. p. 1, 11. 10-29. We find nothing in this passage that supports Appellants' contention that the skilled artisan would understand "surface stabilization" to necessarily mean "non-covalent." Appellants argue that EP "EP 0749747, which ... is equivalent to U.S. 5851517 uses the same terminology as in the present application (i.e., surface stabilized)." We are not persuaded, however, that EP 0749747 supports Appellants position that "surface stabilization" means "non- covalent." We acknowledge that EP 07 497 4 7 uses the term "surface stabilized," but Appellants do not direct us to evidence in EP 0749747 equating the term "surface stabilized" with "non-covalent." Absent such evidentiary support, references in the Specification to a particle with a 7 Appeal2017-005691 Application 13/120,437 "flexible polymeric core" that is "surface-stabilized with a block stabilizing polymer" (see e.g., Spec. p. 2, 11. 25-27) do not provide written description support for the claim limitation requiring that "the block stabilizing polymer is non-covalently adsorbed onto the particles." As Appellants do not identify anything in the Specification disclosing that the inventors' claimed dispersion - as opposed to the prior art - includes block stabilizing polymers non-covalently adsorbed onto the claimed particles, we affirm the Examiner's rejection for failure to comply with the written description requirement. ANTICIPATION Findings of Fact 1. Farcet discloses: "dispersions of the following polymers, for example, in alkanes and, further, for example, in isododecane: ... poly(2- ethylhexyl acrylate )-b-poly(methyl acrylate )-b-poly(2-ethylhexyl acrylate)." F arcet ,r,r 119-13 1. 2. Farcet discloses: "[t]he copolymer according to the disclosure thus comprises a first block that is soluble in the liquid carbon based dispersion medium and at least one second block that is insoluble in said medium." Id. ,r 3 3. 3. Farcet discloses: "the insoluble block, for example, comprises 50% to 100% by weight of monomer( s) that is( are) insoluble in said medium, for example, from 60% to 90% by weight and further, for example, from 70% to 80% by weight of insoluble monomer(s ), alone or as a mixture." Id. ,r 35. 4. Examples D2, D3, and D4 of the Specification, which are described as "dispersions ... of the invention" (Spec. p. 43, 11. 4--5) are 8 Appeal2017-005691 Application 13/120,437 "dispersion[s], in isododecane, of polymethyl acrylate stabilized with a poly(2-ethylhexyl acrylate )-b-polymethyl acrylate-b-poly(2-ethylhexyl acrylate) triblock polymer". Spec. p. 40, 11. 4---6 (Example D2); p. 41, 11. 7- 10 (Example D3); p. 42, 11. 6-9 (Example D4). Analysis The Examiner found that "Farcet discloses a block polymer comprising a liquid carbon based dispersion medium wherein the first block is soluble and ... a second block is insoluble in the medium, wherein the soluble block comprises 50% to 100% by weight soluble monomer and the insoluble block comprises 50 to 100%." Final Act. 5 ( citing Farcet ,r,r 33- 35). The Examiner further found that Farcet's block polymer was in the form of a particle and comprised the triblock poly(2-ethyl hexyl)-b- poly(methyl acrylate )-b-poly(2-ethylhexyl acrylate). Id. ( citing Farcet ,r,r 131 and 151). With respect to the requirement that the particles have a "flexible polymeric core," the Examiner found that "the instantly claimed monomers that make up the polymers, specifically the methyl acrylate and 2-ethylhexyl acrylate, are identical to the monomers of Farcet" and thus the particles of Farcet would also be expected to have a flexible polymeric core. Id. at 6. In addition, the Examiner notes that methyl acrylate is described as having "good flexibility." 6 Id. Appellants argue that the elements disclosed in Farcet "are not arranged as required by the claim as it does not include specific disclosure of the composition as recited in claim 1." App. Br. 10. More specifically, 6 The Examiner appears to have mistakenly cited Sigmaaldrich for this proposition. Final Act 6. The good flexibility of methyl acrylate is, in fact, supported by ChemYQ. ChemYQ ,r 1. 9 Appeal2017-005691 Application 13/120,437 Appellants argue that the Examiner "erroneously concludes that what is described in Farcet are particles hav[ing] two distinct parts (1) a flexible polymeric core and (B) surface block stabilizing copolymer. Farcet, however, has no teaching for this structure." App. Br. 11. Appellants contend that "[t]he preparation of a tri-block by co-polymerization of the monomers does not inherently have such a flexible core" and thus "the Examiner has not established that the identified triblock (poly(2-ethylhexy 1 acrylate )-b-poly(methyl acrylate )-b-poly(2-ethylhexyl acrylate)) has both a flexible core and the surface stabilizing block copolymer." Id. 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 ofunpatentability." Appellant has persuaded us that the Examiner has not carried the burden of establishing that the claimed invention was anticipated by Farcet. Claim 1 requires "particles having a flexible polymeric core and being surface-stabilized with a block stabilizing polymer." The claim further specifies that the particles are formed by first preparing the block stabilizing polymer and then "polymerizing ... one or more monomers forming the flexible polymeric core ... in the presence of the block stabilizing polymer." Claim 1 is a product-by-process claim. Accordingly we consider only whether only whether the Examiner has provided evidence that Farcet discloses a particle having the structure recited in the claim. Amgen Inc. v. F. Hoffman-La Rochel Ltd., 580 F.3d 1340 (Fed. Cir. 2009) ("a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes."). 10 Appeal2017-005691 Application 13/120,437 Farcet discloses a triblock of poly(2-ethylhexyl acrylate )-b- poly(methyl acrylate )-b-poly(2-ethylhexyl acrylate). FF 1 (hereinafter "Farcet's triblock"). Farcet's triblock is identical to the "block stabilizing polymer" disclosed in the Specification. Compare FFl with FF4. Like the claimed block stabilizing polymer, Farcet' s triblock is comprised of at least one block that is soluble in the carbon-based medium and a second block that is insoluble in the carbon based medium. FF2, FF3. However, it is not clear whether Farcet's triblock (the "block stabilizing polymer" of the claims) is non-covalently adsorbed onto particles that include a "flexible polymeric core" as claimed. The Examiner contends that Farcet's triblock is identical to Appellants' claimed particles. Ans. 9; see also, Ans. 11 (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977). However, the particles exemplified in Appellants' Specification corresponding to the particles recited in the claims comprise not just Farcet's triblock, but rather "polymethyl acrylate stabilized with" Farcet's triblock. FF4. 7 The Examiner does not identify any disclosure in Farcet of a particle comprising polymethyl acrylate - or any other material known to be "flexible" - "non-covalently adsorbed" onto Farcet's triblock. Accordingly, we are not persuaded that Farcet's triblock is identical to the particle exemplified in Appellants' Specification because the Examiner did not provide persuasive evidence that the triblock is non- covalently adsorbed to particles as required by the claim. 7 The Specification discloses in one embodiment, "the polymethyl acrylate (MeA) ... forms the core of the particle" and teaches that polymethyl acrylate is "flexible." Spec. 27. 11 Appeal2017-005691 Application 13/120,437 The Examiner further contends that "it is not clear how the (meth)acrylate portion of the block copolymer is distinguishable from the (meth)acrylate portion of the flexible core." Ans. 10-11. We acknowledge that Farcet's triblock includes poly(methyl acrylate), which the evidence establishes has good flexibility. Chem YQ ,r 1. However, the claims require a particle having two distinct parts, 1) a flexible polymeric core, and 2) a block stabilizing polymer that is non-covalently adsorbed onto the flexible polymeric core. The Examiner has not persuasively established that a block stabilizing polymer with the flexible component is the same structure as a flexible polymer onto which a block stabilizing polymer is adsorbed. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Finally, the Examiner contends that the methods of polymerization disclosed in Farcet "read on" the recited product-by-process limitation. Ans. 10. The Examiner explains: "Farcet discloses that the polymerizations of monomers can happen consecutively [0139] therefore the monomers forming the block copolymer can be polymerized and then that can be followed by the monomers making the flexible core which then polymerizes." Ans. 10. The Examiner further notes that "the instant specification [O 164] discloses this step is done by conventional polymerization or a controlled radical polymerization, which is the same way the polymerization process occurs in Farcet ([0026], [0031], and [0145])." Id. at 11. We are not persuaded. The process recited in the claims requires first preparing the block stabilizing polymer and then polymerizing one or more monomers to form a flexible polymeric core while in the presence of the block stabilizing polymer. The Examiner relies on paragraph 139 of Farcet as demonstrating 12 Appeal2017-005691 Application 13/120,437 that the process described in Farcet is the same as the claimed process. Ans. 10. However, paragraph 139 of Farcet is very broad. It describes preparing the soluble and insoluble blocks and then states: "Additional blocks may be polymerized by the same process. For each of the blocks, the monomer(s) may be added simultaneously, in batch mode, semi-continuously or consecutively." Farcet ,r 139. The Examiner also relies on Farcet's disclosure that the process can be by conventional or controlled radial polymerization. Ans. 11 ( citing Farcet ,r 145). While the process in Farcet is described broadly enough that it encompasses claimed process, it is not specific enough that practicing it would necessarily result in the claimed particle. Accordingly, we are not persuaded that Farcet methods are the same as the process recited in claim 1. Accordingly, we reverse the Examiner's rejection of claims 1-15 under 35 U.S.C. § 102(b) as anticipated by Farcet. DOUBLE PATENTING The Examiner's double patenting suffers from the same deficiencies as discussed above with respect to obviousness. App. Br. 16. Accordingly, we reverse the Examiner rejection of claims 1, 6, 7, 8, 9 and 11-15 on the ground of non-statutory obviousness-type double patenting for the reasons discussed above. SUMMARY We affirm the Examiner's rejection of Claims 1-15 under 35 U.S.C. § 112 for failure to comply with the written description requirement. We reverse the Examiner's rejection of Claims 1-15 under 35 U.S.C. § 102(b) as anticipated by Farcet as evidenced by Sigmaaldrich and ChemYQ. 13 Appeal2017-005691 Application 13/120,437 We reverse the Examiner's rejection of claims 1, 6, 7, 8, 9 and 11-15 on the ground of non-statutory obviousness-type double patenting over claims 1, 12, 14, 15, 28, 37--44 ofFarcet. 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). AFFIRMED 14 Copy with citationCopy as parenthetical citation