Ex Parte Farcet et al

Patent Trial and Appeal Board

Sep 26, 2018

13120437 (P.T.A.B. Sep. 26, 2018)

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.
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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
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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;
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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
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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
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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
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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
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"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
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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.
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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.").
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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.
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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
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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.
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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
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