Ex Parte Kergosien et al

Patent Trial and Appeal Board

Aug 31, 2017

12863893 (P.T.A.B. Aug. 31, 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.
12/863,893 11/09/2010 Guillaume Kergosien 361753US0PCT 1681
22850 7590 09/05/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
BECKHARDT, LYNDSEY MARIE
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 GUILLAUME KERGOSIEN and WILLIAM MEATHREL1
Appeal 2016-001866
Application 12/863,893
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a cosmetic care article. The Examiner rejects the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is L’Oreal S.A. of Paris,
France. App. Br. 1.
Appeal 2016-001866
Application 12/863,893
STATEMENT OF THE CASE
According to the Specification “[ajpplying color to finger nails is
generally time consuming, requiring application of several layers of nail
varnish, each of which must be allowed to dry.” Spec. 13. There is “a need
for improved adhesive [cosmetic] articles which are long-lasting and/or
which can be applied quickly and easily.” Id. at 113.
Claims 1—13, 16, 17, 21, and 23—26 are on appeal, and can be found in
the Claims Appendix of the Appeal Brief. Claim 1 representative of the
claims on appeal, and reads as follows:
1. A decorative and/or cosmetic care article to be applied on
a mucosis or on a keratinous material, comprising:
i) an adhesive layer having a first surface and a second
surface opposed to said first surface;
ii) a polymeric layer comprising a first sub-layer adjacent
to said adhesive layer and a second sub-layer adjacent said first
sub-layer,
wherein the first sub-layer has a first surface in contact
with said first surface of the adhesive layer and the first sublayer
comprises cellulose acetate butyrate,
wherein the second sub-layer comprises cellulose acetate
propionate,
wherein the first sub-layer of the polymeric layer has,
when the article is substantially free of solvent, a Persoz hardness
less than 50 seconds, and a resistance to abrasion corresponding
to a weight loss lower than 50 mg, the polymeric layer having,
when the article is substantially free of solvent, an elongation at
break of the article greater than 30%, and
wherein the second sub-layer has a thickness of less than
20 pm.
Appeal Br. 7, Appendix I (Claims).
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Application 12/863,893
The Examiner rejects the claims as follows:
I. Claims 1—13, 16, 17, 21, 23, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Park ’061,2 Socci ’217,3 and Eastman.4
II. Claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over
Park ’061, Socci ’217, and Eastman, and further in view of Blin ’832.5
I. Obviousness over Park ’061, Socci ’217, and Eastman
The Examiner finds that Park ’061 teaches an adhesive article, having
an adhesive coating on a substrate, useful for application to a keratinous
material. Final Act. 4. The Examiner acknowledges that Park ’061 does not
teach the “elected cellulose acetate butyrate polymer for the first layer and
the cellulose acetate propionate for the second sub-layer.” Final Act. 7.
Indeed all of the Park ’061 polymer layers contain nitrocellulose. See id.
The Examiner looks to the teaching of Socci ’217 for teaching film
forming polymers containing “nitrocellulose and cellulose acetate [butyrate]
and mixture thereof wherein a second film forming polymer is selected from
a group which includes polyester resin.” Final Act. 7. “Eastman teaches the
CAB-3 81 -20 is a specific cellulose acetate [butyrate] which is used in nail
care and offers excellent surface hardness and good firm strength.” Final
Act. 7.
2 Park, US 2005/0255061 Al, published Nov. 17, 2005 (“Park ’061”).
3 Socci et al., US 5,977,217, issued Nov. 2, 1999 (“Socci ’217”).
4 Eastman™ Cellulose Acetate Butyrate (CAB-381-20),
http ://www.eastman. com/Products/P ages/ProductHome. aspx ?Product=
71001229, last accessed May 7, 2012 (“Eastman”).
5 Blin, WO 2007/039832 A2, published Apr. 12, 2007 (“Blin ’832”).
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Application 12/863,893
The Examiner concludes:
It would have been obvious to one of ordinary skill in the art to
substitute a first film forming polymer, nitrocellulose, as taught
by the ’061 publication (example 2) with a second film forming
agent, cellulose acetate [butyrate], as taught by the ’217 patent
(column 2, lines 45-55) with a reasonable expectation of
success because the simple substitution of one known element
for another would have yielded predictable results to one of
ordinary skill in the art at the time of the invention.
Final Act. 7—8.
Appellants contend that the art does not teach cellulose acetate
propionate as a film forming component. See Appeal Br. 4. Appellants
contend that there is no evidence that “cellulose acetate butyrate and
cellulose acetate propionate would be expected to have the same properties.”
Id.
The issue is: Does the preponderance of evidence of record support
the Examiners conclusion that the claims are obvious over the cited art?
Findings of Fact
FF1. Park ’061 teaches adhesive nail products. See Park ’061, Abstract.
The products contain substrate layer, adhesive layer, and clear coat
layer (or translucent color coating). The clear/translucent layer is
applied in the range of 0.5-3.0 mil. Id. at 165. “Multiple layers of
nail enamel may be employed, optionally having particulate matter
such as glitter or mica, optionally one or more of the layers being a
clear coat layer.” See Park ’061, Abstract.
FF2. The Examiner finds that “layer being in the range of 0.5 to 3 mil [as
taught in Pack ’061][0065], which equals 12.7 to 76.2 pm.” Final
Act. 5.
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Application 12/863,893
FF3. Park ’061 teaches that “[t]he use of more solids or a more viscous
enamel provides greater durability and flexibility in the end product.
Also as a result of the inventive method, a greater percentage of solids
in the enamel formulation results in a lower percentage of solvents
being used . . . [and thereby] less solvents are released during the
drying process.” Park ’061 119.
FF4. The formulation of Park ’061 include: 60-80 second nitrocellulose,
polymer, co-polymer resin(s), color pigments, plasticizer, other solids,
and solvent(s) (e.g., ethyl and butyl acetates, isopropyl alcohol). Park
’061 153.
FF5. Socci ’217 teaches quick drying color nail enamel composition
comprising at least two film forming polymers. Socci ’217 2:33—35.
The film forming polymers are selected from a group comprising:
nitrocellulose, ethyl cellulose, cellulose acetate butyrate, methacrylate
and acrylate polymers and copolymers, and mixtures thereof. Socci
’217 2:47-50.
FF6. Eastman teaches that the commercially available Cellulose Acetate
Butyrate (CAB-3 81-20) “offers a combination of solubility and
compatibility, moisture resistance, excellent surface hardness, and
good film strength.” Eastman 1.
Principle of Law
“[EJxaminer bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In satisfying this initial
burden, “[i]t is impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior art so that
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Application 12/863,893
the claimed invention is rendered obvious.” In reFritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992). Stated differently, to establish obviousness, there
must be “an apparent reason to combine the known elements in the fashion”
recited in the claims. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
Analysis
Appellants contend that the claims require “the presence of cellulose
acetate propionate in the second sub-layer (‘topcoat layer’). The asserted art
does not teach or suggest this compound, so it cannot teach or suggest this
compound in the required second sub-layer.” Appeal.Br. 3. In other words,
the art does not teach cellulose acetate propionate as a film forming
component. See id. at. 4.
We agree with Appellants that the art does not teach the use of
cellulose acetate propionate as a film forming component. See FF1, FF3—
FF6. The Examiner bases the rejection on structural similarity. The
Examiner asserts that the difference between cellulose acetate butyrate and
cellulose acetate propionate is one carbon atom. See Final Act. 8. We do
not disagree with the Examiner’s position that these two compounds are
structurally similar. However, what is missing from the Examiner’s prima
facie case is a reason to substitute cellulose acetate propionate for the
cellulose acetate butyrate that is initially substituted for nitrocellulose in
Park ’061. FF1. A rejection for obviousness must include “articulated
reasoning with some rational underpinning to support the legal conclusion.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). Here, the Examiner has adequately
explained why one of ordinary skill in the art would want to first substitute
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Application 12/863,893
cellulose acetate butyrate for nitrocellulose in the multiple layer nail
composition taught in Park ’061. The Examiner, however, has not
adequately articulated why one of ordinary skill in the art after making the
initial substitution of cellulose acetate butyrate for nitrocellulose taught in
Park ’061 would then look to further substitute the cellulose acetate butyrate
for cellulose acetate propionate in one of the multiple layers contemplated
by Park ’061. In other words, the Examiner has not explained why the
teachings of the references would motivate one of ordinary skill in the art to
make a further substitution with cellulose acetate propionate, which is not
disclosed in any of the cited art. See FF1, FF3—FF6.
Appellants contend that “the Examiner ignored evidence that cellulose
acetate butyrate (CAB) and cellulose propionate butyrate (CPB) have
different properties and are used for different purposes in the present
invention.” Reply Br. 1. Appellants direct our attention to the Specification
to show that cellulose acetate butyrate to cellulose acetate propionate have
different properties. Appeal Br. 3.
Examples 1 and 2 of the Specification provide:
Example 1 Example 2
(Wet thickness: 60.6
microns. Dry thickness:
25.4 microns) —
631-72 from Adhesives
Research (cross-linked
acrylic polymer)
Adhesive layer (Wet thickness: 78
microns. Dry thickness:
25 microns) —
MA-83 from Adhesives
Research (cross-linked
acrylic polymer)
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Appeal 2016-001866
Application 12/863,893
Colored polymeric (Wet thickness: 223
layer microns. Dry thickness:
71 microns) —
Pigment: 3. 1 %,
Cellulose acetate
butyrate (MW 40K)
(CAB 381-2 from
Eastman Chemical
Company): 17.3%,
Co-polyester resin
plasticizer (Resoflex
R296 from Cambridge
Industries of America,
Newark, NJ)): 11.4%,
Ethyl acetate: 68.2%.
The molecular weight of
the polymer was 40,000
g/mol (Mn).
Topcoat layer [Same for both examples
and contains cellulose
acetate proprionate]
Harness Persoz 25 seconds
Abrasion resistance Taber (weight loss):
14mg
See Spec. HI 97-222
Wet thickness: 338
microns. Dry thickness:
76 microns) —
Pigment: 2.5%,
Cellulose acetate butyrate
(MW 40K) (CAB 381-2
from Eastman Chemical
Company): 11.4%,
Co-polyester resin
plasticizer (Resoflex
R296 from Cambridge
Industries of America,
Newark, NJ)): 8.6%,
Ethyl acetate: 77.5%.
The molecular weight of
the polymer was 40,000
g/mol (Mn).
[Same for both examples
and contains cellulose
acetate proprionate]
Persoz 50 seconds
Taber (weight loss):
< 50 mg
We are not persuaded that the Examiner ignored any evidence.
Specifically, the Examiner explains:
[That] any properties demonstrated by the color and the top coat
layer cannot be construed as due solely to the change from
cellulose acetate butyrate to cellulose acetate propionate, as
multiple differences between the coating layers exist, such as
concentration of the components, ratios between the
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Application 12/863,893
components, the addition of a pigment and the thickness of the
final coating layer.
Ans. 11. As recognized by the Examiner (see Ans. 11) multiple variables
are altered between the two examples presented in the Specification.
Specifically, there are differences between the concentration of the pigment,
ethyl acetate and co-polyester resin used, as well as differences in the
adhesive included in each of the examples. In other words, we agree with
the Examiner’s position that examples 1 and 2 change too many variables at
the same time, therefore, any observations associated with these
compositions cannot be attributed to a single variable. The Specification
cannot identify what attributes are associated with the use of cellulose
acetate butyrate or cellulose acetate proprionate. The Specification,
however, establishes that cellulose acetate butyrate and cellulose acetate
proprionate are used for different purposes top coating versus colored
coating. This, differential use does not support the Examiner’s prima facie
case that relies on the two different compounds having the same function.
In sum, as we are not persuaded that the Examiner has adequately
explained why one of ordinary skill in the art would want to first substitute
cellulose acetate butyrate for nitrocellulose in the multiple layers of Park
’061 and then perform a second substitution that switches cellulose acetate
butyrate for cellulose acetate propionate in at least one of the multiple layers
contemplated by Park ’061. We therefore reverse the rejection of claims 1—
13, 16, 17, 21, 23, and 24, under 35 U.S.C. § 103(a) based on Park ’061,
Socci ’217, and Eastman.
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Application 12/863,893
II. Obviousness over Park ’061, Socci ’217, Eastman, and Blin
This rejection relies upon the underlying obviousness rejection over
Park ’061, Socci ’217, and Eastman. Having reversed the rejection of claim
1—13, 16, 17, 21, 23, and 24, we necessarily reverse this obviousness
rejection of claims 25 and 26 that further include Blin, because Blin is not
relied upon to teach the use of cellulose acetate propionate as a polymeric
sublayer as required by claim 1. .
SUMMARY
We reverse the rejection of claims 1—13, 16, 17, 21, 23, and 24 under
35 U.S.C. § 103(a) over Park ’061, Socci ’217, and Eastman.
We reverse the rejection of claims 25 and 26 under 35 U.S.C. § 103(a)
over Park ’061, Socci ’217, and Eastman, and further in view of Blin ’832.
REVERSED
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