Ex Parte Loyen

Patent Trials and Appeals BoardMar 28, 2019

12595672 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/595,672 02/23/2010 23599 7590 04/01/2019 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BL VD. SUITE 1400 ARLINGTON, VA 22201 Karine Loyen 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. ATOCM-0372 5287 EXAMINER HOLLOMAN, NANNETTE ART UNIT PAPER NUMBER 1612 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): docketing@mwzb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARINE LOYEN 1 Appeal2018-007213 Application 12/595,672 Technology Center 1600 Before ERIC B. GRIMES, TA WEN CHANG, and DAVID COTTA, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) involving claims to an oil- in-water emulsion comprising copolymers of caprolactam and lauryl lactam (PA-6/12), which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE and enter a new ground of rejection under 37 C.F.R. Â§ 41.50(b). 1 Appellant identifies the Real Party in Interest as ARKEMA FRANCE. (Appeal Br. 1.) Appeal2018-007213 Application 12/595,672 STATEMENT OF THE CASE The Specification states: Compositions of continuous aqueous phase type have many advantages from the cosmetic and galenic viewpoint. They are especially low-cost and comfortable to use as they do not have a greasy feel. However, their drawback is that they have a consistency that is too close to the consistency of water to be attractive for consumers and they have application difficulties. In addition, after the feeling of moisture on the skin has disappeared, they improve neither the comfort, nor the care, nor the visual appearance of the skin (for example, no powdered appearance). (Spec. 1 :31-2:3.) According to the Specification, "[i]t has now been discovered that by using copolyamide powders, it is possible to prepare compositions having continuous aqueous phases that give a feeling of richness to said composition, expected by the users, and leave, after application, a soft powdered feel." (Id. at 3:3-6.) Further according to the Specification, the present invention relates to "creamy, liquid or gelled" cosmetic compositions "mainly comprising a continuous aqueous phase, a fatty phase and a fine and porous pulverulent copolyamide powder phase." (Spec. 1:4--7.) Claims 1, 10, 11, 15-19, and 22 are on appeal. Claim 1 is illustrative and reproduced below: 1. A composition comprising in % by weight relative to total composition, (i) 69 to 95% of an aqueous phase, (ii) 40 to 1 % of a fatty phase and (iii) 0.1 to 30% of a pulverulent phase comprising copolymers of caprolactam and lauryl lactam (PA-6/12), said composition being an oil-in-water emulsion. (Appeal Br. 10 (Claims App'x.).) 2 Appeal2018-007213 Application 12/595,672 The Examiner rejects claims 1, 10, 11, 15-19, and 22 under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Loyen. 2 (Ans. 3.) I. Issue The Examiner finds that Loyen discloses or suggests all of the limitations of the claims, except that it does not disclose the composition being an oil-in-water emulsion. (Ans. 3--4.) The Examiner finds, however, that "[ s ]election of any order of mixing ingredients is prima facie obvious." (Id. at 4. (citing MPEP Â§ 2144.04)) The Examiner finds that it therefore would have been obvious to a skilled artisan to modify Loyen's process for making its compositions, wherein the aqueous phase is added to the fatty phase, to instead add the fatty phase to the aqueous phase to form an oil-in- water emulsion. (Id.) The Examiner further finds that Loyen teaches that cosmetic compositions comprising a continuous fatty phase (1) "very often cause annoyance on application which sometimes limits their use by consumers," because "[a] continuous fatty film at the surface of the skin causes a tacky, oily and sticky feeling"; (2) have a "shiny and oily appearance ... harmful to the[ir] cosmetic and aesthetic properties"; and (3) may be difficult to apply together with other make-up because of the "tacky effect, which interferes with the spreading of the make-up over the skin." (Id.) The Examiner concludes that "[t]he annoyances and poor performance properties of a water-in-oil ( continuous fatty phase) composition taught by Loyen provides the motivation to formulate a composition without said continuous fatty phase." (Id.) 2 Loyen et al., US 2006/0115504 Al, published June 1, 2006. 3 Appeal2018-007213 Application 12/595,672 Appellant contends that Loyen does not disclose an oil-in-water emulsion. (Appeal Br. 2.) Appellant contends that the Examiner's citation to MPEP Â§ 2144.04 IV.C for the proposition that "'any order of mixing ingredients' is obvious" is inapposite, because the claims on appeal are product claims and because, in the cases discussed in MPEP Â§ 2144.04 IV.C, rearranging the process steps did not result in a different product. (Id. at 3- 4.) Appellant contends that the Examiner has not established that there is a reason a skilled artisan would have modified the compositions in Loyen to arrive at the claimed oil-in-water emulsion, with a reasonable expectation of success. (Id. at 5.) Finally, Appellant contends that the claimed subject matter exhibits unexpected results. (Id. at 5-8.) The issue with respect to this rejection is whether a preponderance of the evidence of record supports the Examiner's conclusion that it would have been obvious to modify Loyen's composition to arrive at an oil-in- water emulsion, as recited in the claims. Analysis On the record before us, we agree with Appellant that the Examiner has not established a prima facie case that the claims are obvious over Loyen. In particular, the Examiner has not established that (1) Loyen discloses an oil-in-water composition or (2) a skilled artisan would have had reason to modify Loyen to arrive at such a composition having the claimed components, with a reasonable expectation of success. The Examiner does not assert that Loyen explicitly teaches an oil-in- water composition. However, the Examiner asserts that Loyen "disclose[ s] a process for the preparation of [a] composition by slowly adding a ... heated aqueous phase to [a] heated fatty phase while stirring under shearing 4 Appeal2018-007213 Application 12/595,672 conditions, in order to obtain the emulsion and cooling," that "[ s ]election of any order of mixing ingredients is prima facie obvious," and that "[t]herefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have added to fatty phase to the aqueous phase in the process of Loyen to form an oil-in-water emulsion." (Ans. 4.) We are not persuaded. MPEP Â§ 2144.04 IV.C and the cases cited therein are inapposite because, in this case, it is not disputed that the prior art process as disclosed would not result in the claimed product. In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (holding that selection of order of performing process steps is prima facie obvious unless such order produces new and unexpected results). Furthermore, while "[a] claim can be obvious even where all of the claimed features are not found in specific prior art references," Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1307 (Fed. Cir. 2006), there still must be "a showing of a suggestion or motivation to modify the teachings of [the prior art] to the claimed invention." Id. (internal quotation marks omitted). The Examiner has not provided a sufficient explanation why a skilled artisan would have modified the compositions or processes disclosed in Loyen to produce an oil-in-water composition. The Examiner first asserts that, based on the description of Loyen's composition and the claimed composition, "it appears reversing the order of adding the components, i.e.[,] oil to water or water to oil[,] provides a substantially similar product, i.e.[,] cream emulsion with similar properties of leaving a soft powdery feel on the skin." (Ans. 5.) We are not persuaded. The Examiner has not disputed that Loyen's process as disclosed (i.e., adding the aqueous phase to the fatty phase) would 5 Appeal2018-007213 Application 12/595,672 result in a water-in-oil emulsion, whereas adding the fatty phase to the aqueous phase would result in an oil-in-water emulsion. Moreover, the Examiner appears to be basing the rejection on the description of the claimed composition found in the Specification, using the Specification as though it were prior art. This is impermissible hindsight reasoning. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not ... resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies" in the cited references.) The Examiner further asserts that Loyen teaches that "cosmetic compositions comprising a continuous fatty phase [(e.g., a water-in-oil composition)] very often cause annoyance on application which sometimes limits their use by consumers," and that this teaching provides the motivation to formulate a composition without said continuous fatty phase. (Ans. 4.) We are not persuaded. While it may be true that Loyen provides a reason why a skilled artisan may want to improve the properties of a water- in-oil cosmetic composition, the Examiner does not explain why this teaching in Loyen would suggest that an oil-in-water composition be used instead. "[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977,988(Fed.C~.2006D. Finally, as to the reasonable expectation of success, the Examiner asserts that "Loyen teaches formulations which provide a powdered finish and a soft feeling upon application ... ; which are the same properties 6 Appeal2018-007213 Application 12/595,672 provided by the instant compositions." (Ans. 5.) The Examiner asserts that, "[t]herefore, it does not appear that the different formulations provide different properties and would therefore provide a reasonable expectation of success." (Id.) We are not persuaded for the reasons discussed above. The Examiner appears to base the finding of reasonable expectation of success on the descriptions of the claimed composition in the Specification, using the Specification as though it were prior art. Such hindsight reasoning is improper in an obviousness analysis. Accordingly, we reverse the Examiner's rejection of claims 1, 10, 11, 15-19, and 22 as obvious over Loyen. II. Under the provisions of 37 C.F.R. Â§ 41.50(b ), we enter the following new ground of rejection: claims 1, 10, 11, 15-19, and 22 are indefinite for failing to point out and distinctly claim the subject matter Appellant contends to be his or her invention. In particular, the claims recite a composition comprising 69 to 95% of an aqueous phase but further recite that the composition comprises 40 to 1 % of a fatty phase as well as 0.1 to 30% of a pulverulent phase. (Appeal Br. 10-11 (Claims App'x.).) The claimed composition must include at least 69% of an aqueous phase and at least 0.1 % of a pulverulent phase. Thus, no composition comprising 40% of a fatty phase, as recited, can meet even the minimum requirements for the other components of the claimed composition. We do not understand how a composition comprising 69-95% of an aqueous phase may comprise up to 40% of a fatty phase, as this would result in some compositions having greater than 100% of aqueous phase and fatty phase combined. 7 Appeal2018-007213 Application 12/595,672 SUMMARY For the reasons above, we reverse the Examiner's decision rejecting claims 1, 10, 11, 15-19, and 22 as obvious over Loyen. We enter a new ground of rejection of claims 1, 10, 11, 15-19, and 22 as indefinite. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 4I.50(b) also provides: When the Board enters such a non-final decision, the appellant, 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 8 Appeal2018-007213 Application 12/595,672 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. REVERSED; 37 C.F.R. Â§ 4I.50(b) 9