Ex Parte NORDSTROM et al

Patent Trial and Appeal BoardMar 12, 2019

14209063 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/209,063 03/13/2014 23122 7590 RATNERPRESTIA 2200 Renaissance Blvd Suite 350 King of Prussia, PA 19406 03/14/2019 FIRST NAMED INVENTOR JIM NORDSTROM 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. FNP-lOOUS 1068 EXAMINER BABSON, NICOLE PLOURDE ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 03/14/2019 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): PCorrespondence@ratnerprestia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIM NORDSTROM, LINDA NORDSTROM, and SUE SHEARISS (APPLICANTS: FAMOUS NAMES, LLC and ESSCHEM) Appeal 2017-011765 Application 14/209,063 1 Technology Center 1600 Before DONALD E. ADAMS, TIMOTHY G. MAJORS, and RACHEL H. TOWNSEND, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This Appeal under 35 U.S.C. Â§ 134(a) involves claims 1, 4, 5, 7, 8, and 21 (Final Act. 2 2; see App. Br. 3 1 (Appellants "hereby request[] consideration and reversal of the Final Rejection ... of claims 1, 4-5, 7-8, and 21")). 4 Examiner entered rejections under 35 U.S.C. Â§ 102(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify "FAMOUS NAMES, LLC and ESSCHEM" as the real party in interest (App. Br. 2). 2 Examiner's July 22, 2016 Final Office Action. 3 Appellants' February 7, 2017 Appeal Brief. 4 Pending claims 6 and 9--20 stand withdrawn from consideration (App. Br. 2; Final Act. 2). Appeal 2017-011765 Application 14/209,063 STATEMENT OF THE CASE Appellants' disclosure "relates to curable compositions for structurally improving and reinforcing nail plates and methods for strengthening, improving toughness, durability, appearance and for repairing damaged nail plates, as well as to protect and support nail plates so they can grow and lengthen naturally" (Spec. 1: 10-13). Claim 1 is representative and reproduced below: 1. A curable composition for strengthening fingernails or toenails comprising: a polymerizable material, wherein the polymerizable material will not crosslink reactive functional groups of nail proteins; at least one penetrating agent; and a curing agent, wherein the penetrating agent allows the polymerizable material to reach a depth of at least 0.05 mm beneath a surface of the fingernail or toenail when the composition is applied to the fingernail or toenail. (App. Br. 14.) Grounds of rejection before this Panel for review: Claims 1, 4, 7, 8, and 21 stands rejected under 35 U.S.C. Â§ I02(a) as anticipated by Kozacheck. 5 Claims 1, 4, 5, 7, 8, and 21 stand rejected under 35 U.S.C. Â§ I02(a) as anticipated by Wade. 6 5 Kozacheck et al., US 2013/0034512 Al, published Feb. 7, 2013. 6 Wade et al., GB 2 452 566 A, published Mar. 11, 2009. 2 Appeal 2017-011765 Application 14/209,063 ISSUE Does the preponderance of evidence on this record support Examiner's finding that either of Kozacheck or Wade teaches Appellants' claimed invention? FACTUAL FINDINGS (FF) FF 1. Appellants disclose an embodiment within the scope of their claimed invention, wherein "at least one penetrating agent comprises a material that enables the polymerizable material to penetrate the surface of the nail. For example, the penetrating agent may allow the polymerizable material to reach a depth of at least 0.05 mm beneath the surface of the nail" (Spec. 12:33-13:1). FF 2. Appellants disclose: Penetrating agents in accordance with the present disclosure may comprise compounds chosen from oils and solvents. Any keratin penetrating agent known to those skilled in the art would also aid in the penetration of these polymerizable materials into the upper portions of the natural nail plate. The penetrating agent or blends of penetrating agents that may be present in the composition in an amount ranging, for example, from about 1 % to about 40% by weight percent. (Spec. 13:4--9.) FF 3. Appellants disclose penetration agents that are natural vegetable and plant oils, 7 wherein: Non-limiting examples of natural oils which may be used singularly or in synergistic blends with other natural oils, their 7 Appellants' elected specie of penetrating agents is "natural vegetable or plant oils" (see Appellants' March 27, 2015 Response to Restriction Requirement 7; see generally Final Act. 2; cf Examiner's January 29, 2015 Restriction Requirement). 3 Appeal 2017-011765 Application 14/209,063 derivatives, include natural vegetable and plant oils such as; com, castor, jojoba, olive, avocado, sweet almond, rice bran, sunflower, safflower, palm, palm kernel rapeseed, peanut, cottonseed, coconut, grape seed, tomato seed, hazelnut, soybean, tea tree, eucalyptus, wheat germ, sea buckthom seed, argan, peppermint, macadamia, or others that may be obtained by expression, distillation, extraction of similar other means. Natural oils that are most suited to aid in absorption into the nail plate are those that most resemble oils which occur naturally in the nail plate and therefore have the greatest compatibility with the solid structural matrix that comprises the nail plate, therefore olive, jojoba and avocado are preferred. (Spec. 13:14--23.) FF 4. Kozacheck "relates to the field of radiation-curable gels useful for cosmetic adornment of natural nails, artificial fingernails, toenails and artificial nail extensions" (Kozacheck ,r 2; see generally Final Act. 2). FF 5. Kozacheck discloses a composition comprising (A) at least about 35% by weight oligomer; (B) at least about 0.1 % by weight pigment; (C) at least about 0.5% by weight thixotropic additive; (D) 0 to about 20% by weight non-reactive solvent; (E) 0 to no more than 20% by weight film-forming polymer wherein the ratio of oligomer to film forming polymer is greater than 2.5; (F) 0.1 to 5% by weight photoinitiator; (G) 0 to 5% by weight dispersant, and (H) the balance to make 100% by weight of reactive ethylenically unsaturated monomer; wherein the composition is a UV curable gel suitable for coating natural and artificial nails and forming a wear-resistant adornment coating. (Kozacheck ,r 16; see generally Final Act. 2.) FF 6. Kozacheck's compositions "comprise a significant amount of ethylenically unsaturated monomer[], in some embodiments about 45 to 65% by weight of the composition" (Kozacheck ,r 35; see Final Act. 2 (Kozacheck's composition comprises "a polymerizable material")). 4 Appeal 2017-011765 Application 14/209,063 FF 7. Kozacheck' s compositions "comprise 0.1 % by weight, up to about 5% by weight, of a photoinitiator" (Kozacheck ,r 39; see Final Act. 2 (Kozacheck's composition comprises "a curing agent")). FF 8. Kozacheck discloses "[t]hixotropic additives [] useful in [its] invention include inorganic and organic based materials," wherein [ e ]xamples of organic thixotropic additives include but are not limited to: hydrogenated castor oils, hydrogenated castor oil waxes, inorganically modified castor oils, organically modified castor oils ... , triglycerides such as glyceryl tri-12-hydroxy stearate, polyamides and modified polyamides such as 12- hydroxystearic acid diamide of ethylene diamine, 12- hydroxystearicacid diglycolamide, N-stearyl ricinoleamide, N- stearyl stearamide and other polyamide waxes ... , polyethylene oxide waxes, urea urethanes ... , acrylic resins, amine salts of polymeric polyesters, salts of linear polyaminoamide and polymeric polyester, amide solutions of polycarboxylic acid, alkyl sulfonate, alkylallyl sulfonate, colloidal ester, polyester resin ... , phenol resin, melamine resin, epoxy resin, urethane resin, styrene butadiene polymers, polyimide resin, and polyester amides. (Kozacheck ,r,r 44, 47; see Final Act. 2 (Examiner finds that Kozacheck teaches a penetration agent within the scope of Appellants' elected invention); Final Act. 3 (Examiner finds that Kozacheck teaches a composition comprising "derivatives of castor oil.") FF 9. Wade discloses: A radiation curable, nail coating composition comprising a radiation curable substance, at least one dye and/or pigment dissolved and/or dispersed in the composition to impart a colour and a means for causing the dye and/ or pigment to remain homogeneously distributed throughout the composition during storage, application and curing of the coating. (Wade, Abstract; see Final Act. 4.) 5 Appeal 2017-011765 Application 14/209,063 FF 10. Wade's composition comprises "ethylenically unsaturated components (so called 'monomers', 'oligomers', 'unsaturated polymers' etc.)" (Wade 3:21-23; see Final Act. 4 (Examiner finds that Wade's "composition comprises a polymerizable material")). FF 11. Wade's composition comprises an oil "selected from one or more of the following: castor oil, dehydrated castor oil, cotton seed oil, fish oil, linseed oil, menhaden oil, oiticaca oil, palm kernel oil, perilla oil, safflower oil, sardine oil, soybean oil and tung oil" (Wade 5:7-10; see Final Act. 4 (Examiner finds that Wade discloses a "penetrating agent (i.e. oil)")). FF 12. Wade's composition comprises a "radiation curable substance compris[ing] at least one thiol compound of formula X-(SH)n where X represents an organic moiety and n is an integer from 1 to 1 O" (Wade 5: 11- 13; see Final Act. 4 (Examiner finds that Wade's composition comprises a "curing agent")). FF 13. Examiner finds that Wade discloses a composition comprising "polymerizable materials, oils, and curing agent in the same or overlapping [a]mounts" required by Appellants' claimed invention (see Final Act. 4 (citing Wade's Examples)). ANALYSIS Examiner finds that Kozacheck and Wade each disclose a composition comprising a polymerizable material, a penetrating agent (i.e., oil), and a curing agent and, therefore, a person of ordinary skill in this art would have expected that the polymerizable material of Kozacheck' s composition "will not cross-link reactive functional groups of nail proteins" and "is capable of penetrating at least 0.05 mm below the upper surface of a nail when the composition is applied to the nail" (Final Act. 2--4 ( citing In re 6 Appeal 2017-011765 Application 14/209,063 Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)). We find no error in Examiner's prima facie cases of anticipation. On this record, although Appellants contend that there is a difference between their claimed invention and the composition disclosed by Kozacheck or Wade, 8 Appellants fail to establish an evidentiary basis on this record to support a finding. See In re Spada, 911 F.2d at 709 (Although "Spada's position is that his polymers are not anticipated by the polymers of Smith because their properties are different, Spada was reasonably required to show that his polymer compositions are different from those described by Smith"). A chemical composition and its properties are inseparable. See In re Spada, 911 F.2d at 709. As discussed above, Appellants failed to establish a difference between the prior art compositions and the claimed composition. Therefore, we are not persuaded by Appellants' contention that "[i]dentifying similar ingredients is not the same as identifying whether the compositions are identical or substantially identical" (App. Br. 6; see also Reply Br. 3 ("Why would penetration of the nail be an inherent property of a coating composition simply because it has an ingredient in common with the present claims, particularly if the coating composition required a thixotropic agent to form a gel?")). We recognize, but are not persuaded by, Appellants' reliance on Schoon to establish that "Kozacheck does not use the term 'penetrating agent' and is silent with respect to the composition penetrating the surface of the nail," Kozacheck's composition "require[s] a thixotropic additive to alter 8 See Appellants' September 26, 2017 Reply Brief 2 ("Kozacheck and Wade do not teach identical compositions as presently claimed"). 7 Appeal 2017-011765 Application 14/209,063 the physical properties of the UV-curable gel," Kozacheck's compositions "are designed and required to be removed periodically and replaced with a freshly applied coating," and Kozacheck describes its compositions as "'coatings' and 'adornment coatings"' (App. Br. 7-8 (citing Schoon Decl. 9); see also Reply Br. 3-5). Notwithstanding Appellants' contention and Schoon's declarations to the contrary, Appellants failed to establish that Kozacheck fails to disclose a composition comprising a penetrating agent ( cf FF 8 (Examiner finds that Kozacheck teaches a penetration agent within the scope of Appellants' elected invention)). Appellants failed to establish that the composition of their claim 1 excludes a thixotropic additive or that a composition characterized as a coating by Kozacheck will not necessarily or inherently also penetrate to a depth of at least 0.05 mm beneath a surface of a fingernail or toe nail when the composition is applied to the fingernail or toenail. "[A] prima facie case of anticipation [maybe] based on inherency." In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case of anticipation has been established, the burden shifts to the Appellant to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."). See also In re Spada, 911 F.2d at 708---09. 9 Declaration of Douglas Schoon, signed May 10, 2016. 8 Appeal 2017-011765 Application 14/209,063 For the foregoing reasons, we are not persuaded by Appellants' contention that "[l]ike Kozacheck, Wade states that the invention is a 'nail coating composition"' and is, therefore, different than Appellants' claimed invention (App. Br. 10-12). As discussed above, Appellants' failed to meet their burden of establish an evidentiary basis to support a finding that the composition of their claim 1 differs from the composition disclosed by Wade. CONCLUSION The preponderance of evidence on this record supports Examiner's finding that either ofKozacheck or Wade teach Appellants' claimed invention. The rejection of claim 1 under 35 U.S.C. Â§ 102(a) as anticipated by Kozacheck is affirmed. Claims 4, 7, 8, and 21 are not separately argued and fall with claim 1. The rejection of claim 1 under 35 U.S.C. Â§ 102(a) as anticipated by Wade is affirmed. Claims 4, 5, 7, 8, and 21 are not separately argued and fall with claim 1. TIME PERIOD FOR RESPONSE 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). AFFIRMED 9