Ex Parte NORMAN

Patent Trials and Appeals Board

Feb 5, 2019

14662994 - (D) (P.T.A.B. Feb. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/662,994 03/19/2015
32425 7590 02/07/2019
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Greg NORMAN
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.
MKAY.P0605US/1000196763 6469
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/07/2019 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREG NORMAN
Appeal2018-003742
Application 14/662,994
Technology Center 1600
Before JAMES A. WORTH, ROBERT A. POLLOCK, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
POLLOCK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification discloses "an oil-in-water anionic
emulsion for eyelashes (e.g., a mascara)." Spec. ,r 5; id. at 7 (as amended)
(same). "The oil-in-water anionic emulsion can be capable of thickening the
appearance of a hair fiber such as an eyelash. Thickening the appearance
also refers to increasing the total volume of the eyelash, which can be
1 Appellant identifies the real party-in-interest as Mary Kay Inc. App. Br. 3.
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Application 14/662,994
subjectively determined by visual inspection (e.g., comparing an eyelash
having the composition with the same eyelash in which the composition is
removed) or objectively measured with standard mathematical equations that
calculate the volume of an elongated cylinder." Id.
Claims 1 and 12 are independent. Claim 1 recites:
1. An oil-in-water anionic emulsion for eyelashes comprising:
(a) a continuous phase comprising 35 to 55% by weight
of water based on the total weight of the emulsion;
(b) a discontinuous phase comprising 15 to 25% by
weight of a combination of waxes, wherein the
combination of waxes comprises paraffin wax,
camauba wax, beeswax, and candelilla wax based on
the total weight of the emulsion; and
( c) 5 to 15% by weight of the emulsion of an anionic
surfactant system comprising stearic acid, palmitic
acid, myristic acid, polyethylene glycol-40 (PEG-40)
stearate, and stearyl stearate,
wherein the oil-in-water anionic emulsion is capable of
thickening the appearance of eyelashes and increasing
the volume of the eyelashes when directly applied to
the eyelashes.
Claim 12 is directed to a method "comprising directly applying the
oil-in-water anionic emulsion of claim 1 to eyelashes, wherein direct
application of the oil-in-water anionic emulsion to the eye lashes thickens
the appearance of the eyelashes and increases the volume of the eyelashes."
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The Examiner rejects claims 1-3 and 10-13 under 35 U.S.C.
§ 103(a)2 as unpatentable over the combination ofBodelin, 3 Pays, 4 Feng, 5
Ikeda, 6 and Arditty. 7 Final Act. 3-8.
The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bodelin, Pays, Feng, Ikeda, and
Arditty as applied to claims 1-3 and 10-13, above, and further in view of
Hanna8 and Dorf. 9 Final Act. 8-12.
The Examiner rejects claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bodelin, Pays, Feng, Ikeda, Arditty,
Hanna, and Dorf as applied to claims 4 and 5, above, and further in view of
Sedlewicz10 and Kakizawa. 11 Final Act. 12-15.
The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bodelin, Pays, Feng, Ikeda, Arditty,
2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) ("AIA"), amended 35 U.S.C. §§ 102 and 103. Because the instant
application has an effective filing date after the effective date of the
applicable AIA amendments, we refer to the AIA version of§§ 102 and/or
103.
3 Bodelin, US 2007 /0246058 Al, published Oct. 25, 2007.
4 Pays, et al., WO 2013/083532 A2, published June 13, 2013.
5 Feng, US 2007/0036739 Al, published Feb. 15, 2007.
6 Ikeda, et al., US 5,763,497, issued June 9, 1998.
7 Arditty, et al., US 2009/0142289 Al, published June 4, 2009.
8 Hanna, et al., US 2006/0159642 Al, published July 20, 2006.
9 Dorf, US 2007/0154439 Al, published July 5, 2007.
10 Sedlewicz, et al., Current Trends in Cosmetic Preservation, dated Sept.
23, 2011.
11 Kakizawa et al., JP 2009-235029, published October 15, 2009. (see
machine translation).
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Hanna, Dorf, Sedlewicz, and Kakizawa as applied to claims 6 and 7, above,
and further in view of Schaefer. 12 Final Act. 15-17.
ANALYSIS
We have reviewed Appellant's contentions that the Examiner erred in
rejecting claims 1-13 as obvious under 35 U.S.C. § 103. App. Br. 6-18;
Reply 2-17. We disagree with Appellant's contentions and adopt the
Examiner's findings and conclusion. See Final Act. 3-19, Ans. 3-10.
Appellant's arguments focus on the rejection of independent claims 1, 3 and
12 in view of Bodelin, Pays, Feng, Ikeda, and Arditty. Appellant does not
argue claims 2, 4--11, or 13 separately and they fall with claims 1, 3, and 12.
See 37 C.F.R. § 4I.37(c)(l)(iv). We provide the following comments for
clarity and emphasis.
The Examiner relies on Bodelin as teaching "a kit for making up the
eyelashes (mascara) comprising at least one composition (i) and at least one
composition (ii), at least one of said compositions, preferably both
compositions, comprising a continuous aqueous phase," where [ e Jach of
composition (i) and (ii) comprise wax," which "may be in the form of an
aqueous microdispersion ( discontinuous phase)" and contain emulsifying
surfactants; and wherein "composition (ii) allows for a volumizing or
charging deposit (capable of thickening the appearance of eyelashes)." See
Final Act. 3-5. The Examiner contends that the application of composition
(ii) directly to the eyelashes, with or without the subsequent overcoat of
12 Schaefer, Synthetic Mica Pigments for Color Cosmetics, Cosmetics &
Toiletries, dated June 21, 2011.
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Application 14/662,994
composition (i), satisfies the "wherein" clauses of independent claims 1 and
12.
The Examiner further relies on Pays, Feng, Ikeda, and Arditty, as
teaching the anionic surfactant system including myristic acid and stearyl
stearate recited in claim 1, and the particular concentration ranges of
elements of the anionic surfactant system recited in claim 3. See Final Act.
5-8. Relying on In re Kerkhoven, 626 F.2d 846 (CCPA 1980), the
Examiner concludes that it would have been obvious "to modify the
emulsifying anionic surfactants of Bodelin comprising Cl6-C30 fatty acids
to include C12---C22 and preferably C14---C18 fatty acids as taught by Pays,"
where stearic acid is a C 18 fatty acid, palmitic acid is a C 16 fatty acid and
myristic acid is a C 14 fatty acid. Id. at 7-8. According to the Examiner, it
would have been obvious "to substitute a [ stearic acid] blend[, such as the
blend] of stearic acid, palmitic acid and myristic acid in a weight ratio of
(1.59/3):(1.32/3):(0.09/3) as taught by Feng for stearic acid as taught by
Pays because Feng exemplifies this substitution [in a mascara composition]
and it is prima facie obvious to substitute equivalents known for the same
purpose." Id. at 7. Such a substitution for the 5.65 wt% stearic acid in
Example 5 of Bodelin 13 would result in a composition comprising 2.65 wt%
stearic acid, 2.2 wt% palmitic acid plus 0.2 wt% palmitic acid already
present in Example 5, and 0.15 wt% myristic acid, which are percentages
13 We note the Examiner refers to Example 5 of Pays, but as Pays does not
contain an Example 5, we determine this was an inadvertent error by the
Examiner, who had previously referred to Example 5 of Bodelin and its
inclusion of 5.65% stearic acid
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within the weight range for these composition elements required by claim 3.
Id. at 8. The Examiner further finds that it would have been obvious:
to modify the emulsifying surfactants of Bodelin chosen from
nonionic, anionic, cationic and amphoteric surfactants to obtain
an oil-in-water emulsion to include a wax ester composed of a
Cl8-C34 fatty acid and a Cl8-C44 higher alcohol inclusive of
stearyl stearate in an amount from 0.1 to 10 wt% of the
composition as taught by Ikeda because the combination makes
stable storage of oil-in-water type cosmetic emulsions possible.
There would be a reasonable expectation of success because
Bodelin broadly teach[ es] nonionic surfactants and a prior art
genus of many species suggests ( renders obvious) every species
falling within that genus as per MPEP § 2144.08. In addition,
Arditty teach stearyl stearate to be compatible with camauba wax
and candelilla wax, both waxes taught by Pays, in the context of
a mascara composition.
Id. at 8.
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness because:
(i) the combination of the cited references does not disclose or
suggest a single composition that is directly applied to the
eyelashes that is capable of thickening the appearance of
eyelashes and increasing the volume of eyelashes; (ii) the
Examiner relies on an asserted inherent property of an unknown
composition; and (iii) given the teachings of the cited references
there is no reasonable expectation of successfully combining the
references to obtain the properties of the claimed invention.
Appeal Br. 6. We address those issues below.
1. An Oil-In-Water Anionic Emulsion Directly Applied to the Eyelashes.
Appellant argues that "Bodelin is the only reference asserted as
disclosing a composition capable of thickening or increasing the volume of
eyelashes." But whereas "Appellant claims a single emulsion capable of
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thickening the appearance of eyelashes and increasing the volume of
eyelashes when directly applied to the eyelashes," "Bodelin does not teach
or suggest a single composition that is directly applied to the eyelashes
that is capable of thickening the appearance of eyelashes and increasing the
volume of eyelashes." Id. at 7-9. Thus, according to Appellant, "Bodelin
does not make it obvious that thickening of the appearance of eyelashes or
increasing the volume of eyelashes can be achieved by applying composition
(ii) alone or by applying composition (i) on top of composition (ii)." Id. at
9. We do not find Appellant's argument persuasive for the reasons set forth
on pages 5-7 of the Answer.
As recognized by the Examiner, Bodelin "does not teach that the
combination of the two compositions is required for a volumizing or
charging deposit as alleged by Appellant." Id. at 5. To the contrary, we
agree with the Examiner that Bodelin teaches that composition (ii) itself is
capable of thickening the appearance of eyelashes as set forth in the instant
claims. See id. at 5. In particular, as the Examiner notes, Bodelin states
that:
[ c ]omposition (i) makes it possible to obtain sparingly charging
makeup, i.e. it does not thicken the eyelashes: a natural makeup
result is thus obtained. It is thus possible to easily produce, on
this first film of makeup, a more volumizing or charging
deposit on only part of the eyelash fringe, for example on at most
the outer third of the eyelash fringe, by applying composition
(ii), which, by virtue of its total content of waxes and of
hydrophilic polymer(s), makes it possible to obtain a larger
deposit of material.
Id. (quoting Bodelin ,r [0012]). In other words, Bodelin expressly indicates
that composition (ii) allows for a larger deposit of material. Such a deposit
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would be volmnizing, especially as compared to composition (i) which
"does not thicken the lashes."
Furthermore, Bodelin teaches that although "it is preferred to apply
composition (i) before composition (ii)," "[t]he order of application of
composition (i) and of composition (ii) may vary." Bodelin ,r 20; see id. at
,r,r 21,253. In sum, we agree with the Examiner, that Bodelin teaches an
embodiment in which composition (ii) is capable of being directly applied to
the eyelashes and if effected, would provide the claimed appearance of
thickening and increasing the volume of the eyelashes. See Ans. 5-7.
Additionally, regarding the method recited in claim 12, we note, as the
Examiner did (Final Act. 19), that the claim is open-ended because it uses
the transitional phrase "comprising," and thus, allows for additional steps
after the application of the composition that results in appearance of
thickening. And, as just noted, Bodelin teaches that "[ t ]he order of
application of composition (i) and of composition (ii) may vary." Bodelin ,r
20; see id. at ,r,r 21, 253. Thus, we agree with the Examiner that Bodelin
suggests applying composition (ii) prior to composition (i) that will result in
a multi-layer coating which is also volumizing or charging because at least
one of the compositions, specifically composition (ii), is a charging
cosmetic." Ans. 6.
We also do not find unreasonable, the Examiner's finding that the
application of composition (i) directly to the eyelashes----either alone or prior
to the application of composition (ii}--also provides the claimed result. See
id. at 6-7. Particularly relevant to this finding, Appellant appears to argue
that thickening eyelashes is in some way separable from thickening the
appearance of the eyelashes. See id. at 16-17. Insofar as the Specification
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discloses that "thickening the appearance" [] refers to increasing the total
volume of the eyelash, which can be subjectively determined by visual
inspection ... or objectively measured with standard mathematical
equations that calculate the volume of an elongated cylinder," we do not find
this argument persuasive. See Spec. ,r 5; id. at 7 (as amended) (same).
2. Inherency and Reasonable Expectation of success.
Appellant argues that the Examiner's rejections are flawed because
they "combine[] the teachings of multiple references to create a hypothetical
formulation, and then conclude[] that the hypothetical formulation would
inherently have Appellant's claimed features." App. Br 11-16; Reply 5-10.
Appellant similarly argues that the Examiner provides "no apparent reason
to combine/modify the references as asserted which would result in a
reasonable expectation of successfully achieving a composition having the
currently claimed characteristics." App. Br. 16-18; Reply 10-17. To the
extent we understand Appellant's argument, we do not find it persuasive for
the reasons set forth in the Examiner's Answer.
We conclude that the Examiner presents a reasoned argument for
modifying the emulsifying anionic surfactant system of Bodelin to include
the myristic acid and stearyl stearate acids recited in claim 1, and for the
weight percentage ranges recited in claim 3. That is, Feng teaches that a
combination of stearic acid, palmitic acid, and mysristic acid is a known
"stearic acid" equivalent for use as an anionic surfactant in a mascara
composition that has an aqueous phase and a fatty phase (Feng Example 2),
and Pays teaches that the anionic acid, stearic acid, is a preferred surfactant
for use in emulsion-type mascara composition (Pays 24, 26). Bodelin
teaches, in Example 5, the use of stearic acid in an oil-in-water emulsion
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mascara composition. It is obvious to those skilled in the art to substitute
one known equivalent for another. See In re Omeprazole Patent Litigation,
483 F.3d 1364, 1374 (Fed. Cir. 2007) ("[T]his court finds no ... error in
[the] conclusion that it would have been obvious to one skilled in the art to
substitute one ARC [alkaline reactive compound] for another."). Moreover,
regarding the addition of stearyl stearate, we agree with the Examiner that
Ikeda teaches the addition of such a compound makes stable storage of oil-
in-water type cosmetic emulsions possible.
As explained in the Answer, the Examiner's rejections are "predicated
on the obviousness [ of] modifying the compositions of Bodelin to further
comprise art-recognized components of mascaras in art-recognized amounts
using the standard rationales of combining/substituting art-recognized
equivalents with a reasonable expectation of success." Ans. 8. And though
Appellant points to assertions in the Specification suggesting that the
claimed anionic surfactant system results in a mascara emulsion with
properties including reduced "clumping" and "a lighter or less greasy feel"
(see App. Br. 5---6), none of these purported advantages are recited in the
claims on appeal and Appellant presents insufficient evidence that the
particular components of the anionic surfactant system of claims 1 and 3
impart any unexpected properties.
SUMMARY
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-13 of Application 14/662,994.
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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. § 1.136(a).
AFFIRMED
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