Ex Parte Pavel

Patent Trial and Appeal Board

Sep 29, 2014

11972102 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte FLORENTINA PAVEL1
__________

Appeal 2012-005986
Application 11/972,102
Technology Center 1600
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Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ROBERT A. POLLOCK, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–6 as unpatentable under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s invention relates to compositions useful for mascara
cosmetics.

1 According to Appellant, the Real Party in Interest is L’Oreal S.A. of Paris,
France. (App. Br. 2).
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Representative independent claim 1 (formatted) reads as follows:
1. A mascara comprising
at least one coloring agent,
at least one semicrystalline alkyl (meth)acrylate,
at least one hydrogenated hydrocarbon resin and
at least one block copolymer.
The following grounds of rejection are before us for review:
Claims 1–3, 5–12, and 18–21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lu2 in view of Charbit.3
Claims 1–3, 5–12, and 18–21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yu4 in view of Charbit.
Claims 1–3, 5–12, and 18–21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Arnaud5 in view of Charbit.

ANALYSIS
We have reviewed Appellant’s contentions that the Examiner erred in
rejecting claims 1–3, 5–12, and 18–21 under 35 U.S.C §103(a) as obvious
over Charbit in combination with any of Lu, Yu, or Arnaud. (Ans. 5–11.)
We disagree with Appellant’s conclusions and adopt as our own the factual
findings and analysis set forth in the Examiner’s Answer.
Appellant admits that the combination of Charbit with either Yu or
Arnaud and Charbit are “no different from” the combination of Charbit and
Lu. (App. Br. 5, 6.) As all three rejections focus on the same issues, we

2 Lu et al., US 2007/0055014 Al, published March 8, 2007.
3 Charbit, US 2005/0137117 Al, published June 23, 2005.
4 Yu, US 2006/0013839 Al, published Jan. 19, 2006.
5 Arnaud et al., US 2007/0014745 Al, published Jan. 18, 2007.
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highlight and address the following facts with respect to the rejection in
view of Lu and Charbit.
Specification
Appellant’s invention relates to “compositions for keratin materials
(such as hair or eyelashes) such as mascaras . . . containing at least one
tackifier and at least one semi-crystalline alkyl (meth)acrylate.” (Spec.
Abstract, ¶ 2) “Such compositions, when applied to keratin materials,
impart improved length to the keratin materials.” (Id. ¶ 2.) The amount of
semi-crystalline alkyl (meth)acrylate in the disclosed compositions is
preferably “sufficient to support, strengthen, stiffen and/or reinforce faux
fibers formed upon application of the composition to a keratin material.”
(Id. ¶ 27) Exemplary semi-crystalline alkyl (meth)acrylates include
Intelimer® IPA 13-1. (Id. ¶¶ 23-24).
In accord with the Specification, the named inventor testified that
3. Mascaras which contain a hydrogenated hydrocarbon
resin and a block copolymer tend to form “fibers” after
application. These “fibers” can provide a lengthening effect
to eyelashes to which the mascaras have been applied.
However, during the application of the mascara with the
brush the “fibers” break and shrink, thereby decreasing the
amount of lengthening effect provided by the “fibers.”
4. Adding at least one semi-crystalline alkyl (meth)acrylate
to a mascara containing a hydrogenated hydrocarbon resin
such as a Regalite® resin and a block copolymer such as a
Kraton® copolymer inhibits the fibers’ breaking and
shrinking, thereby providing an improved lengthening
effect for the mascara.
(Declaration Under 37 C.F.R. § 1.132 of Florentina Pavel;
see also Spec. ¶¶ 3, 10, 32, 45, 107.)
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Findings of Fact
Lu
Lu teaches cosmetic compositions including mascara (Abstract, ¶ 412)
comprising at least one coloring agent (Lu abstract, ¶ 328); at least one block
copolymer such as Kraton 1657 M® (abstract, ¶¶ 21, 302); and at least one
hydrogenated hydrocarbon resin such as Regalite R1100 (¶ 313).
Charbit
Charbit teaches haircare and make-up compositions, in particular
“mascara, nail varnish, lipstick and powders” comprising at least one optical
brighter for “intensifying radiance and brightening the colours of the
cosmetic compositions” (Charbit ¶ 9) combined with at least one semi-
crystalline polymer that enhances the activity of the optical brightener (id.
abstract; ¶¶ 12, 84). Charbit teaches that the semi-crystalline polymers may
comprise semi-crystalline alkyl(meth)acrylates such as Intelimer® IPA 13-1.
(Id. ¶¶ 39, 47, 69–70.)
Charbit discloses that preferred embodiments comprise an amount of
the semi-crystalline polymer “that reinforces the bleaching and/or lightening
effect of optical brighteners, which makes it possible to incorporate optical
brighteners in smaller amounts into the compositions.” (Id. ¶ 84.) This
amount may comprise from 0.1% to 50%, from 0.5% to 20%, or from 1% to
10% by weight of the total composition. (Id. ¶ 83.)
Cosmetic compositions according to Charbit contain a physiologically
acceptable medium “compatible with the skin, and possibly the lips, the
scalp, the eyelashes, the eyes and/or the hair.” (Id. ¶ 105.) Accordingly, the
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physiologically acceptable medium “has a pH that is compatible with the
skin, preferably ranging from 3 to 8 and better still from 5 to 7.” (Id.)
Claims 1–3, 5–8, 11, 19, and 20
We focus our initial analysis on claim 1, the sole independent claim
on appeal. Claims 2, 3, 5–8, 11, 19, and 20 stand or fall with claim 1.
37 C.F.R. § 1.37(c)(1)(vii). Appellant separately address claims 9, 10, 18,
and 19–21. (See App. Br. 5.)
Appellant contends that the Examiner fails to identify any motivation
for one of ordinary skill in the art to combine the semi-crystalline
alkyl(meth)acrylates of Charbit with teachings of Lu, Yu, or Arnand because
“the applied art is silent concerning the ability of the required semi-
crystalline alkyl (meth)acrylate to provide an improved lengthening effect of
a specific type of mascara.” (App. Br. 5; see also Reply Br. 1.) We are not
persuaded.
First, independent claim 1 is directed to composition comprising:
at least one coloring agent, at least one semicrystalline alkyl
(meth)acrylate, at least one hydrogenated hydrocarbon resin, and at least one
block copolymer. Neither claim 1, nor any of the claims on appeal require
that the composition “provide an improved lengthening effect of a specific
type of mascara,” as Appellant contends. Even if this intended use recitation
was added to the claim, a “mere statement of a new use for an otherwise old
or obvious composition cannot render a claim to the composition
patentable.” In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969).
Moreover, the Examiner does provide a reason for one of ordinary
skill to modify Lu, Yu, or Arnand to include a semicrystalline alkyl
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(meth)acrylate as taught by Charbit, that is, to enhance optical brighteners in
a mascara formulation. In particular, the Examiner states that
Charbit further teaches ingredients for cosmetic
compositions which have the advantageous properties of
enhancing optical brighteners and providing for non-sticky
feel, and even suggests that such polymers can be applied to
eyelashes, see paragraph 0105. Therefore it would have
been obvious to incorporate the products disclosed by
Charbit into the mascara cosmetic compositions disclosed
by Yu and Lu, as Charbit teach the advantages for
incorporating semi-crystalline alkyl(methacrylates) into
cosmetic formulations, and even suggests their use on
eyelashes.
(Answer 13.)
The Supreme Court has made clear that
the problem motivating the patentee may be only one of
many addressed by the patent’s subject matter. The question
is not whether the combination was obvious to the patentee
but whether the combination was obvious to a person with
ordinary skill in the art. Under the correct analysis, any
need or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, there is no
need for Charbit to suggest the use of semi-crystalline alkyl(methacrylates)
for the same purpose set forth in the Specification. See In re Kemps, 97 F.3d
1427, 1430 (Fed. Cir. 1996)(“[T]he motivation in the prior art to combine
the references does not have to be identical to that of the applicant to
establish obviousness.”). For the purpose of finding obviousness under
35 U.S.C. § 103(a), it sufficient that the Examiner has properly identified a
reason for modifying Lu, Yu, or Arnand to include a semicrystalline alkyl
(meth)acrylate as taught by Charbit.
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Claims 9, 10, 18-21
Appellant states that claims 9, 10, and 18–21 require the at least one
semicrystalline alkyl (meth)acrylate to be present in from about 2% to about
25 % in claims 9, 18 and 19, and from about 4% to about 15 % in claims 10,
20, and 21. (App. Br. 5.) Appellant argues that these claims require
“specified, result effective amounts of the semi-crystalline alkyl
(meth)acrylate” to “support, strengthen, stiffen and/or reinforce faux fibers
formed upon application of a mascara containing block copolymer and
hydrogenated hydrocarbon resin.” (Id.) Appellant’s argument is not
persuasive.
The claimed ranges are within the ranges set forth in Charbit
paragraph 83 and Appellant has presented no evidence that the claimed
ranges provide unexpected results as compared to that disclosed in the prior
art reference. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.”) As discussed above, there is no requirement that
Charbit suggest the use of semi-crystalline alkyl(methacrylates) for the same
purpose as the Specification.
Appellant’s Reply Brief
Appellant contends in the Reply Brief that the Examiner erred for the
following additional reasons.
Appellant argues that paragraph 9 of Charbit does not relate to
Charbit’s compositions. (Reply Br. 1.) We disagree. In determining
obviousness, “a reference . . . is prior art for all that it teaches.” Beckman
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir.
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1989). As Appellant points out, paragraph 9 refer to a prior art French
patent application; it also teaches that optical brighteners may be used in hair
care and makeup compositions including mascara.
Appellant argues that paragraph 21 of Charbit “provides no guidance
with respect to mascaras” because it “relates to non-solid products.”6 (Reply
Br. 1.) Paragraph 21 is directed to the preferred melting points for semi-
crystalline polymers taught by Charbit. Insofar as Appellant has not
demonstrated, or even alleged, that mascaras are exclusively solids, we find
no merit in this argument.
Appellant argues that although Charbit paragraph 84 “relates to the
decreased amount of optical brightener that can be added to a composition if
the polymer disclosed therein is present” and it “does not relate to
mascaras.” (Reply Br. 2.) Section 103 forbids issuance of a patent when
“the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains.” KSR, 550 U.S. at 406 (2007). We
find that Charbit as a whole teaches haircare and make-up compositions, in
particular “mascara, nail varnish, lipstick and powders” comprising at least
one optical brighter for “intensifying radiance and brightening the colours of

6 Although we need not reach the question of whether the claims on appeal
are limited to mascara compositions, we note that where the body of a claim
fully and intrinsically sets forth all of the limitations of the claimed
invention, and the preamble merely states the purpose or intended use of the
invention, and not a distinct definition of any claimed limitation, the
preamble is not considered limiting and is of no significance to claim
construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999).
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the cosmetic compositions” (Charbit ¶ 9) and at least one semi-crystalline
polymer that enhances the activity of the optical brightener. (Id. abstract;
¶¶ 12, 84.) That paragraph 84 of Charbit does not use the word “mascara”
does not change our analysis.
Appellant further argues that Charbit paragraph 105 indicates that
Charbit’s compositions are “must be compatable with skin” and, moreover,
“does not relate to mascaras.” (Reply Br. 2 (emphasis in original.) For the
reasons set forth above, we are not persuaded. In addition, Charbit
paragraph 105 relates to a physiologically acceptable medium “compatible
with the skin, and possibly the lips, the scalp, the eyelashes, the eyes and/or
the hair.” As Appellant has not explained why one of ordinary skill in the
art would find that a composition applied to the eyelashes should not be
compatible with the skin, we are likewise not persuaded.
For the reasons set forth above, we do not disturb the Examiner’s
finding that claims 1–3, 5–12, and 18–21 are unpatentable as obvious over
any of Lu, Yu, or Arnaud in view of Charbit.
SUMMARY
We affirm the rejection of claims 1 and 9 under
35 U.S.C. §103(a) as unpatentable over Lu in view of Charbit. Claims 2, 3,
5-9, 11, and 12 fall with claim 1. Claims 10 and 18-21 fall with claim 9.
We affirm the rejection of claims 1 and 9 under 35 U.S.C. §103(a) as
unpatentable over Yu in view of Charbit. Claims 2, 3, 5-9, 11, and 12 fall
with claim 1. Claims 10 and 18-21 fall with claim 9.
We affirm the rejection of claims 1 and 9 under
35 U.S.C. §103(a) as unpatentable over Arnaud in view of Charbit. Claims
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2, 3, 5-9, 11, and 12 fall with claim 1. Claims 10 and 18-21 fall with
claim 9.

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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