Ex Parte Pierre et al

Patent Trials and Appeals BoardJun 18, 2019

14409023 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/409,023 12/18/2014 30678 7590 POLSINELLI PC (DC OFFICE) 1000 Louisiana Street Suite 6400 HOUSTON, TX 77002 06/20/2019 FIRST NAMED INVENTOR Patricia Pierre 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. 085507-536544 3375 EXAMINER BERRIOS, JENNIFER A ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 06/20/2019 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): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PA TRICIA PIERRE and ERIC LHEUREUX Appeal2018-005753 1 Application 14/409,023 Technology Center 1600 Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK, and JOHN E. SCHNEIDER, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. Â§ 134 involves claims to a cosmetic composition that contains a specific combination of different particles. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify L' Oreal as the real party in interest in this appeal. Appeal Br. 2. Appeal2018-005753 Application 14/409,023 STATEMENT OF THE CASE The following grounds of rejection are before us for review: (1) Claims 1-14 and 19-22, under 35 U.S.C. Â§ I03(a) as being unpatentable over Rouquet, 2 IP .com, 3 and the Dow Coming Document4 (Ans. 4--10); (2) Claims 1-14 and 19-22, under 35 U.S.C. Â§ I03(a) as being unpatentable over Rouquet, IP.com, the Dow Coming Document, Auguste, 5 and Baldo6 (Ans. 10-11); and (3) Claims 1-15 and 19-22, under 35 U.S.C. Â§ I03(a) as being unpatentable over Rouquet, IP.com, the Dow Coming Document, Bissey- Beugras,7 and Quedville8 (Ans. 11-12). Claim 1, the sole independent claim on appeal, is representative and reads as follows: 1. Cosmetic and/or dermatological composition comprising, in a physiologically acceptable medium: a) from 0.1 % to 30% by weight relative to the total weight of the composition of hydrophobic aero gel particles b) from 0.01 % to 30% by weight relative to the total weight of the composition of silicone elastomer particles different than the particles c ), and 2 US 2001/0026811 Al (published Oct. 4, 2001). 3 Silica Silylate Aero gel for Cosmetic Applications (IP .com Electronic Publication dated Jan. 30, 2006). 4 Dow CorningÂ® VM-2270 Aerogel Fine Particles (published Apr. 1, 2009). 5 US 2004/0265347 Al (published Dec. 30, 2004). 6 US 2008/0119527 Al (published May 22, 2008). 7 US 2006/0135397 Al (published Jun. 22, 2006). 8 US 2010/0256100 Al (published Oct. 7, 2010). 2 Appeal2018-005753 Application 14/409,023 c) from 0.01 % to 30% by weight relative to the total weight of the composition of particles that absorbs sebum different than the particles a) and b ), the said composition comprising at least one aqueous phase. Appeal Br. 15. DISCUSSION The Examiner's Prima Facie Case In rejecting claims 1-14 and 19-22 for obviousness over Rouquet, IP.com, and the Dow Coming Document, the Examiner cited Rouquet as describing a composition containing silicone elastomer particles as well as polymeric sebum-absorbing particles, which correspond to components (b) and ( c) of the composition of Appellants' claims. See Ans. 4--7. In particular, the Examiner cited Example 2 of Rouquet as disclosing a composition containing KSG 16 ( which contains silicon elastomer particles encompassed by Appellants' claimed component (b) ), and Micropearl M 100 ( which is composed of polymeric sebum-absorbing particles encompassed by Appellants' claimed component ( c) ), in amounts encompassed by Appellants' claims. See id. at 6. The Examiner also noted that the composition of Rouquet' s Example 2 contained water, and thus also included at least one aqueous phase, as required by Appellants' claims. Id. The Examiner noted Rouquet's teaching that it was desirable for the compositions disclosed in the reference to contain "ingredients commonly used in cosmetics, chosen as a function of the activity or of the cosmetic effect desired for the final product, such as coverage, transparency, mattness and/or satin appearance" with such ingredients including "lipophilic or 3 Appeal2018-005753 Application 14/409,023 hydrophilic thickeners, vitamins, sunscreens, moisturizing agents and agents which act on greasy skin and/or anti-seborrheic agents." Ans. 6-7 (citing Rouquet ,r,r 43--49). The Examiner found that Rouquet' s composition differed from the compositions recited in Appellants' claims in that "Rouquet does not teach the composition to comprise the claimed hydrophobic aerogel particles, specifically VM2270," the particles of component (a) of Appellants' claims. Id. at 7. The Examiner cited IP.com and the Dow Coming Document as evidence that it would have been obvious to include, in Rouquet's composition, aerogel particles encompassed by component (a) of Appellants' claims. Id. at 7-8. In particular, the Examiner cited IP .com as disclosing that aero gel particles encompassed by Appellants' component (a), "Dow Coming VM- 2270 (elected species)," were known to have "interesting characteristics which can be used in personal care applications, such as high oil absorption rate, high sebum absorption, effective rheology modification, etc." and were useful in such compositions "in an amount of 1 %." Id. at 7. The Examiner cited the Dow Coming Document as teaching that VM-2270 was useful "in personal care products as a thickening agent for organic oils and silicone fluids and is capable of absorbing non-polar and polar oils and has the benefits of superior oil and sebum absorption, highly efficient viscosity enhancement of oil phase and fragrance retention (Pg. 1 ). " Id. at 8. 4 Appeal2018-005753 Application 14/409,023 The Examiner noted that "Table 2 of the Dow Coming Document shows a formulation comprising VM-2270 and water and teaches VM-2270 to be used in an amounts of [0.5] and 1 % (reading on instant claims 1, 10 and 21 )." Ans. 8. Based on the references' combined teachings, the Examiner determined that a skilled artisan would have considered it obvious "to modify the teachings of Rouquet with those of IP .com and Dow Coming and add 0.5-1 % of VM-2270 to the composition of Rouquet." Id. The Examiner reasoned that a skilled artisan "would have been motivated to add VM-2270 as both IP.com and Dow Coming teach these particles to be suitable for use in personal care compositions and have superior oil and sebum absorption." Id. The Examiner further reasoned that a skilled artisan would have had "a reasonable expectation of success as Dow Coming shows that VM-2270 can be effectively used in compositions containing water and Rouquet teaches that the compositions are suitable for rendering skin matte and can include agents which act on greasy skin and provide mattness." Id. Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden ... of presenting a primafacie case ofunpatentability .... After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. We select Appellants' claim 1 as representative of the rejected claims. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellants do not persuade us that a 5 Appeal2018-005753 Application 14/409,023 preponderance of the evidence fails to support the Examiner's conclusion of obviousness as to claim 1. Appellants do not assert error in, nor do we discern error in, the Examiner's finding that Rouquet discloses compositions that contain components (b) and ( c) recited in Appellants' claim 1, as well as the aqueous phase recited by claim 1. Rather, Appellants contend, the Examiner erred in determining that a skilled artisan would have considered it obvious to include in Rouquet's compositions the aerogel particles taught in IP.com and the Dow Coming Document, that is, aerogel particles encompassed by component (a) of Appellants' claim 1. See Appeal Br. 8-10; Reply Br. 3--4. We are not persuaded. Rouquet discloses cosmetic/dermatological compositions composed of two ingredients: (1) "a partially or completely crosslinked elastomeric organopolysiloxane" and (2) "spherical polymeric particles with a particle diameter of less than 10 Âµm." Rouquet, abstract; see also id. ,r 55 (Rouquet's Example 2, including Micropearl M 100 particles (poly(methyl methacrylate microbeads), KSG 16 (particles containing 24% crosslinked siloxane elastomer), and water); see also id. ,r,r 16, 25 (identifying the constituents of Micropearl M 100 and KSG 16, respectively). While Rouquet thus describes compositions that undisputedly differ from the composition of Appellants' claim 1 only in the absence of the hydrophobic aerogel particles of Appellants' claimed component (a), Rouquet discloses that its compositions may contain, "in addition, the ingredients commonly used in cosmetics, chosen as a function of the activity 6 Appeal2018-005753 Application 14/409,023 or of the cosmetic effect desired for the final product, such as coverage, transparency, mattness and/or satin appearance." Id. ,r 43. As to commonly used cosmetic ingredients, Rouquet teaches in particular that "[ m ]ention may be made, without implied limitation, of: ... lipophilic or hydrophilic thickeners" as well as "agents which act on greasy skin." Id. ,r,r 43--44, 49 As to agents that act on greasy skin, Rouquet explains that prior art silica particles "have the property of absorbing fatty substances, and conferring a non-greasy appearance on these compositions, even in the presence of a large amount of fatty substances. This type of composition is much appreciated by consumers, in particular those with a skin with a greasy tendency." Id. ,r 2. Rouquet explains that its composition, like the silica-containing prior art compositions, "can also be used as a composition for rendering the skin matt which is suited to greasy skin." Id. ,r 30. As the Examiner found, IP .com teaches that hydrophobic aero gel particles encompassed by component (a) of Appellants' claim 1 are useful in personal care products because of their high oil-absorbing and sebum- absorbing properties. See IP .com at p. 1 ( disclosing that silica silylate "is a category of hydrophobically treated silica that has traditionally been used in many applications including ... as a skin care ingredient[]" and that a "new type of ... Silica Silylate Aerogel" has "exceptional properties allow[ing] for interesting characteristics that can be utilized in Personal Care applications including ... [h]igh oil absorption rate ... and [h]igh sebum 7 Appeal2018-005753 Application 14/409,023 absorption"); see also id. at p. 2 (Fig. 1 showing aerogel capacity to absorb sebum from skin). As the Examiner found, the Dow Coming Document similarly teaches that hydrophobic aerogel particles encompassed by component (a) of Appellants' claim 1 are useful in personal care products because of their high oil-absorbing and sebum-absorbing properties. See the Dow Coming Document at p. 1 (disclosing VM-2270 Aerogel Fine Particles as a "Personal Care" product whose benefits include "[s]uperior oil and sebum absorption"); see also id. at p. 4 (Fig. 5 showing aerogel capacity to absorb sebum from skin). Given Rouquet's disclosure that it was useful to include known cosmetic agents in its compositions, particularly agents capable of absorbing fatty substances on greasy skin to increase skin mattness, and further given the teachings in IP .com and the Dow Coming Document that silica silylate aerogel particles possess high oil-absorbing and sebum-absorbing properties, we agree with the Examiner that a skilled artisan had good reason for, and a reasonable expectation of success in, including the aerogel particles described in IP.com and the Dow Coming Document in Rouquet's compositions. We, therefore, also agree with the Examiner that the cited references would have suggested preparing a composition having all of the ingredients recited in Appellants' claim 1, in the claimed amounts. Paragraph 2 of Rouquet, which Appellants rely upon to show a lack of motivation (see Appeal Br. 8-10), reads in full as follows: It is known to use, in cosmetic or dermatological compositions, spherical particles, such as silica particles, for the purpose of conferring a degree of consistency on these 8 Appeal2018-005753 Application 14/409,023 compositions. Reference may in particular be made to the document by Shiseido EP-A-765,656. In these compositions, the higher the amount of particles, the thicker the composition. In addition, these particles have the property of absorbing fatty substances, and conferring a non-greasy appearance on these compositions, even in the presence of a large amount of fatty substances. This type of composition is much appreciated by consumers, in particular those with a skin with a greasy tendency. Unfortunately, the higher the amount of silica particles, the greater the instability of the composition. In addition, these particles confer a very rough and dry feel on the composition, thus limiting the use of this type of composition. Rouquet ,r 2 ( emphasis added). Although Rouquet discloses that silica particles can limit the use of silica-containing compositions due to roughness and dryness, Appellants do not identify in paragraph two of Rouquet, or elsewhere in the record, any suggestion that the specific silylated silica particles disclosed in IP.com and the Dow Coming Document, which have a hydrophobic coating (see IP.com, p. 1), would also exhibit roughness and/or dryness. To the contrary, IP.com describes the "possibility of preparing a Caviar-like formulation with any oil." Id. Moreover, when read in context, rather than teaching away from the use of silica-containing skin oil-absorbing materials in it compositions, paragraph two of Rouquet discloses that such compositions are "much appreciated by consumers, in particular those with a skin with a greasy tendency." Rouquet ,r 2. Thus, while Rouquet cautions against including higher amounts of silica due to stability concerns, roughness, and dryness (see id.), Appellants do not persuade us that Rouquet teaches away from the specific oil/sebum-absorbing aerogels described in IP.com and the Dow 9 Appeal2018-005753 Application 14/409,023 Coming Document. Indeed, consistent with Rouquet's teaching that higher amounts of silica are undesirable, Appellants' claim 1 encompasses concentrations of the aero gel particles as low as 0.1 %. See Appeal. Br. 15. In sum, for the reasons discussed, Appellants do not persuade us that the Examiner erred in determining that the cited references would have suggested preparing a composition having all of the ingredients recited in Appellants' claim 1, in the claimed amounts. We are also unpersuaded that the Examiner erred in determining that Appellants failed to advanced evidence of unexpected results sufficient to overcome the evidence of obviousness based on the cited prior art. We agree with Appellants that, although "[ e ]vidence of secondary considerations must be reasonably commensurate with the scope of the claims[,] ... [t]his does not mean that an applicant is required to test every embodiment within the scope of his or her claims." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). It is well settled, however, that "when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). In the present case, we agree with the Examiner (see Ans. 15-16), that Rouquet is the closest prior art. As noted above, Example 2 of Rouquet, cited by the Examiner in the rejection, includes three of the four ingredients recited in the composition of Appellants' claim 1: component (b) ( silicone elastomer-containing KSG 16), component ( c) Micropearl M 100 ( sebum- 10 Appeal2018-005753 Application 14/409,023 absorbing particle distinct from component (b ), and water ( at least one aqueous phase). See Rouquet ,r 55. On page 6 of their Reply Brief, Appellants reproduce the following tables from pages 27 and 28 of the Specification, asserted as demonstrating unexpected results: Fi1lers Content ~fattncss pcrtbrmancc Silica silylatc (VM-2270 Acrogcl Fine 0.5 + Particles from Dm-v Corning) Ethylene glycol dimethacrylate/lauryl 0.5 + mcthacrylatc copo!yrncr (Polytrap 6603 Adsorbcr) Pcrl.ile 0.5 + Silicone elastomer (KSG 16) 0.5 0 Silica (Accmatt OK 412) 0.5 0 Combinations Content l\fattness performance Aerogel - Silicone elastomer 0.25S{, - 0.25% + Aerogel ~ Silicone elastomer~ Polytrap Acrogcl Â·Â·Â·Â· Silicone elastomerÂ·Â·Â· Silica Acrogcl ~ Silicone elastomer~ Perfac Aerogd --- Silicone elastomer - Expanccl 0.17% - 0.17% - 0.17% 0.17%- 0.17% - 0.17% 0.17%- 0.17%- 0.17% 0.17% - 0.17Cl/o - 0.17% +++ +++ +++ +++ As is evident, neither of the tables asserted by Appellants as showing unexpected results includes a comparison between a composition 11 Appeal2018-005753 Application 14/409,023 encompassed by Appellants' claim 1 and a composition that contains both a silicone elastomer and a polymeric sebum-absorbing particle, as disclosed in Example 2 of Rouquet. Although the second table shows that a combination of three ingredients encompassed by Appellants' claim 1 has triple the mattness performance of a combination of aerogel and a silicone elastomer, we are not persuaded that comparison is sufficient to show an unexpected improvement over the closest prior art, Rouquet, which as discussed above expressly discloses and exemplifies a combination of a silicone elastomer and a polymeric sebum-absorbing particle. Appellants contend that, given the data shown in the tables from the Specification, it logically follows that a combination of three ingredients encompassed by Appellants' claim 1 would perform unexpectedly better than the compositions taught and exemplified by Rouquet: Using silica alone resulted in mattness performance rating of 0. Accordingly, a combination of the ethylene glycol dimethacrylate/lauryl methacrylate copolymer, which alone has the same mattness performance rating of+ as does the Aero gel, if combined with the silicon elastomer or with silica would be expected not to have an improved mattness performance rating in the same way that the combination of the aero gel with the silicon elastomer did not have an improved mattness performance rating. Reply Br. 7. We are not persuaded, however, that Appellants' posited extrapolation from the data in the Specification as to what might have been expected is sufficient to outweigh the prior art evidence of obviousness advanced by the Examiner, given the absence in the record of a true comparison to the closest prior art, showing the actual properties of the closest prior art composition. 12 Appeal2018-005753 Application 14/409,023 See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). In sum, for the reasons discussed, Appellants do not persuade us that the Examiner erred in determining that the cited references would have suggested preparing a composition having all of the ingredients recited in Appellants' claim 1, in the claimed amounts. For the reasons, discussed, we are also unpersuaded that the Examiner erred in determining that Appellants have not advanced evidence of unexpected results sufficient to overcome the evidence of obviousness based on the cited prior art. We, therefore, affirm the Examiner's rejection of Appellants' claim 1 over Rouquet, IP .com, and the Dow Coming Document. Because they were not argued separately, claims 2-14 and 19-22 fall with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Remaining Rejections In rejecting claims 1-14 and 19-22 for obviousness over Rouquet, IP .com, the Dow Coming Document, Auguste, and Baldo, the Examiner relied on Rouquet, IP .com, and the Dow Coming Document for the teachings discussed above, and cited Auguste and Baldo as evidence that it would have been obvious to use an ethylene glycol dimethacrylate/lauryl methacrylate copolymer as the polymeric sebum-absorbing particle in Rouquet' s compositions. See Ans. 10-11. In response to this rejection Appellants argue only that Auguste and Baldo fail to remedy the deficiencies, discussed above, in relation to the 13 Appeal2018-005753 Application 14/409,023 combination of Rouquet, IP .com, and the Dow Coming Document. See Appeal Br. 12. Accordingly, for the reasons discussed above, we affirm this rejection as well. In rejecting claims 1-15 and 19-22 for obviousness over Rouquet, IP .com, the Dow Coming Document, Bissey-Beugras, and Quedville, the Examiner relied on Rouquet, IP .com, the Dow Coming Document for the teachings discussed above, and cited Bissey-Beugras, and Quedville as evidence that it would have been obvious to include 5-noctanoylsalicylic acid in Rouquet's compositions. See Ans. 11-12. In response to this rejection Appellants argue only that Bissey-Beugras, and Quedville fail to remedy the deficiencies, discussed above, in relation to the combination of Rouquet, IP .com, and the Dow Coming Document. See Appeal Br. 12-13. Accordingly, for the reasons discussed above, we affirm this rejection as well. SUMMARY For the reasons discussed, we affirm each of the Examiner's rejections. TIME PERIOD 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 14