Ex Parte Pistorio et al

Patent Trial and Appeal Board

Mar 15, 2019

13651768 (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/651,768 10/15/2012
61275 7590 03/19/2019
The Marbury Law Group, PLLC
11800 Sunrise Valley Drive
15THFLOOR
Reston, VA 20191
FIRST NAMED INVENTOR
Bradford Joseph Pistorio
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.
4000-577US 3425
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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):
ptonotices@marburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADFORD JOSEPH PISTORIO,
JEAN-THIERRY SIMONNET, and JIM M. SINGER
Appeal2017-008890
Application 13/651,768 1
Technology Center 1600
Before DONALD E. ADAMS, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
aqueous dispersion, which have been rejected as obvious and provisionally
rejected for obviousness-type double patenting. Oral argument was heard on
March 5, 2019. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
The Specification states: "waxes are highly desirable in cosmetics and
personal care products ... in order to provide properties such as shine,
1 Appellants identify the real party in interest as L'OREAL. (Appeal Br.
2.)
Appeal2017-008890
Application 13/651,768
smoothness, and slipperiness to various types of surfaces, as well as a
protective coating against external factors such as exposure to water or
moisture and physical rubbing[, ... ] and structure and texture to the
products." (Spec. ,r 3.) "[C]onsumers continuously seek new[ ]products for
hair and skin with improved performance and therefore, challenges still exist
today in terms of finding new and improved ingredients and incorporating
these ingredients into formulations that can be available in various galenic
forms such as emulsions, lotions, sprays, foams, gels, mousses, pastes and
sticks. (Id. ,r 5.) "[W]axes may not be easily formulated in a spray or foam
product, particularly at a concentration that will be sufficient to impart the
desirable attributes obtained from a wax ingredient." (Id. ,r 6) "[V]arious
technologies directed towards the use of waxes, polymers, resins and oils
have been developed." (Id. ,r 7.) "Nevertheless, the preparation of wax and
oil particle dispersions and formulating with these dispersions in various
galenic forms may still pose challenges." (Id. ,r 9.) "[I]t is an object of the
present invention to provide a material comprising a wax, that is, a wax
dispersion comprising wax particles having certain physical properties,
wherein the wax dispersion can be employed in various galenic forms."
(Id.)
Claims 6, 9, 25-29, 31, and 63-67 are on appeal. 2 Claim 31 is
representative and reads as follows:
31. An aqueous dispersion comprising:
(a) at least one solid wax particle having a particle size
ranging from about 5 microns to about 25 microns and
comprising at least one wax chosen from beeswax,
2 Claims 13, 14, 30, 32, 37, 38, 41, 45, 46, and 57----62 are also pending, but
stand withdrawn from consideration. (Appeal Br. 4.)
2
Appeal2017-008890
Application 13/651,768
hydrogenated myristyl olive esters, hydrogenated stearyl olive
esters, VP/eicosene copolymer, ditrimethyloylpropane
tetrastearate, and C30-45 alkyldimethylsilyl
propylsilsesquioxane, and wherein the at least one wax is
present in an amount of from about 20% to about 40% by
weight, based on the total weight of the aqueous dispersion;
(b) from about 1. 5 % to about 3. 0 % by weight of a
surfactant mixture comprising:
(iii) at least one nonionic; and
(iv) from about 5% to about 20% by weight, based
on the total weight of the surfactant mixture, of at least
one ionic surfactant chosen from at least one anionic;
wherein the surfactant mixture is free of
amphoteric surfactants;
( c) from about 1 % to about 10% by weight, based on the
total weight of the aqueous dispersion, of at least one volatile
solvent comprising isododecane.
( d) water; and
( e) optionally, at least one additional ingredient chosen
from a wax having a melting point of 35°C or less, oils,
emulsifying polymers, sunscreen agents, pigments/ dyes,
silicas, talc, clays, and perfumes.
(Appeal Br. 21-22.)
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Appeal2017-008890
Application 13/651,768
The following grounds of rejection by the Examiner are before us on
review:
Claims 6, 9, 25-28, 31, and 63----67 under 35 U.S.C. § I03(a) as
unpatentable over Pays '248, 3 Ajinomoto product list, 4 MicroEase Technical
Data Sheet, 5 and Pays '44 7. 6
Claim 29 under 35 U.S.C. § I03(a) as unpatentable over Pays '248,
Ajinomoto product list, MicroEase Technical Data Sheet, Pays '447, and
Pays '656. 7
Claims 6, 9, 25-29, 31, and 63----67 on the ground ofnonstatutory
obviousness-type double patenting as being unpatentable over claims 1-59
and 63----66 of copending Application No. 14/251,373.
DISCUSSION
Obviousness
The claims at issue here are similar to those in Application No.
13/651,732, which was the subject of Appeal No. 2017-006828 8• The
claims under review in both this and the prior appeal are directed to an
3 Pays et al., US 2006/0130248 Al, published June 22, 2006.
4 Ajinomoto, Cosmetic Amino Acids: The Essence of Personal Care,
product list available at
http://www.ajichem.com/en/products/productlist.aspx, (last visited Aug. 8,
2013).
5 Micro Powders, Inc., MicroEase Technical Data Sheet, March 2012,
available athttp://www.mpipersonalcare.com/Files/TDS/MICROEASE.pdf,
(last visited Aug. 8, 2013).
6 Pays et al., US 2004/0091447 Al, published May 13, 2004.
7 Pays et al., US 2005/0031656 Al, published Feb. 10, 2005.
8 Decision on Appeal, entered February 15, 2019, reversing the obviousness
rejections of record and declining to address the provisional obviousness-
type double patenting rejection over Application No. 14/251,373.
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Appeal2017-008890
Application 13/651,768
aqueous dispersion comprising at least one solid wax particle having a size
in a particular micron range (1-100 microns in the '828 Appeal, 5-25
microns, here) and a surfactant mixture in a particular weight percentage
based on the total weight of the dispersion. The claimed surfactant mixture
comprises at least one nonionic surfactant and at least one ionic surfactant
that is an anionic surfactant, wherein the at least one anionic surfactant is
present in a particular weight range based on the total weight of the
surfactant mixture (5-30% in the '828 Appeal, and 5-20%, here). In the
present claim 3 1, the recited at least one wax must be present in an amount
of from about 20-40% by weight of the total weight of the aqueous
dispersion. The prior art relied upon by the Examiner to reject the claims
here is the same as that relied on the '828 Appeal. The Panel reversed the
Examiner's obviousness rejection in the '828 Appeal and we do so here
based on the same reasoning.
In particular, as Appellants accurately explain, Pays '248 teaches the
use of the claimed waxes within the particle size range claimed as
structuring agents in an oily phase for a composition that is waterproof or
water resistant. (Appeal Br. 11, 12; Reply Br. 4--5; Pays '248 ,r,r 146, 177.)
As Appellants also accurately note, while Pays '248 teaches one aqueous
wax dispersion, the wax particle size in that dispersion is an order of
magnitude smaller (170 nm) than the lower endpoint of the claimed range
(about 5 microns). (Appeal Br. 12; See Pays '248, Example 2.) As
Appellants further accurately point out, in the disclosed aqueous wax
dispersion, there is not a mixture of ionic and nonionic surfactants as
claimed, much less of the anionic surfactant in the amount claimed. (Id.)
This is in contrast to the disclosure of the oily phase components in Pays
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Appeal2017-008890
Application 13/651,768
'248, which describes that the surfactants may be present from 1.5 to 10%
by weight (Pays '248 ,r 65) and nonionic and ionic surfactants can be present
in combination (Pays '248 ,r 99).
Appellants explain, and we agree, the teachings in Pays '248
concerning waxes used as structuring agents in an oily phase are not
interchangeable with the lone disclosure in Pays '248 of the aqueous
dispersion of a wax. (See Reply Br. 5---6.) Indeed, Pays '248 appears to
teach the aqueous microdispersion of a wax as a discrete composition
separate from the teachings of the oily phase constituents for the reasons we
note below.
The composition described by Pays '248 is a waterproof or water
resistant cosmetic composition for making up and caring for the skin,
eyelashes, etc., that is easy to remove "irrespective of the type of makeup
remover." (See, e.g., Pays '248 ,r,r 2, 13, 14, 308.) Pays '248's Example 2
discloses that the aqueous dispersion of the camauba wax is further mixed
with an oily phase that includes additional waxes as structuring agents and a
polyelectrolyte, which composition as a whole provides for a waterproof or
water resistant composition that is easily removed. (See Pays '248 Example
2 ,r,r 306-308). Pays '248 makes clear that the polyelectrolyte is needed to
give the waterproof/water resistant composition better removability. (See,
e.g., Pays '248 ,r 56.) The "aqueous dispersion" mentioned once in Pays
'248 in Example 2 is not what the broader disclosure of the constituents of
the waterproof/water resistant composition is directed at, not least of all
because that microdispersion does not contain any polyelectrolyte.
Appellants argue that the Examiner does not explain why a skilled
artisan would have had "any reason to apply the teachings of Pays '248
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Appeal2017-008890
Application 13/651,768
directed to the components (i.e., structuring agents for the oily phase) for use
in the waterproof or water resistant cosmetic composition to the lone
disclosure of an aqueous microdispersion in Example 2." (Reply Br. 6.) We
agree. As Appellants further point out, and we agree, "there is no disclosure
related to any parameters associated with aqueous microdispersions [ in Pays
'248], and no reason to modify the aqueous microdispersion to achieve any
result." (Reply Br. 7; see also Appeal Br. 12 ("Pays '248 does not provide
any range for or any benefit associated with particle size, surfactant mixture,
surfactant amount, or type of wax particles for the microdispersion. ").)
In short, we conclude that there is insufficient evidence of record to
establish that one of ordinary skill in the art would have modified the
aqueous microdispersion in Example 2 of Pays '248 to achieve a larger
particle size of the camauba wax, much less to select one of the claimed
waxes, which are listed for use in an oily phase, with a much larger particle
diameter for such use than disclosed in Example 2 's aqueous
microdispersion. Moreover, there is insufficient evidence of record to
establish that one of ordinary skill in the art would have found it obvious to
modify the Example 2 aqueous microdispersion to include both an anionic
and a non-ionic surfactant mixture with the anionic surfactant being present
in a certain weight percentage based on the teachings in Pays '248 of the use
of a combination of surfactants in an oily phase that includes a wax-which
has a larger particle size than in the aqueous microdispersion.
Consequently, we do not sustain the Examiner's rejection of claim 31
as being obvious over Pays '248, Ajinomoto product list, MicroEase
Technical Data Sheet, and Pays '447. Claims 6, 9, 25-28, and 63----67,
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Appeal2017-008890
Application 13/651,768
ultimately depend from claim 31. Thus, the rejection of those claims is also
not sustained.
Regarding the separate rejection of claim 29, which also ultimately
depends from claim 31, we note that the Examiner added Pays '656 to
address the limitation that the composition is "heat-activated" as found in
claim 29. Pays '656 does not remedy the deficiency with respect to the
Examiner's obviousness rejection concerning claim 31. Thus, we do not
affirm the Examiner's obviousness rejection of claim 29 for the same
reasons discussed above as to claim 31.
Provisional Obviousness-Type Double Patenting
We decline to reach this undisputed provisional rejection. See In re Moncla, 95
USPQ2d 1884, 1885 (BP AI 2010) (precedential). The rejection is provisional and
Application No. 14/251,373 remains copending and not allowed; accordingly, the
issues are not ripe for decision.
SUMMARY
We reverse the rejection of claims 6, 9, 25-28, 31, and 63-67 under
35 U.S.C. § 103(a) as obvious over Pays '248, Ajinomoto product list,
MicroEase Technical Data Sheet, and Pays '447.
We reverse the rejection of claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Pays '248, Ajinomoto product list, MicroEase Technical
Data Sheet, Pays '447, and Pays '656.
We do not reach the provisional rejection of claims 6, 9, 25-29, 31,
and 63----67 over claims 1-59 and 63----66 of copending Application No.
14/251,373.
REVERSED
8