Ex Parte Pistorio et al

Patent Trials and Appeals BoardFeb 13, 2019

13651732 - (D) (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/651,732 10/15/2012 61275 7590 02/15/2019 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. 4000-570US 5868 EXAMINER BABSON, NICOLE PLOURDE ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 02/15/2019 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, JIM M. SINGER, and HENRI SAMAIN Appeal2017-006828 Application 13/651,732 Technology Center 1600 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and RYAN H. FLAX, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1,2,3 under 35 U.S.C. Â§ 134(a) involving claims to an aqueous wax dispersion. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants identify the Real Party in Interest as L'OREAL (see App. Br. 2). 2 We have considered and herein refer to the Specification of Oct. 15, 2012 ("Spec."); Non-Final Office Action of Apr. 7, 2016 ("Non-Final Act."); Appeal Brief of Sept. 7, 2016 ("App. Br."); Examiner's Answer of Jan. 27, 2017 ("Ans."); andReplyBriefofMar. 27, 2017 ("Reply Br."). 3 An oral hearing was held on February 7, 2019. Appeal2017-006828 Application 13/651,732 Statement of the Case Background "[W]axes are highly desirable in cosmetics and personal care products ... in order to provide properties such as shine, 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" (Spec. ,r 3). "[T]he formulation of waxes, polymers, resins and oils in various galenic forms such as sprays, foams, emulsions, gels, mousses, pastes and sticks may pose a challenge" (id. ,r 4 ). The Specification teaches "a wax dispersion comprising wax particles ... wherein the wax dispersion can be employed in various galenic forms" (id. ,r 9). The Claims Claims 1-13, 18, 20, 22-30, 32, and 62---65 are on appeal. Claim 1 is representative and is reproduced below: 1. An aqueous dispersion comprising: (a) at least one solid wax particle having a particle size ranging from equal to or greater than 1 micron to about 100 microns and comprising at least one wax having a melting point of greater than 35Â°C and up to about 70Â°C; (b) from about 1 % to about 5% by weight, based on the total weight of the aqueous dispersion, of a surfactant mixture comprising: (i) at least one nonionic surfactant; and (ii) at least one ionic surfactant comprising at least one anionic surfactant chosen from acyl glutamates, alkyl sulfates and their salts, alkyl ether sulfates and their salts, acyl glutamates, alkyl ether carboxylates, and mixtures thereof and present in an amount of from about 5% to about 30% by weight, based on the total weight of the surfactant mixture; and (c) water. 2 Appeal2017-006828 Application 13/651,732 The Issues A. The Examiner rejected claims 1-13, 18, 20, 22-29, 32, and 62---65 under 35 U.S.C. Â§ I03(a) as obvious over Pays '248, 4 MicroEase, 5 Ajinomoto, 6 and Pays '447 7 (Non-Final Act. 3-8). B. The Examiner rejected claims 1-13, 18, 20, 22-30, 32, and 62---65 under 35 U.S.C. Â§ I03(a) as obvious over Pays '248, MicroEase, Ajinomoto, Pays '447, and Pays '656 8 (Non-Final Act. 8-9). C. The Examiner provisionally rejected claims 1-13, 18, 20, 22-30, 32 and 62---65 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-59 and 63---66 of copending Application No. 14/251,373 (Non-Final Act. 14--15). A. 35 US.C. Â§ 103(a) over Pays '248, MicroEase, Ajinomoto, and Pays '447 The Examiner finds Pays '248 teaches cosmetic compositions for coating a substrate ( e.g. paragraph 0002-0005), comprising wax particles having a particle size most preferably ranging from 5 to 10 microns ( e.g. paragraph 0177) and comprising at least one wax having a melting point of greater than or equal to 45Â°C or greater than or equal to 50Â°C ( e.g. paragraph O 151 ); and a surfactant mixture comprising at least one nonionic surfactant and at least one ionic surfactant and no amphoteric surfactant ( e.g. paragraph 0099). 4 Pays et al., US 2006/0130248 Al, published June 22, 2006. 5 Microease Technical Data sheet, Micro Powders, Inc. (2012). 6 Ajinomoto product list, http:www.ajichem.com/en/products/ product-list.aspx 1--4 (accessed Aug. 8, 2013). 7 Pays et al., US 2004/0091447 Al, published May 13, 2004. 8 Pays et al., US 2005/0031656 Al, published Feb. 10, 2005. 3 Appeal2017-006828 Application 13/651,732 (Non-Final Act. 4). The Examiner finds Pays '248 teaches "the total surfactant concentration is most preferably 1.5 to 10% by weight relative to the total weight of the composition ( e.g. paragraph 0065)" (id.). The Examiner finds Pays '248 teaches "compositions comprising water and organic solvents as the carrier" (id. at 5). The Examiner acknowledges that while Pays '248 "describes the combination of an ionic and nonionic surfactant, they do not provide a concentration range or ratio for either individually. Pays '248 do not teach that (b) (ii) is present in an amount of from about 5% to about 30% by weight" (Non-Final Act. 5). The Examiner finds Pays '44 7 teaches cosmetic compositions "comprising wax particles ( e.g. paragraph 0066) and a surfactant mixture comprising at least one nonionic surfactant and at least one ionic surfactant" where "the nonionic surfactant is preferably 0.5-10% by weight of the total composition (e.g. paragraph 0104), and the ionic surfactant is preferably 0.5- 10% by weight of the composition (e.g. paragraph 0121)" (Non-Final Act. 5). The Examiner finds the combination would have been obvious because "one of ordinary skill would have been motivated to seek additional guidance on the appropriate concentrations for each individual surfactant. In addition, one of ordinary skill in the art would have varied and optimized the concentrations through routine experimentation" (Non-Final Act. 6). The issue with respect to the rejection is: Does a preponderance of the evidence of record support the Examiner's conclusion that the prior art renders claim 1 prima facie obvious? 4 Appeal2017-006828 Application 13/651,732 Findings of Fact 1. Pays '248 teaches "cosmetic compositions for making up and/or for the nontherapeutic care of keratin materials, for example the skin, the lips and/or keratin fibers, which are capable of resisting water and of being easily removed" (Pays '248 ,r 2). 2. Pays '248 teaches the "composition according to the invention may be in liquid, pasty, solid, mousse or spray form" (Pays '248 ,r 273). 3. Pays '248 teaches the "composition according to the invention may comprise at least one agent for structuring the oily phase or organic solvent, chosen from waxes" (Pays '248 ,r 146). 4. Pays '248 teaches "the waxes that are suitable for the invention may have a melting point of greater than or equal to 45Â° C., and for example greater than or equal to 55Â° C" (Pays '248 ,r 151). 5. Pays '248 teaches "waxes provided in the form of small particles having a dimension expressed as the mean 'effective' volume diameter D[4.3] of the order of0.5 to 30 micrometres, for example from 1 to 20 micrometres, and for example from 5 to 10 micrometres which are referred to hereinafter as 'micro waxes', may also be used" (Pays '248 ,r 177; cf Pays '44 7 ,r 66). 6. Pays '248 teaches a "surfactant with an HLB of greater than or equal to 6 at 25Â° C. included in the cosmetic composition according to the present invention may be ionic, nonionic or of mixed ionic and nonionic nature" (Pays '248 ,r 70; cf Pays '447 i-f 82). 7. Pays '248 teaches the "nonionic and ionic surfactants with an HLB of greater than or equal to 6 at 25Â° C. described above can also be present in combination" (Pays '248 ,r 99). 5 Appeal2017-006828 Application 13/651,732 8. Pays '248 teaches surfactants "may be present for example in a proportion ... for example from 1.5 to 10% by weight" (Pays '248 ,r 65; cf Pays '447 i-f 80). 9. Pays '248 teaches "the content of water and/or of water-soluble solvent optionally present is less than 50% by weight relative to the total weight of the composition" (Pays '248 ,r 17). 10. Example 2 of Pay '248 teaches "A microdispersion of camauba wax having the following composition is prepared: Cit,naub~: <+,ia:x Polyox;;:tllykm1ted (.30 EOJ glycc1:vI monoi,;tem\stc (fagat S frmn Gohh.chnJ.klt) Ethanol 27.00 g 6.75 g 10 .. 00 g qs 100 .. 00 g The wax and the surfactant are heated to 90Â° C. while homogenizing the mixture with moderate stirring. The water, heated to 90Â° C., is then incorporated while continuing the stirring. The mixture is cooled to ambient temperature and the ethanol is added so as to obtain a microdispersion of wax having a mean particle diameter of approximately 170 nm. Pays '248 ,r,r 306-307. 11. Pays '44 7 teaches "a composition that is useful for producing a heavy makeup result on keratin fibers and especially the eyelashes, which is also known as charging makeup" (Pay's '447 i-f 8). 12. Pays '447 teaches "amount of nonionic surfactant with an HLB of greater than or equal to 8 may range from 0.01 % to 40% by weight ... and better still from 0.5% to 10% by weight, relative to the total weight of the composition" (Pay's '447 i-f 104). 6 Appeal2017-006828 Application 13/651,732 13. Pays '44 7 teaches "the compositions according to the invention may contain from 0.01 % to 30% by weight ... or even from 0.5% to 10% by weight of ionic surfactant, relative to the total weight of the composition" (Pay's '447,I 121). Principles of Law A prima facie case for obviousness "requires a suggestion of all limitations in a claim," CFMT, Inc. v. Yieldup Int 'l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Analysis Appellants contend the rejection relies on "the particle size and melting points for waxes for use as a structuring agent in the oily phase, as well as the surfactants/or use in the composition of Pays '248 and Pays '447. (April 7, 2016 Office Action at p. 4). However, these ranges and surfactants are not directed to an aqueous dispersion of wax particles, as featured in the instant claims" (App. Br. 11 ). Appellants contend "there is no disclosure related to any parameters associated with aqueous microdispersions, and no reason to modify the aqueous microdispersion to achieve any result. Indeed, the Office fails to offer any rationale as to why a skilled artisan would have modified the microdispersion of Example 2" (Reply Br. 7). Appellants contend "[i]nstead, the Office merely argues that the modification could have been made. A finding of obviousness requires more than a conclusory statement that a modification could have been made" (id.). 7 Appeal2017-006828 Application 13/651,732 Appellants point out that "a skilled artisan could not have predicted the properties because the waxes and surfactants of Pays '248 are used in an entirely different medium (i.e., oily phase) and for an entirely different purpose (i.e., as a structuring agent)" (Reply Br. 10). The Examiner finds that As there is no separate section listing ingredients to be used in an aqueous microdispersion (as in Example 2), it would have been obvious to one of ordinary skill in the art that other waxes, amounts, and combinations also recited in "Wax( es)" paragraphs 0148-0179, would also be appropriate in a micro dispersion. (Ans. 4). The Examiner finds that"[ o ]ne of ordinary skill in the art would not have ignored the broader teachings of Pays '248 and looked only to Example 2 for appropriate waxes, surfactants, and particle sizes" (Ans. 5). The Examiner finds "[i]t would have been obvious to select any of the disclosed ingredients for use in a microdispersion, including the elected and claimed wax and surfactants, with no change in their respective functions, and the combination yielding nothing more than predictable results" (Ans. 6). We agree with Appellants and agree with their reasoning. Although there is no dispute that citations to each of the elements in claim 1 may be found in Pays '248 and Pays '447, these references separately identify components for an oily phase as opposed to an aqueous dispersion (FF 3). In Example 2, the only aqueous microdispersion disclosed by Pays '248, the particle diameter is 170 nm, a value significantly different than the 1 to 100 micron range required by claim 1 (see FF 10). And, although we agree with the Examiner that there would have been a reasonable expectation of success in combining the ingredients, we do not see a persuasive "reason that would 8 Appeal2017-006828 Application 13/651,732 have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418. We recognize that combining known elements may often be obvious when there is no change in their function, but the present situation differs because the Examiner has not identified how the aqueous dispersion would be used after the combination was made. That is, in Pays '248, it is unclear whether the aqueous microdispersion of Example 2 is used as a component of a later mascara composition or is simply an experiment that was reported. In either case, there is insufficient evidence to establish that the aqueous microdispersion would have been modified to a mascara or other cosmetic composition using the other components required by claim 1 in the absence of any logic, reason, direction, or other guidance found in Pays '248, Pays '447, or other prior art. We therefore agree with Appellants that the rejected claims have not been shown to be prima facie obvious over the cited prior art. 9 Conclusion of Law A preponderance of the evidence of record does not support the Examiner's conclusion that the prior art renders claim 1 prima facie obvious. 9 We note that we are not persuaded by the unexpected results, because the single example in the Shaw Declaration, dated Jan. 5, 2015, is not reasonably commensurate in scope with the much broader scope of claim 1. Unexpected results must be "commensurate in scope with the degree of protection sought by the claimed subject matter." In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). 9 Appeal2017-006828 Application 13/651,732 B. 35 US.C. Â§ 103(a) over Pays '248, MicroEase, Ajinomoto, Pays '447, and Pays '656 The Examiner added Pays '656 to address the limitation of "heat- activated" as found in claim 30 (see Non-Final Act. 9). Having reversed the obviousness rejection of claim 1 for the reasons given above, we also find that the further combination with Pays '656 does not render dependent claim 30 obvious for the same reasons. C. 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 In summary, we reverse the rejection of claims 1-13, 18, 20, 22-29, 32, and 62---65 under 35 U.S.C. Â§ 103(a) as obvious over Pays '248, MicroEase, Ajinomoto, and Pays '447. We reverse the rejection of claims 1-13, 18, 20, 22-30, 32, and 62---65 under 35 U.S.C. Â§ 103(a) as obvious over Pays '248, MicroEase, Ajinomoto, Pays '447, and Pays '656. We do not reach the provisional rejection of claims 1-13, 18, 20, 22- 30, 32, and 62---65 over claims 1-59 and 63---66 of copending Application No. 14/251,373. REVERSED 10