Ex Parte Samain et al

Patent Trial and Appeal BoardAug 9, 2018

13378569 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/378,569 07/18/2012 92687 7590 08/13/2018 JONES ROBB, PLLC (w/Nony & Partners) 1420 Spring Hill Road Suite 325 McLean, VA 22102 FIRST NAMED INVENTOR Henri Samain 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. 1003.0014-00000 9848 EXAMINER PROSSER, ALISSA J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 08/13/2018 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): nony@nony.fr docketing@jonesrobb.com susanne.jones@jonesrobb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRI SAMAIN, CHRISTOPHE DUMOUSSEAUX, and CAROLE LE MERRER Appeal2016-008447 Application 13/378,569 1 Technology Center 1600 Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to a method of applying makeup to human keratinous fibers, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. STATEMENT OF THE CASE Two component make up systems are known, where the first composition includes a film-forming polymer, and the second composition includes solid particles. (Spec. 1.) Appellants contend that "[t]here exists a 1 Appellants identify the Real Party in Interest as L'Oreal S.A. (Appeal Br. 2.) Appeal2016-008447 Application 13/378,569 need to create, in [an] easy manner, attractive visual effects on keratinous fibers, in particular the eyelashes, that are both long lasting and easy to remove." (Spec. 2.) Appellants' invention is directed to achieving that result using a two-component system, where the first component is a composition that forms a discontinuous deposit on the fibers. (Id.) Claims 1-13, 16, 18, 22-25, 27, and 28 are on appeal. 2 Claim 1 is representative and reads as follows: 1. A method of applying makeup to human keratinous fibers, said method comprising: applying on the fibers an adhesive composition comprising adhesive particles of average size greater than 1 Âµm, wherein the applied adhesive composition forms a discontinuous deposit on the fibers; and after applying the adhesive composition, applying on the fibers a loose powder composition. (Appeal Br. 24.) The claims were subject to an election of species of the adhesive and examination proceeded with the adhesive being poly(2-ethylhexyl acrylate). (Non-Final Action 2. 3) In cases such as these, where the Examiner has required Applicants to elect a species for examination, the issue on appeal is the patentability of the single elected species. As such, our discussion is limited to that claim scope and we take no position respecting the 2 Claims 17 and 19-21 are also pending but have been withdrawn from consideration. 3 The Non-Final Action, dated April 15, 2015, was entered after Applicants filed a request for continued examination under 37 CPR 1.114. (Non-Final Action 2.) 2 Appeal2016-008447 Application 13/378,569 patentability of the broader generic claims, or the remaining, non-elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). The following grounds of rejection by the Examiner are before us on review: Claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27 under 35 U.S.C. Â§ I03(a) as unpatentable over Ramin, 4 Maitra, 5 and API Microspheres. 6 Claims 1-13, 16, 18, 22-25, 27, and 28 under 35 U.S.C. Â§ I03(a) as unpatentable over Ramin, Maitra, API Microspheres, and Simon. 7 DISCUSSION Claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27 The Examiner finds that Ramin teaches a method of making up keratin fibers, such as eyelashes, that includes applying a first coat of a cosmetically acceptable medium and at least one film-forming polymer and then, prior to that first coat drying, applying a second coat of solid particles having a substantially spherical or ovoid shape and that are insoluble in the cosmetically acceptable medium. (Non-Final Action 4.) These coatings correspond, respectively, to the adhesive composition and the loose powder composition of claim 1. The Examiner explains that Ramin teaches many film-forming polymers maybe used, including acrylic polymers, such as 2- ethylhexyl methacrylate, and that the polymer can be dissolved or dispersed 4 Ramin et al., US 6,367,484 Bl, issued Apr. 9, 2002. 5 Maitra et al., US 2007/0140991 Al, published June 21, 2007. 6 Advanced Polymers International, Microspheres, httn://www.geltac.com/microsnheres/ last visited July 16, 2018. 7 Simon et al., US 2005/0118122 Al, published June 2, 2005. 3 Appeal2016-008447 Application 13/378,569 in the form of particles. (Non-Final Action 4--5.) The Examiner also notes that solid particles of the second coat have an average size ranging from 2.5 microns to 5 mm and that the second coat can be applied in a discontinuous manner. (Non-Final Action 5.) The Examiner recognizes that Ramin does not teach that the first coating is an adhesive composition which forms a discontinuous deposit on the keratinous fibers. (Non-Final Action 5.) However, the Examiner contends that this deficiency is rendered obvious by Maitra and API Microspheres. (Non-Final Action 6-8; Ans. 11.) The Examiner finds that Maitra teaches methods for forming a film on keratin fibers such as eyelashes, where the film is long-lasting, flexible, transfer-resistant, water-proof, and comfortable to wear. (Non-Final Action 6.) The film is created by the application of a pressure sensitive adhesive polymer, alone or in combination with film formers, tackifiers or plasticizers "to deliver and hold coloring agents on the surface resulting in films that are uniformly colored, glossy, non-tacky and flexible." (Non-Final Action 7.) The Examiner notes that Maitra teaches preferred pressure sensitive adhesives are acrylic ones, such as a poly(2-ethylhexyl acrylate), which is the same polymer as the elected species. (Non-Final Action 7.) One such polymer, disclosed by Maitra, is Gel-Tac, which is a 40% solids aqueous dispersion of 15 micron tacky acrylic microspheres. (Non-Final Action 7; Ans. 11.) The Examiner notes that API Microspheres discloses that Gel-Tac microspheres "have a unique physical structure in which large particles limit physical contact with the surface to form a discontinuous film that results in low peel, removability, and stable adhesive tack." (Non-Final Action 7 .) 4 Appeal2016-008447 Application 13/378,569 The Examiner explains that it would have been obvious to one having ordinary skill in the art to have used the pressure sensitive adhesive of Maitra in the first composition of Ramin "in order to obtain a film which is long-lasting, flexible, transfer-resistant, water-proof, and comfortable to the wearer (Maitra, abstract)." (Non-Final Action 7-8.) The Examiner contends that one of ordinary skill in the art would have had a reasonable expectation of success in so using poly(2-ethylhexyl acrylate) "because Ramin teach[ es] film-forming polymers can be acrylic polymers of 2-ethylhexyl methacrylate ( column 3, lines 63-65; column 4, lines 19-20) that can be dissolved or dispersed in the form of particles (column 6, lines 15-22)." (Non-Final Action 8; Ans. 11.) According to the Examiner, in using the poly(2- ethylhexyl acrylate) taught by Maitra as the polymer in Ramin, one would inherently obtain a discontinuous film as evidenced by API "Microspheres." (Non-Final Action 7; Ans. 11 ("A necessary (inherent) consequence of the application of the 15 micron micro spheres is the formation of a discontinuous deposit.").) We disagree with the Examiner's conclusion that Ramin, Maitra, and API "Microspheres" in combination render the claimed invention obvious. In particular, we agree with Appellants that Ramin is concerned with producing a homogeneous and continuous film with its first coat that includes the at least one film forming polymer (Appeal Br. 9-11; Reply Br. 3--4; Ramin 1: 14--24). Ramin indicates that the aim of the invention is "to provide a make-up composition for obtaining a relief make-up" which is "different from that of the continuous and homogeneous films currently obtained with the products available on the market" and "having good staying power over time." (Ramin 1 :29-38.) According to Ramin, the 5 Appeal2016-008447 Application 13/378,569 difference from its invention and the prior art continuous homogeneous films, however, is a sculptural relief that is generated by the deposit of a coat of solid particles over the first continuous film layer, (see generally id. at 2: 1--43, 2:63-3: 16). There is not any disclosure to suggest that the first film layer of Ramin should be a discontinuous film. Indeed, to the contrary, as Ramin discloses, if one of the two compositions for the two layer system comprises a film-forming polymer in the form of particles dispersed in a medium, (which could result in discontinuous film), an additional film forming agent such as "coalescers" or plasticizers can be added "[t]o improve the film-forming properties" of that composition. (Id. 6:64--7:9.) Likewise, Maitra is also concerned with forming continuous films on a biological surface (Maitra ,r 27), and doing so using pressure sensitive adhesives so as to deliver and hold coloring agents on that surface (id. ,r 26). It is evident from reading the entirety of Maitra's disclosure that its aim is to produce a continuous film, not a discontinuous one as claimed. For instance, Maitra discloses that it is important that the compositions used to form the films on the biological surface have a minimum film forming temperature (MFFT) which is the "temperature at which a dispersion of pressure sensitive adhesive colloidal particles will coalesce when placed on a substrate as a thin film." (Maitra ,r 36.) Maitra explains that "coalescence" "refers to the disappearance of the boundary between two particles in contact or between one of these and a bulk phase followed by changes of shape leading to a reduction of the total surface area." (Id. ,r 36.) Thus, the goal described in Maitra is to produce continuous film. Maitra explains that the composition will have a glass transition temperature (Tg) that is within Â±30 QC or between about 5 and about 70 QC. 6 Appeal2016-008447 Application 13/378,569 (Id. ,r,r 27, 28, 37, 38.) Such a Tg is important because it facilitates the production of a continuous film, in contrast to the claims which require "a discontinuous deposit on the fibers. Maitra explains that it is believed that films with such a T g result in films that "exhibit superior particle coalescence, resulting in superior mechanical performance in comparison to films of the prior art" thereby providing "cosmetic compositions which obtain heretofore unachievable levels of transfer resistance, flexibility, and comfort." (Id. ,r,r 35, 36.) Maitra further explains that the MFFT will be a Tg that is above the pressure sensitive adhesive polymers, thereby resulting insolvent evaporation and coalescence occurring simultaneously, which "gives rise to particle deformation, resulting in a strong stable linkage of particles, thus yielding films that are mechanically tough." (Id. at ,r 37.) Maitra explains that if the MFFT is below the T g of the pressure sensitive adhesive polymer, then particle coalescence is minimal at best, "which leads to little or no particle deformation," resulting in reduced intermolecular interactions and thus the mechanical properties such as strength are reduced. (Id.) Maitra explains, though, that such pressure sensitive adhesive polymers can still be used, but that they should be combined with (a) plasticizers so as to lower the T g (id. ,r,r 53, 55), (b) tackifiers to "lend the adhesive composition sufficient viscous flow properties" (id. ,r,r 56, 66), and/ or ( c) film formers to adjust for the achievement of the necessary MFFT (id. ,r,r 60-61 ("the secondary film former can be added with the proviso that the pressure sensitive adhesive requires glass transition temperature adjustment to meet the criteria described herein")). In short, we agree with Appellants (Appeal Br. 14) that like Ramin, Maitra is concerned with a film forming composition that forms a 7 Appeal2016-008447 Application 13/378,569 continuous film. Consequently, although Maitra may disclose the use of Gel-Tac as a pressure sensitive adhesive for use in a composition for forming a film on keratin fibers such as eyelashes, it does so in the context of a continuous film, i.e., that such a polymer be used in a composition that achieves an MFFT to result in a continuous film. It is not apparent from Maitra that Gel-Tac alone would result in a composition that could form a continuous film or whether it would need to be combined with plasticizers or film-formers, and if it would need to be combined with other agents to result in a continuous film, what those should be. In fact, from API Microspheres, it would appear that Gel-Tac by itself would form a discontinuous film. (API Microspheres 1.) In light of the foregoing, we do not agree with the Examiner that it would have been obvious to one of ordinary skill in the art to modify the film forming polymer of the first film forming composition of Ramin, which is the continuous film structure onto which a second layer is applied (the second layer resulting in a relief structure), by substituting therein, as the film-forming polymer, the pressure sensitive adhesive poly(2- ethylhexyl acrylate) ofMaitra. For the reasons discussed, the Examiner's evidence is lacking in establishing that one of ordinary skill in the art would have had a reasonable expectation of success, based on the teachings of Maitra and API Microspheres, in achieving the continuous film desired by Ramin for its first film-forming composition if one were to substitute in Gel- Tac as the film-forming polymer. Indeed, that API Microspheres teaches that Gel-Tac would result in a discontinuous film, would suggest that one of ordinary skill in the art would not have had a reasonable expectation of success in the Examiner's proposed combination. 8 Appeal2016-008447 Application 13/378,569 We thus find that the record does not support the Examiner's conclusion that a person of ordinary skill in the art would have been motivated to modify the references in the Examiner's proposed manner to arrive at the claimed invention. Thus, for the reasons discussed, we reverse the Examiner's rejection of claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27 under 35 U.S.C. Â§ 103(a) as unpatentable over Ramin, Maitra, and API Microspheres. Claims 1-13, 16, 18, 22-25, 27, and 28 In rejecting claims 1-13, 16, 18, 22-25, 27, and 28 as being obvious over Ramin, Maitra, API Microspheres, and Simon, the Examiner relies on the erroneous obvious substitution conclusion concerning Ramin and Maitra discussed above. (See Non-Final Action 7.) The Examiner does not rely on Simon to cure that defect. Consequently, for the reasons discussed above, we reverse the Examiner's rejection of claims 1-13, 16, 18, 22-25, 27, and 28 under 35 U.S.C. Â§ 103(a) as unpatentable over Ramin, Maitra, API Microspheres, and Simon. SUMMARY We reverse the rejection of claims 1-5, 8, 9, 12, 13, 16, 23-25, and 27 under 35 U.S.C. Â§ 103(a) as unpatentable over Ramin, Maitra, and API Microspheres, but our reversal is limited to the claims directed to the elected species. We also reverse the rejection of claims 1-13, 16, 18, 22-25, 27, and 28 under 35 U.S.C. Â§ 103(a) as unpatentable over Ramin, Maitra, API Microspheres, and Simon, but again our reversal is limited to the claims directed to the elected species. 9 Appeal2016-008447 Application 13/378,569 REVERSED 10