Ex Parte Wei et alDownload PDFPatent Trial and Appeal BoardMar 2, 201713497439 (P.T.A.B. Mar. 2, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/497,439 03/21/2012 Xiaolan Wei CR112U-US 1022 60723 7590 Avon Products, Inc. 1 Avon Place Suffern, NY 10901 03/06/2017 EXAMINER BABSON, NICOLE PLOURDE ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 03/06/2017 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): PATENT.DEPARTMENT@AVON.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOLAN WEI and PRITHWIRAJ MAITRA1 Appeal 2016-001157 Application 13/497,439 Technology Center 1600 Before ERIC B. GRIMES, TIMOTHY G. MAJORS, 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 a cosmetic composition, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE “Light manipulation . . . has become an important development in makeup used to create the appearance of an even skin tone.” (Spec. 1 5.) “Current makeup systems generally comprise traditionally high refractive pigments (e.g., titanium dioxide (Ti02) and iron oxide colorants) which 1 Appellants identify the Real Party in Interest as Avon Products, Inc. (Appeal Br. 2.) Appeal 2016-001157 Application 13/497,439 manipulate the light, and modify the appearance of the surface to which it is applied.” {Id. at | 6.) However, “a high concentration of TiCk provides high coverage at the expense of a natural look” and “a low concentration of TiCC achieves a cosmetic film that looks more natural (e.g., not chalky) at the expense of sufficient coverage.” {Id.) “[I]t has been suggested that pigment not only diffuse light but also have a certain amount of reflectance to overcome the mask-like appearance of titanium dioxide.” {Id.) Appellants’ invention “relates generally to color cosmetics, and in particular to color cosmetics, such as foundations, that simultaneously provide high coverage with a natural look.” {Id. at 11.) Claims 1—3, 6, and 8—182 are on appeal. Claim 1 is representative and reads as follows: 1. A cosmetic composition comprising: (i) a first pigment component comprising metal oxide particles bonded to an alumina platelet by an alkyl silane, (ii) a second pigment component comprising metal oxide particles, wherein said second pigment component comprises substantially spherical titanium dioxide particles whose surface is modified with akylsilane [sic] groups, and (iii) a crosslinked silicone elastomer gelling agent. (Appeal Br. 9.) 2 Claims 19 and 20 are also pending, but stand withdrawn from consideration. (Appeal Br. 2.) 2 Appeal 2016-001157 Application 13/497,439 The following ground of rejection by the Examiner is before us on review: Claims 1—3, 6, and 8—18 under 35 U.S.C. § 103(a) as unpatentable over Kalla,3 Gutkowski,4 Velvesil FX,5 Shao,6 and Anderson.7 DISCUSSION The Examiner finds that Kalla teaches a cosmetic composition that can be used in a cosmetic foundation that includes at least two color domains, “where at least one of the color domains comprises a mixture of colorants and a carrier.” (Final Action 3—5.) According to the Examiner, Kalla teaches that the colorant may be “formed by incorporation of’ the colorant “into” a carrier and defines “‘incorporation’” as using “any method capable of accomplishing a combined colorant/carrier composition.” {Id. at 4.) The Examiner further finds that besides the colorant and carrier, Kalla teaches the cosmetic composition includes a crosslinked silicone elastomer gelling agent, boron nitride powder, silicones, cyclopentasiloxane, and dimethicone crosspolymers. {Id.) The Examiner also notes that Kalla teaches the colorant “is preferably a titanium dioxide particle” {id. at 3) and that the carrier may be “‘platelet 3 Kalla et al., US 2003/0003064 Al, published Jan. 2, 2003. 4 Gutkowski et al., US 2007/0020208, published Jan. 25, 2007. 5 Velvesil® FX gel-powder, Technical Disclosure, Momentive Performance Materials, Inc., (2008). 6 Yun Shao, Pigment Surface Treatment, KOBO Technical Seminar, (2008). 7 Anderson, EP1136064 A2, published Sept. 26, 2001. 3 Appeal 2016-001157 Application 13/497,439 particles such as . . . alumina. . or it “may be a spherical carrier ... of polymethyl methacrylate” (id. at 4). The Examiner finds that Kalla is “silent as to the shape of the titanium dioxide particles” and “does not teach the first pigment component comprising titanium dioxide particles bonded to an alumina platelet by an alkyl silane,” “or that the second pigment component comprises spherical particles modified with alkylsilane groups” or that the crosslinked silicone elastomer is Velvesil FX. (Id. at 4—5.) According to the Examiner, however, “[tjhese deficiencies are made up for by the teachings of Gutkowski et al., Velvesil FX brochure, Shao, and Anderson.” (Id. at 5.) The Examiner relies on Gutkowski for concluding that it would have been obvious to bind the “preferred” titanium dioxide pigment to the alumina platelet carrier. (Id. at 6—7.) The Examiner finds that Gutkowski teaches pigments such as titanium dioxide attached to platelet alumina for cosmetics where the pigment is adhered to the alumina with triethoxycaprylylsilane. (Id. at 5.) The Examiner explains that Gutkowski teaches adhering the pigment to platelet alumina results in a “more homogeneous [product] than those produced from a dry blend and that [such] modified colorants . . . tend not to segregate, for example during shipping, and can be applied more evenly.” (Id. at 5.) The Examiner further finds that it would have been obvious to one of ordinary skill in the art to modify the surface of the titanium oxide with triethoxycaprylylsilane in light of Shao. (Id. at 6.) In particular, the Examiner notes that Shao teaches such surface modification improves “agglomeration, wettability and dispersability, dispersion and formulation 4 Appeal 2016-001157 Application 13/497,439 stability, pressability (in pressed powders), and chemical stability of the metal oxides.” {Id.) The Examiner relies on Anderson to conclude that it would have been obvious to include spherical titanium dioxide particles as the second pigment in the Kalla composition. (Id. at 7.) In particular, the Examiner finds that Anderson teaches the use of spherical particles in cosmetic compositions provide an aesthetically pleasing composition but that the particles do not reflect light well because they do not fit well in wrinkles. (Id. at 6.) The Examiner explains, however, that Anderson teaches providing spherical particles in a composition that also contains a crosslinked silicone elastomer that smooths out lines and wrinkles, and such a composition “result[s] in an aesthetically pleasing cosmetic composition that improves and enhances the overall appearance of the skin.” (Id.) Thus, the Examiner reasons, because Kalla includes a crosslinked silicone elastomer, having the second pigment be a spherical particle shape would improve the aesthetic of the product. (Id. at 7.) The Examiner relies on the Velvesil FX brochure to conclude it would have been obvious to use Velvesil FX as the crosslinked silicone elastomer because it showed a synergistic effect in reducing particle agglomeration and appearance of smoother coverage on the skin as compared to adding the ingredients that make up the elastomer individually. (Id. at 5.) We agree with the Examiner that, since Kalla teaches carriers can be solids or substrates and the carrier “carries” the colorant (Kalla 134), one skilled in the art would have reasonably understood Kalla to teach that the colorant can be “on the outside and not within [the carrier], as stated by the 5 Appeal 2016-001157 Application 13/497,439 Appellants].” (Ans. 4; see Appeal Br. 3 (citing Kalla 134 and stating: “Those of ordinary skill in the art would understand from Kalla’s description that the colorant is incorporated ‘within ’ a carrier.”).) However, we disagree with the Examiner’s conclusion that, in light of the teachings of Anderson, it would have been obvious to include spherical titanium oxide particles in a Kalla composition that includes a crosslinked silicone elastomer and metal oxide particles bonded to an alumina platelet carrier. That is because we find Anderson teaches using spherical particles as optical diffusers in combination with a crosslinked silicone elastomer gelling agent instead of using irregular shaped particles as optical diffusers. (See, e.g., Anderson || 5, 22.) In particular, Anderson teaches that by using irregularly shaped optical diffuser particles in a range of particle sizes, a composition that reflects light evenly and provides a smooth finished skin surface and thus “gives a visible benefit to the consumer” is achieved. (Anderson || 3 4.) Anderson then teaches that the desired optical diffusion effects of the irregularly shaped particles can be achieved with the added benefit of a silky and smooth cosmetic product when spherical optical diffusing compounds are combined with crosslinked silicone elastomer. (Anderson || 11—12, 17—18.) According to Anderson, ordinarily spherical optical diffusing compounds had been avoided as compared to irregularly shaped optical diffuser particles, even though spherical particles provided a much more favorable aesthetic to a cosmetic composition, because those spherical particles could not reflect light as evenly due to their inability to be distributed in the peaks and valleys of wrinkles in contrast to irregularly shaped optical diffuser particles. (Anderson || 5—6.) Anderson teaches that 6 Appeal 2016-001157 Application 13/497,439 the crosslinked silicone elastomer “smoothes out lines and wrinkles,” and the spherical particles are then deposited over this smoother surface “resulting in both an optical diffusion and ‘ball-bearing’ effect,” which is a “smoother feel. . .as compared to that of non-uniform particles.” (Anderson 1111 and 18.) The initial burden of presenting a prima facie case of obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On these facts, we conclude the Examiner failed to provide the evidence necessary to support a prima facie case of obviousness. If the Examiner fails to establish a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). SUMMARY For the reasons discussed, we reverse the Examiner’s rejection of claims 1—3, 6, and 8—18 under 35 U.S.C. § 103 as unpatentable over as unpatentable over Kalla, Gutkowski, Velvesil FX, Shao, and Anderson. REVERSED 7 Copy with citationCopy as parenthetical citation