Ex Parte Wei et al

Patent Trial and Appeal Board

Mar 2, 2017

13497439 (P.T.A.B. Mar. 2, 2017)

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.)
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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.
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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
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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
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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
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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
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