L'OREALDownload PDFPatent Trials and Appeals BoardMay 18, 20212020006575 (P.T.A.B. May. 18, 2021) 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. 14/915,517 02/29/2016 Marie DEVIE 467898US99PCT 4928 22850 7590 05/18/2021 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER SOROUSH, ALI ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 05/18/2021 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARIE DEVIE1 ____________ Appeal 2020-006575 Application 14/915,517 Technology Center 1600 ____________ Before RICHARD M. LEBOVITZ, JOHN G. NEW, and RACHEL H. TOWNSEND, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies L’Oréal of Paris, France as the real party-in-interest. App. Br. 1. Appeal 2020-006575 Application 14/915,517 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–6, 8–17, 21, and 24–29. Specifically, claims 1–6, 8–12, 16, and 24–28 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Dawson et al. (WO 2007/090554 A1, August 16, 2007) (“Dawson”), Lorant (US 5,952,395, September 14, 1999) (“Lorant”) and Snyder et al. (US 2003/0165454 A1, September 4, 2003) (“Snyder”).2 Claims 13–15 and 29 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Dawson, Lorant, Snyder, Knappe et al. (US 2012/0201773 A1, August 9, 2012) (“Knappe”), alone or in further combination with Wilcox et al. (US 5,863,544, January 26, 1999) (“Wilcox”). A hearing was held in this appeal on April 8, 2021. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 2 The Examiner also rejected claims 17 and 21, however no grounds for rejection are specified at the summary on page 3 of the Final Office Action of July 9, 2019 (although they are subsequently mentioned at page 7 as standing rejected under Dawson, Lorant and Snyder). Appellant does not address these claims in the Appeal Brief or Reply Brief, nor does the Examiner in the Answer. Because claims 17 and 21 depend, directly or indirectly, from claim 1, we include them in our analysis and conclusion with respect to claim 1. Appeal 2020-006575 Application 14/915,517 3 NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to a cosmetic composition comprising, in a physiologically acceptable aqueous medium, a polysaccharide modified with hydrophobic chains; a polymer comprising sulfonic groups; a (meth)acrylic acid polymer, which is preferably crosslinked, and/or an oxyethylenated silicone surfactant. Spec. Abstr. REPRESENTATIVE CLAIM Independent claim 1 is representative of the claims on appeal and recites: Claim 1 A composition, comprising, in a physiologically acceptable aqueous medium: i) at least one polymer comprising a sulfonic group; ii) at least one polysaccharide modified with hydrophobic chains; iii) at least one (meth)acrylic acid polymer, silicone surfactant which is an oxyethylenated polydimethylsiloxane, or both, and at least one compound selected from the group consisting of pigments, nacres, fillers, and mixtures thereof, wherein the at least one polysaccharide modified with hydrophobic chains is present in the composition in an amount of from 0.1 % to 5% by weight relative to the total weight of the composition, and wherein the composition does not phase separate after two months at 25°C. App. Br. 11. Appeal 2020-006575 Application 14/915,517 4 ISSUES AND ANALYSIS We agree with, or adopt, the Examiner’s findings, reasoning, and conclusion that the claims are obvious over the combined cited prior art. We address below the arguments raised by Appellant. Issue 1 Appellant argues that the Examiner erred because the combined cited prior art does not provide a person of ordinary skill in the art with sufficient guidance to arrive at the invention with a reasonable expectation of success. App. Br. 6–7. Analysis The Examiner finds that Dawson teaches a shampoo formulation comprising 0.5% inulin lauryl carbamate (a modified polysaccharide (emulsifier)), 0.4% Carbopol 980 (a (meth)acrylic acid polymer), and water. Final Act. 4 (citing Dawson 20, 25 Table). The Examiner also finds that Dawson teaches that its composition is intended for application to hair (i.e., keratin material). Id. (citing Dawson 26). The Examiner notes that Dawson neither teaches nor suggests that the shampoo composition comprises at least one polymer comprising a sulfonic group. Final Act. 4. The Examiner finds that Dawson also fails to teach or suggest that the composition comprises a pigment. Id. The Examiner finds that Lorant teaches emulsions used for cosmetic and dermatological applications that are stabilized with a cross-linked polymer of 2-acrylamide-2-methylpropane sulfonic acid. Final Act. 4 (citing Appeal 2020-006575 Application 14/915,517 5 Dawson Title). The Examiner finds that a preferred composition of Dawson comprising 1% cross-linked polymer of 2-acrylamide-2-methylpropane sulfonic acid is stable and homogeneous (no phase separation) after 2 months at 25oC and 45oC. Id. (citing Lorant col. 11, ll. 40–43). The Examiner finds that Snyder teaches a hair conditioning composition comprising visible particles to impart an aesthetic benefit to an otherwise transparent composition and that may be pigments. Final Act. 4 (citing Snyder ¶¶ 238, 244). The Examiner finds that the compositions are stable and may contain a wide variety of active substances and adjuvants without disturbing their stability. Id. (citing Snyder Abstr.). The Examiner finds that Snyder teaches that its compositions can further comprise at least one additive such as fillers and coloring agents. Id. (citing Snyder claims 1, 35). The Examiner concludes that it would have been prima facie obvious to one of ordinary skill in the art to add 1% cross-linked polymer of 2- acrylamide-2-methylpropane sulfonic acid to the compositions of Dawson and with a reasonable expectation of success. Final Act. 4. The Examiner reasons that a skilled artisan would have been motivated to do so in order to improve the stability of the composition, as expressly taught by Lorant. Id. The Examiner further concludes that it would have been prima facie obvious to one of ordinary skill in the art to add a pigment to the combined composition of Dawson and Lorant with a reasonable expectation of success, and that the skilled artisan would have been motivated to do so in order to provide the composition with an aesthetic benefit. Id. Appellant disputes the Examiner’s finding that Snyder cures the deficiency that caused the Examiner to withdraw the rejection of the claims Appeal 2020-006575 Application 14/915,517 6 over Dawson, Lorant, and Wilcox, and Knappe. App. Br. 5–6. Specifically, Appellant points to the Examiner’s reliance upon paragraphs [0238] and [0244] of Snyder, which Appellant contends teach that “visible particles” may optionally be added to Snyder's compositions. Id. at 6 (citing Snyder ¶ 238). Appellant contends that, if pigments were to be chosen in accordance with Snyder’s disclosure in paragraph [0244], they would need to be “encompassed” within the visible particles. Id. Therefore, argues Appellant, and contrary to the Examiner’s conclusion that it would have been obvious to “add a pigment to the composition of Dawson et al. and Lorant and have a reasonable expectation of success,” a person of ordinary skill in the art would, at most, have been motivated to optionally add visible particles which may optionally have encompassed pigments chosen from a laundry list of other materials. Id. Appellant contends that such an optional inclusion of particles possibly encompassing pigments would not have provided reasonable guidance to one of ordinary skill in the art to obtain the present invention, including all of the required constituents in pulverulent-containing compositions with a reasonable expectation of producing compositions having the required stability. App. Br. 6–7. To the contrary, Appellant asserts, a skilled artisan would not have had any reasonable expectation of success in adding ordinary pigments, based on the disclosure in Snyder. Id. at 6. We are not persuaded by Appellant’s argument. Appellant and Examiner agree that the combination of Dawson, Lorant, Snyder, and Knappe does not teach the limitation of independent claims 1 and 29 reciting “at least one compound selected from the group consisting of pigments, Appeal 2020-006575 Application 14/915,517 7 nacres, fillers, and mixtures thereof.” See Final Act. 4, App. Br. 5–6. Appellant points to the Specification’s disclosure that “the presence of pulverulent materials such as pigments or fillers, and/or the presence of active agents, has the drawback of destabilizing the compositions, in particular emulsions, and/or of significantly modifying the viscosity of the phase which comprises them,” and asserts that “the problem which the present invention helps address is instability of compositions containing pulverulent materials.” App. Br. 4 (quoting Spec. 2)(emphasis omitted). Snyder is directed to hair conditioning compositions comprising: (1) a thickening agent selected from the group consisting of an acrylic acid/alkyl acrylate copolymer, an acrylates copolymer, and a crosslinked polymer; (2) a frizz control agent selected from the group consisting of PEG-modified glycerides, PEG-modified glyceryl fatty acid esters, dimethicone copolyols, and mixtures thereof; and (3) an aqueous carrier. Snyder Abstr. The Examiner particularly relies upon Snyder as teaching the optional addition of a “visible particle,” which is defined as: [A] particle which can be distinctively detected as an individual particle by the naked eye when comprised in the present composition, and which is stable in the present composition. The visible particle can be of any size, shape, or color, according to the desired characteristic of the product, so long as it is distinctively detected as an individual particle by the naked eye. Id. at ¶ 238 (emphasis added). Snyder further teaches that: The visible particle herein may encompass, contain, or be filled with an encompassed material. Such encompassed material can be water soluble or water insoluble, and comprise components such as: vitamins, amino acids, proteins and protein derivatives, Appeal 2020-006575 Application 14/915,517 8 herbal extracts, pigments, dyes, antimicrobial agents, chelating agents, UV absorbers, optical brighteners, silicone compounds, perfumes, humectants which are generally water soluble, additional conditioning agents which are generally water insoluble, and mixtures thereof. Id. at ¶ 244 (emphasis added). Snyder thus expressly teaches, inter alia, the limitation of independent claims 1 and 29 reciting “at least one compound selected from the group consisting of pigments, nacres, fillers, and mixtures thereof.” We agree with Appellant that the employment of pigments as “visible particles,” as taught by Snyder, is an optional constituent of its hair conditioning compositions. Nevertheless, the fact that a constituent is taught as being optional does not preclude us from considering it in our obviousness analysis. See Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that “all disclosures of the prior art, including unpreferred embodiments, must be considered”) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)); see also In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (holding that “a reference is not limited to the disclosure of specific working examples”)). Even though the pigments may be optional, Snyder expressly teaches that they may be included in hair products. The Examiner finds that Lorant teaches emulsions used for cosmetic and dermatological applications that are stabilized with a cross-linked polymer of 2-acrylamide-2-methylpropane sulfonic acid. See Final Act. 4. Lorant teaches: The inventor has surprisingly discovered a new class of thickening or gelling polymers which make it possible to produce emulsions obtained by phase inversion, which are stable in all Appeal 2020-006575 Application 14/915,517 9 the viscosity ranges, for example ranging from 10 to 30,000 cP, with a wide variety of possible emulsifiers and regardless of the oils employed. This new class makes it possible to solve all the problems which are specific to this type of emulsion and which have been referred to above. The inventor has also discovered that this new class of thickening or gelling polymers makes it possible to produce ultrafine emulsions which can contain a wide range of cosmetic active substances and adjuvants without disturbing their stability. Lorant col. 2, ll. 36–48 (emphasis added). Lorant also teaches the addition of other constituents: A composition according to claim 1, wherein said composition additionally contains at least one additive selected from aqueous or lipophilic conventional gelling agents or thickeners, hydrophilic or lipophilic active substances, preserving agents, antioxidants, perfumes, hydrating agents, emollients, sequestrants, surfactants, polymers, alkalifying or acidifying agents, fillers, agents against free radicals, ceramides, sunscreens, insect repellents, slimming agents, coloring agents, bactericides and agents against dandruff. Id. at claim 35 (emphasis added). In short, Lorant teaches emulsions stabilized with a cross-linked polymer of 2-acrylamide-2-methylpropane sulfonic acid, as recited in the claims. Moreover, Lorant teaches that its stabilized emulsions remains stable when additional constituents are added, including coloring agents. We agree with the Examiner that a person of ordinary skill in the art would have had a reasonable expectation of success in adding “at least one compound selected from the group consisting of pigments, nacres, fillers, and mixtures thereof,” as recited in the independent claims and as taught by Snyder, to the stabilized emulsion of the combined teachings of Dawson and Appeal 2020-006575 Application 14/915,517 10 Lorant, particularly given the latter reference’s teachings concerning the stability of the emulsion when stabilized by a cross-linked polymer of 2- acrylamide-2-methylpropane sulfonic acid. Furthermore, we conclude that a skilled artisan would have been motivated to add pigment, in the form of visible particles, to the stabilized emulsion of Dawson and Lorant so as to obtain the “highly suitable aesthetic benefit” taught by Snyder. See Snyder ¶ 238. We are consequently not persuaded by Appellant’s argument. Issue 2 Appellant argues the Examiner erred by misinterpreting the teachings of Lorant. App. Br. 7. Analysis Appellant points to Lorant’s teaching that: In particular, the acrylate/acrylic acid copolymers such as the product SALCARE SC 97 from Allied Colloids destabilize the emulsions obtained by phase inversion and acrylamide/2- acrylamido-2-methylpropanesulphonic acid copolymers such as the SEPIGEL products from Seppic give rise to heterogeneous emulsions and creaming phenomena. Cellulose derivatives and polyacrylics of the CARBOPOL type from Goodrich impart a sticky feel and do not improve the emulsions obtained by phase inversion which present stability problems. App. Br. 7 (quoting Lorant col. 2, ll. 26–35). Appellant argues that, in the Advisory Action of January 6, 2020 (the “Advisory Action”), the Examiner omitted the last four words of Lorant’s paragraph (i.e., “which present stability problems”) to allow for the conclusion that “it is clear that Lorant does not believe that Carbopol destabilizes the emulsion….” Id. at 7–8 Appeal 2020-006575 Application 14/915,517 11 (quoting Adv. Act. 2). According to Appellant, this interpretation and re- writing of different sentences within the same paragraph of Lorant (a paragraph allegedly detailing why typical copolymers are unacceptable to Lorant) is error on the Examiner’s part. Id. at 8. Appellant argues that, contrary to the Examiner’s findings, Lorant does not indicate that Carbopol polymers are neutral, or that they merely fail to improve compositions, but rather teaches that Carbopol polymers result in unacceptable compositions. App. Br. 8. Appellant points out that Lorant teaches, in column 1, that fluid ultrafine emulsions can be made, and then discusses gelling of such fluid emulsions. Id. (citing Lorant col. 2, ll. 15–35 (including the passage quoted supra)). Appellant asserts that Lorant teaches that although, theoretically, any gelling agent should be usable in ultrafine emulsions to improve stability of these very fluid emulsions, such theoretical beliefs are not actually observed. App. Br. 9. Appellant points to Lorant’s teaching that, “[u]nfortunately, the gelling agents commonly employed in cosmetics are, for the most part, poor in performance and some are incompatible with this type of emulsion.” Id. (quoting Lorant col. 2, ll. 20–22). Appellant therefore contends that Lorant does not state that gelling agents like Carbopol are acceptable, non-preferred embodiments, but rather, expressly teaches that gelling agents such as Carbopol are poor in performance in, and/or incompatible with, Lorant’s fluid compositions. Id. Appellant argues that teaching would lead a person of ordinary skill in the art away from believing that Carbopol polymers are useful in Lorant’s compositions, and from wanting to combine Lorant’s AMPS polymers with Carbopol polymers. Id. Appeal 2020-006575 Application 14/915,517 12 Appellant notes that, during prosecution, the Examiner focused on Example 2 of Dawson. App. Br. 9. However, Appellant contends, a skilled artisan, seeking to combine the teachings of Dawson and Lorant, would have been motivated to substitute Lorant’s AMPs polymer for Carbopol in Dawson’s Example 2. Id. Appellant reasons that a person of ordinary skill in the art would have been motivated to substitute AMPs polymer for Carbopol, thereby leading away from the present invention. Id. The Examiner responds that Lorant, in the passage quoted supra, distinguishes Carbopol from the other polymers by indicating that the inferiority of these polymers are that they “impart a sticky feel and do not improve the emulsions.” Ans. 5 (citing Lorant col. 2, ll. 33–34). The Examiner therefore finds that Lorant does not believe that Carbopol destabilizes the emulsion nor renders it heterogeneous, which is the opposite of the type of emulsion Lorant seeks to create. Id. Were that the case, the Examiner finds, Lorant would have used the same language to describe Carbopol that it used to describe Salcare and/or Sepigel polymers. Id. The Examiner finds that Lorant does not teach that the addition of, or combination with, Carbopol would render the composition destabilized or heterogeneous, but only that it would not help improve the emulsion. Id. The Examiner thus finds that Lorant teaches that the stability of an emulsion that comprises Carbopol would be independent of the polymer but only dependent upon the AMPS polymer. Id. The Examiner concludes that a skilled artisan would read this citation and understand that Carbopol is a non-preferred polymer in such compositions, but would not read it as a teaching away as would be the case with Salcare and/or Sepigel. Id. To recapitulate, the disputed passage of Lorant states: Appeal 2020-006575 Application 14/915,517 13 In particular, the acrylate/acrylic acid copolymers such as the product SALCARE SC 97 from Allied Colloids destabilize the emulsions obtained by phase inversion and acrylamide/2- acrylamido-2-methylpropanesulphonic acid copolymers such as the SEPIGEL products from Seppic give rise to heterogeneous emulsions and creaming phenomena. Cellulose derivatives and polyacrylics of the CARBOPOL type from Goodrich impart a sticky feel and do not improve the emulsions obtained by phase inversion which present stability problems. Lorant col. 2, ll. 26–35. We agree with both Appellant and the Examiner that this passage teaches that acrylate/acrylic acid copolymers, such as SALCARE SC 97, destabilize emulsions obtained by phase inversion, and that acrylamide/2-acrylamido-2-methylpropanesulphonic acid copolymers such as SEPIGEL give rise to heterogeneous emulsions and creaming phenomena. Lorant is directed to “ultrafine oil-in-water emulsion[s]” that “may be obtained according to an emulsifying technique using phase inversion.” Lorant Abstr. These emulsions “are stable in all viscosity ranges with a large variety of possible emulsifiers and whatever oils are employed … [and] can contain a large variety of cosmetic active substances and adjuvants without disturbing their stability.” Id. Consequently, compounds such as SALCARE and SEPIGEL which give rise to destabilized or heterogeneous emulsions are therefore undesirable in this instance. With respect to cellulose derivatives and polyacrylics such as Carbopol, Lorant teaches that these “impart a sticky feel and do not improve the emulsions obtained by phase inversion which present stability problems.” Lorant col. 2, ll. 31–35. Lorant thus teaches that Carbopol imparts a (presumably) unpleasant “sticky” feel and does not improve the Appeal 2020-006575 Application 14/915,517 14 properties of emulsions obtained by phase inversion, which possess stability problems. Id. Lorant thus disfavors the use of Carbopol in its compositions because it (1) may be unpleasant (“sticky”), and (2) does not improve the properties of emulsions produced by phase inversion. Dawson is directed to “[a] hair treatment composition comprising: a) a hydrophobic conditioning oil; and b) a hydrophobic polysaccharide comprising fructose units.” Dawson Abstr. Dawson also teaches “a method of manufacture of a hair treatment composition described above in which the hydrophobic conditioning oil and the hydrophobic polysaccharide are pre- mixed to form an aqueous emulsion, prior to addition to the composition.” Id. at 2. Further, Dawson teaches that “[t]he silicones may be added to the composition as a fluid and subsequently emulsified, but preferably are added as preformed emulsions. More preferably, the silicone emulsions additionally comprise the hydrophobic polysaccharide, such as Inutec SP1 (inulin lauryl carbamate), prior to addition to the remainder of the product.” Dawson 3, 7. Importantly, Dawson does not teach that its emulsion- containing compositions are synthesized via a phase inversion process. Dawson expressly teaches the inclusion of Carbopol as a suspending agent in its compositions. Specifically, Dawson teaches: Optionally, the compositions according to the invention further comprise from 0.1 to 10 percent by weight, preferably from 0.6% to 6%, of a suspending agent. Suitable suspending agents are selected from polyacrylic acids…. Polyacrylic acid is available commercially as Carbopol 420, Carbopol 488 or Carbopol 493. Polymers of acrylic acid cross-linked with a polyfunctional agent may also be used, they are available commercially as Carbopol 910, Carbopol 934, Carbopol 940, Carbopol 941 and Carbopol 980. Appeal 2020-006575 Application 14/915,517 15 Dawson 19–20. Furthermore, Dawson expressly includes Carbopol 980 as an acrylic acid polymer in its exemplary embodiments. See Dawson Tables at 22, 25, 27). The composition of Appellant’s claim 1 comprises, in relevant part: (1) at least one polymer comprising a sulfonic group; (2) at least one polysaccharide modified with hydrophobic chains; (3) at least one (meth)acrylic acid polymer, silicone surfactant which is an oxyethylenated polydimethylsiloxane, or both. The Examiner finds that Dawson teaches constituents (2) (inulin lauryl carbamate) and (3) (Carbopol 980) and that Lorant teaches the use of (1) (i.e., poly(2-acrylamido-2- methylpropanesulphonic acid) polymer), which acts as a stabilizing agent. See Final Act. 4. The Examiner reasons that a person of skill in the art would have been motivated to combine the teachings of Dawson and Lorant, so as to improve the stability of the compositions taught by Dawson. Id. We are not persuaded by Appellant’s argument that Lorant teaches away from combining the stabilizing agent poly(2-acrylamido-2- methylpropanesulphonic acid) polymer with the constituents of the compositions taught by Dawson. We agree with Appellant that Lorant discourages the use of Carbopol in its own compositions, not least because Carbopol does not improve the instability-prone issues observed in emulsions produced by phase inversion methods. However, Dawson does not teach that phase inversion methods are employed in the synthesis of its compositions, nor has Appellant adduced any evidence that the compositions of Dawson inherently require such methods. Therefore, although Lorant may teach away from the use of Carbopol in emulsions produced by phase Appeal 2020-006575 Application 14/915,517 16 inversion, there is no evidence that the use of Carbopol in the compositions of Dawson (as Dawson expressly teaches) would suffer any such problems, because there is no evidence to suggest that Dawson’s emulsions are produced via phase inversion. To summarize, although Lorant may teach away from using Carbopol in its own phase-inverted emulsions, there is no evidence before us that this teaching away is relevant to stabilizing the non-phase-inverted emulsions taught by Dawson, or to the compositions taught therein. We are therefore not persuaded by Appellant’s arguments, and we affirm the Examiner’s rejection of the claims. CONCLUSION The rejection of claims 1–6, 8–17, 21, and 24–29 as unpatentable under 35 U.S.C. § 103 is affirmed. AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–12, 16, 17, 21, 24–28 103 Dawson, Lorant, Snyder 1–6, 8–12, 16, 17, 21, 24–28 13–15, 29 103 Dawson, Lorant, Snyder, Knappe, Wilcox 13–15, 29 Overall Outcome 1–6, 8–17, 21, 24–29 Copy with citationCopy as parenthetical citation