L'OREALDownload PDFPatent Trials and Appeals BoardNov 19, 20202020002366 (P.T.A.B. Nov. 19, 2020) 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. 14/762,043 07/20/2015 Angelina Roudot 085507-536579 1096 30678 7590 11/19/2020 POLSINELLI PC (DC OFFICE) 1000 Louisiana Street Suite 6400 HOUSTON, TX 77002 EXAMINER ROSENTHAL, ANDREW S ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 11/19/2020 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): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANGELINA ROUDOT, ALEXANDRA SUIDA-BATISTA, DIDIER CANDAU, and FLORENCE LEVY ____________ Appeal 2020-002366 Application 14/762,043 Technology Center 1600 ____________ Before DONALD E. ADAMS, DEBORAH KATZ, and RACHEL H. TOWNSEND, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s decision to reject claims 13–16, 23–26, 28–31, 33, and 35–38 (see Appeal Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “L’OREAL” (Appellant’s October 3, 2019 Appeal Brief (Appeal Br.) 2). Appeal 2020-002366 Application 14/762,043 2 STATEMENT OF THE CASE Appellant’s disclosure “relates to a cosmetic or dermatological composition comprising, in a physiologically acceptable support: a) at least one merocyanine compound of formula (1) or (2) . . . and b) at least one oily phase and c) at least one C1-C4 monoalkanol” (Spec.2 1–9). Appellant’s independent claim 13 is reproduced below: 13. A cosmetic or dermatological composition comprising, in a physiologically acceptable support: a) at least one merocyanine compound chosen from those corresponding to the following formula (3) and the E/E- or E/Z- geometrical isomer forms thereof: in which: A is -O- or-NH; R is a C1-C22 alkyl group, a C2-C22 alkenyl group, a C2-C22 alkynyl group, a C3-C22 cycloalkyl group or a C3-C22 cycloalkenyl group, it being possible for the said groups to be interrupted with one or more O, b) at least one oily phase, c) at least one C1-C4 monoalkanol; and d) at least one aqueous phase; and wherein the at least one merocyanine compound is present in a concentration ranging from 0.1 % to 10% by weight relative to the total weight of the composition; the overall oily phase represents from 5% to 95% by weight relative to the total weight of the composition, the at least one C1-C4 monoalkanol is present in a concentration 2 Appellant’s July 20, 2015 Specification. Appeal 2020-002366 Application 14/762,043 3 ranging from 0.2% to 90% by weight relative to the total weight of the composition and the at least one aqueous phase is present in a concentration ranging from 5% to 95% by weight relative to the total weight of the composition. (Appeal Br. 21.) In response to a restriction requirement, the merocyanine compound was limited to Appellant’s compound 25, which as the following formula: ; The oily phase was limited to diisopropyl sebacate, and the monoalkanol was limited to ethanol (see Non-Final Office Act.3 9). We limit the scope of our review to Appellants’ elected invention. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). Claims 13–16, 23–26, 28–31, 33, and 35–38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Winkler4 and Nabeta.5 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 3 Examiner’s June 3, 2016 Non-Final Office Action. 4 Winkler et al., WO 2013/011480 A1, published Jan. 24, 2013. 5 Nabeta, JP 2005002179 A, published Jan. 6, 2005 (as translated in PTO 134275). Appeal 2020-002366 Application 14/762,043 4 FACTUAL FINDINGS (FF) FF 1. Winkler discloses “merocyanine derivatives” and “the use of these compounds for protecting household products from photolytic and oxidative degradation” (Winkler 1:5–9; see Ans. 4). FF 2. Winkler discloses that “‘[h]ousehold products’ in the sense of . . . [its disclosure] are those products which are outside cosmetic personal care applications” (Winkler 12:26–27; see id. at 19:7–20:3 (Winkler’s products “are preferably used in household cleaning and treatment agents,” such as washing and rinsing agents)). FF 3. Appellant’s compound 25 falls within the scope of Winkler’s merocyanine derivatives (see Winkler 7: Table A (compound MC25); see also Ans. 4–5). FF 4. Winkler discloses that compounds within the scope of its disclosure are “incorporated by dissolution in an oil phase or alcoholic or water phase” (Winkler 21:20–22 (emphasis added); see also id. at 11:2–4 (Disclosing compounds within the scope of Winkler’s disclosure in an “ethanol/water 1/1 mixture”); Ans. 4–5). FF 5. Examiner finds that Winkler’s compositions may further comprise adjuvants (Ans. 5 (citing Winkler 17: Table 3)). FF 6. Examiner finds that “Winkler does not teach the elected species of diispropyl sebacate nor does it teach the concentrations required in [Appellant’s] claim 13” (Ans. 5). FF 7. Nabeta discloses an oily washing agent that may comprise “not less than 60 wt%” diisopropyl sebacate (see Nabeta 2, 4; see also id. ¶ 29; see Ans. 5). Appeal 2020-002366 Application 14/762,043 5 FF 8. Nabeta discloses an “aqueous washing agent” selected from “propylene glycol, dipropylene glycol, tripropylene glycol, diethylene glycol, triethylene glycol, a polyethylene glycol having an average molecular weight of 250 to 1200, lactic acid or a salt thereof, and 1,3- butylene glycol” (Nabeta ¶ 30; see id. ¶ 31 (“[A]n aqueous washing agent is dissolved in water or diluted with water”); see Ans. 5). FF 9. Nabeta discloses a method of washing an oily component/product from a washing object, by first washing the object with an oily washing agent, “[o]nce the first washing step has been completed, the second washing step is conducted, whereby both the oily component/product and the oily washing agent can be efficiently washed off” the object with an aqueous washing agent, the third washing step washes with water or warm water in order to remove mainly the aqueous washing agent in the case where the second washing step is conducted and to remove the oily washing agent which includes the oily component/product in the case where the washing step is conducted immediately after the first washing step. (Nabeta ¶¶ 34–37; see generally Ans. 5.) FF 10. Nabeta discloses an alternative washing method, wherein “after the first washing step, a washing step may also be conducted with methanol” (Nabeta ¶ 38; see generally Ans. 5). ANALYSIS Based on the combination of Winkler and Nabeta, Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious “to prepare a composition comprising merocyanine MC25, an oily phase, an aqueous or alcoholic solvent, and an adjuvant based on the teachings of Winkler” (Ans. 5). In support of this conclusion, Appeal 2020-002366 Application 14/762,043 6 Examiner reasons that because “Winkler does not say . . . [an oily phase, an aqueous and alcoholic solvent] cannot be mixed,” a person of ordinary skill in this art would understand Winkler to suggest a composition comprising an oily phase, an aqueous and alcoholic solvent (Ans. 8–9). Examiner further reasons that because “[t]he compositions of Winkler and Nabeta are both cleaning compositions useful as household cleaners or for cleaning devices and surfaces, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose (see Ans. 6 (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)); see also Ans. 9 (“It would have been obvious to prepare a new composition upon combining Winkler with Nabeta that comprises the required merocyanine agent, oily agent, ethanol, and water”). We are not persuaded. “[T]he [E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S. Ct. 1727, 167 L.Ed.2d 705 (2007). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. at 421, 127 S .Ct. 1727. Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Examiner failed to establish an evidentiary basis on this record to support Examiner’s assertion that a person of ordinary skill in this art would Appeal 2020-002366 Application 14/762,043 7 understand Winkler’s disclosure of dissolving compounds, within the scope of its disclosure, in “an oil phase or alcoholic or water phase,” to mean that compound 25 may be dissolved in a composition comprising an oil phase and alcoholic and water phase (see FF 4; cf. Ans. Ans. 8–9). As Appellant explains, “[t]he mere fact that Winkler mentions the possibility of employing an oil phase, alcoholic phase or water phase does not even suggest employing a combination thereof as [Examiner] conclude[s]” (Appeal Br. 10). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Examiner’s reliance on Nabeta also fails to support Examiner’s conclusion of obviousness. Contrary to Examiner’s assertion, Nabeta discloses distinct, not combined, oily and aqueous wash agents (see FF 7–8; see Appeal Br. 11 (“Nabeta teaches that either water or alcohol is to be used, but not together”)). Nabeta discloses a method of using these distinct wash agents in sequential, not combined, wash steps (FF 9–10). Thus, although Winkler and Nabeta disclose compositions that may be characterized as wash reagents, Examiner failed to establish an evidentiary basis on this record that a person of ordinary skill in this art would have reasonably combined the distinct compositions disclosed by Winkler and Nabeta (cf. FF 4, 7–10). See, e.g., Depuy Spine, Inc v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (2009) (citations omitted) (“[T]he ‘predictable result’ discussed in KSR [Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)] refers not only to the expectation that prior art elements are capable of being Appeal 2020-002366 Application 14/762,043 8 physically combined, but also that the combination would have worked for its intended purpose.”). For the foregoing reasons, we find that Examiner failed to establish a prima facie case of obviousness on this record. Therefore, we do not address Appellant’s secondary considerations (see, e.g. Appeal Br. 14). CONCLUSION The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 13–16, 23–26, 28–31, 33, and 35–38 under 35 U.S.C. § 103(a) as unpatentable over the combination of Winkler and Nabeta is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–16, 23– 26, 28–31, 33, 35–38 103(a) Winkler, Nabeta 13–16, 23– 26, 28–31, 33, 35–38 REVERSED Copy with citationCopy as parenthetical citation