L'OREAL

Patent Trials and Appeals Board

Nov 19, 2020

2020002366 (P.T.A.B. Nov. 19, 2020)

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.
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Application 14/762,043

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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).
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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).
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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,
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Application 14/762,043

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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
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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
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Application 14/762,043

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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