L'OREAL

Patent Trials and Appeals Board

Oct 8, 2021

2021000706 (P.T.A.B. Oct. 8, 2021)

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.
15/522,819 04/28/2017 Pascal GIUSTINIANI 085507-566046 8666
30678 7590 10/08/2021
POLSINELLI PC
(DC OFFICE)
PO Box 140310
Kansas City, MO 64114-0310
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/08/2021 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PASCAL GIUSTINIANI
____________

Appeal 2021-000706
Application 15/522,819
Technology Center 1600
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, 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 1–17, 24, and 25 (Final Act.2 3; cf. Appeal Br.
§§ III, VI (Appellant’s recitation of the claim status does not correspond to
Appellant’s recitation of the claims rejected on this record)).3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 May 20, 2020, Appeal Brief (Appeal Br.) 2).
2 Examiner’s August 21, 2019, Final Office Action.
3 Pending claims 18–23 stand withdrawn from consideration (Final Act. 3).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to a process for preparing a product
containing polymeric compounds comprising an alkoxysilane group and to
the use of such a product in a cosmetic composition for treating keratin
materials, in particular the nails and the hair” (Spec.4 1). Appellant’s claims
1, 12, and 24 are reproduced below:
1. A process for preparing a polymer comprising alkoxysilane
groups which can be obtained by polycondensation,
comprising, in a first step, the reaction between:
(i) a diisocyanate of formula (I): OCN-Z-NCO (I)
in which Z denotes a divalent hydrocarbon-based radical
containing from 4 to 20 carbon atoms;
and
(ii) a difunctional compound of formula (II): H-T-A-T-H (II)
in which:
T denotes a heteroatom chosen from O and S or an –N(R)-
radical, R being H or a C1-C4 alkyl radical,
A denotes a linear or branched, divalent hydrocarbon-based
C2-C100 radical, optionally interrupted with one or more non-
adjacent heteroatoms chosen from O and S, or an –N(R’)-
group in which R' denotes a hydrogen atom or a C1-C4 alkyl
radical;
in order to form a prepolymer (P) containing at least one
isocyanate function;
followed by a second step in which the prepolymer (P) obtained
is reacted with a first alkoxysilane of formula (III) and a second
alkoxysilane of formula (IV):
(R1O)(R2)(R3)Si-CH2-(NH-L1)p-X1-H (III)
in which

4 Appellant’s April 28, 2017 Specification.
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p = 0 or 1;
X1 denotes –NRa-, S or O, Ra denoting H or a saturated or
unsaturated C1-C8 (cyclo)alkyl radical, or a C6-C10 aryl radical;
R1 denotes a C1-C6 alkyl radical;
R2 and R3, which may be identical or different are chosen from:
- a C1-C6 alkoxy radical;
- a linear or branched C1-C6 alkyl radical;
L1 denotes a linear or branched, saturated divalent hydrocarbon-
based C1-C20 radical;
(R’1O)(R’2)(R’3)Si-CH(R4)-CH(R5)-(L2)q-X2-H (IV)
in which:
q = 0 or 1;
X2 denotes –NRb- or S or O or –NHCO-NRc-, Rb denoting H
or a saturated or unsaturated C1-C8 (cyclo)alkyl radical, or a C6-
C10 aryl radical; Rc denoting a saturated C1-C4 alkyl radical;
R’1 denotes a C1-C6 alkyl radical;
R’2 and R’3, which may be identical or different, are chosen
from:
- a C1-C6 alkoxy radical;
- a linear or branched C1-C6 alkyl radical;
R4 denotes H or a C1-C4 alkyl radical;
R5 denotes H or a C1-C4 alkyl radical optionally substituted
with an –NH2 group;
L2 denotes a linear or branched, saturated divalent hydrocarbon-
based C1-C20 radical, optionally interrupted with an –NH-
group, optionally substituted with an NH2 group;
it being possible for the first and second alkoxysilanes (III) and
(IV) to be added either simultaneously or sequentially by first
introducing the first alkoxysiloxane (III) then the second
alkoxysilane (IV), or by first introducing the second
alkoxysilane (IV) then the first alkoxysilane (III).
(Appeal Br. 24–25.)
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12. The process according to claim 1, wherein the first step is
carried out in the presence of a catalyst.
(Id. at 30.)
24. The process according to claim 12, wherein the catalyst is
catalyst is a tin-based organic catalyst.
(Id. at 31.)

Grounds of rejection before this Panel for review:
I. Claims 1–12, 14, 16, 17, 24, and 25 stand rejected under 35
U.S.C. § 103 as unpatentable over the combination of Huang,5
Sigma,6 Momentive,7 Smith,8 and Jiang.9
II. Claims 1–17, 24, and 25 stand rejected under 35 U.S.C. § 103
as unpatentable over the combination of Huang, Sigma,
Momentive, Smith, Jiang, and Kollbach.10

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

5 Huang et al., US 2015/0166719 A1, published June 18, 2015.
6 Sigma-Aldrich, Poly(propylene glycol, Poly(ethylene glycol) and
Isophorone diisocyanate, Sigma-Aldrich online catalog, available at
https://www.sigmaaldrich.com/catalog, last accessed Jan. 17–18, 2019.
7 Momentive, Silquest® and Other Momentive Silanes: A selection and
handling Guide (July 2015).
8 Smith et al., How to Prevent the Loss of Surface Functionality Derived
from Aminosilanes, 24 Langmuir. 12405–12409 (2008).
9 Jiang et al., Alkoxysilane Functionalized Polyurethane/Polysiloxane
Copolymers: Synthesis and the Effect of End-Capping Agent, 59 Polymer
Bulletin 53–63 (2007).
10 Kollbach et al., US 2005/0020706 A1, published Jan. 27, 2005.
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5
FACTUAL FINDINGS (FF)
FF 1. Huang discloses that “[k]nown urethane reaction-forming catalysts
include, for example, dialkyltin compounds” (Huang ¶ 5).
FF 2. Huang discloses:
[E]nvironmental regulatory agencies and directives have
increased, or are expected to increase, restrictions on the use of
tin-containing compounds in formulated products. For
example, while formulations with greater than 0.5 weight
percent dibutyltin presently require labeling as toxic with
reproductive 1B classification, dibutyltin-containing
formulations are proposed to be completely phased out in
consumer applications over the next 4-6 years.
(Huang ¶ 7.)
FF 3. Huang discloses:
Moisture-curable formulations are well known, particularly
those which are based on silyl-functionalized polymers. The
silyl-functionalized polymers may be prepared by a number of
methods. One example is the reaction of polymers having end
groups containing active hydrogen with isocyanates,
particularly isocyanatoalkylalkoxysilanes. Another example is
the reaction of isocyanate-terminated polyurethane polymers
with aminosilanes or mercaptosilanes. The reaction is often
carried out with urethane reaction forming catalysts, i.e.,
catalysts that promote the isocyanate reaction with active
hydrogen-containing compounds.
(Huang ¶ 4.)
FF 4. Huang relates “to silyl-functionalized polymers exhibiting increased
stability toward atmospheric moisture” and “[m]ore particularly, to a process
for the preparation of silylated polyurethane polymers which avoids the use
of tin catalysts in favor of alternative reduced toxicity catalysts” (Huang
¶ 2).
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FF 5. Examiner finds that Huang discloses Appellant’s claimed method,
but for “an alkoxysilane of formula (III), it being possible for the first and
second alkoxysilanes (III) and (IV) to be added either simultaneously or
sequentially,” “alkoxysilane (III) is N-(6-aminohexyl) aminomethyl
triethoxysilane,” “alkoxysilane (IV) is (3-aminopropyl) triethoxysilane,” “5
to 95 mol% of alkoxysilane (Ill) relative to the total moles of alkoxysilanes
(Ill) and (IV),” “u molar equivalents of alkoxysilane (III), v molar
equivalents of alkoxysilane (IV), with u + v = 2 and neither u nor v are
zero,” or “50 to 70 mol% of alkoxysilane (Ill) relative to the total moles of
alkoxysilanes (Ill) and (IV)” (Final Act. 5–9 (citing Huang, Title, Abstr.,
Tables 1 and 2, ¶¶ 22–30, 33–34, 51–54, 58–60, 98–101, 137, 142)).
FF 6. Examiner relies on Sigma to disclose the structure of poly(propylene
glycol), poly(ethylene glycol), and isophorone diisocyanate (Final Act. 6–7).
FF 7. Examiner relies on Momentive to disclose the structure of “Silquest
A-1110 (3-[(]trimethoxysilyl)-1-promanamine)” (Final Act. 7–8).
FF 8. Smith discloses that “[a]minopropylalkoxysilanes are widely used as
coupling agents due to their bifunctional nature” (Smith 1 (endnotes
omitted); see Final Act. 9).
FF 9. Smith discloses that “3-aminopropyltriethoxysilane (APTES) and 3-
aminopropyldimethylethoxysilane (APDMES) are two commonly used
aminosilanes” (Smith 1; see id. (Smith discloses that “APTES is more
commonly used because of its lower cost”); id. at 5 (Smith discloses that “N-
(6-aminohexyl)aminomethyltriethoxysilane (AHAMTES), [is] a
commercially available and economical silane); see also Final Act. 9 (citing
Smith 1–2 and 5–6) (Examiner finds that “APTES is commonly used
because of its lower cost” and “[t]he hydrolytic stability of aminosilane
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monolayers derived from AHAMTES indicates hydrolytic detachment can
be minimized by controlling the length of the alkyl linker in amino
silanes”)).
FF 10. Jiang discloses the preparation of “moisture curable
polyurethane/polysiloxane (PUSR) copolymers with different end-capping
agents” and “found that the PUSR copolymer with mixed alkoxysilanes as
end-capping agents showed better compromised properties than that with
single alkoxysilane” (Jiang 53; see id. at 63 (Jiang discloses that “[t]he
component of end-capping agent greatly influenced the properties of PUSR
materials”); see also Final Act. 9–10 (citing Jiang 53–54 and 56) (Examiner
finds that Jiang discloses “3-aminopropyl triethoxysilane (APS) and aniline-
methyl-triethoxysilane (AMS) were used as end-capping agents” and the
molar ratios and sequential addition of reactants)).
FF 11. Examiner finds that the combination of Huang, Sigma, Momentive,
Smith, and Jiang fails to suggest a “first step . . . carried out in an aprotic
solvent” or a “step of solvent exchange by elimination of the aprotic
solvent” and relies on Kollbach to make up for this deficiency (Final Act.
12–13).
ANALYSIS
Rejection I:
Based on the combination of Huang, Sigma, Momentive, Smith, and
Jiang, Examiner concludes that, before the effective filing date of
Appellant’s claimed invention, it would have been prima facie obvious “to
modify the amino-functional silane silylating agent of Huang to further
comprise the aminosilanes taught by Smith inclusive of 3-aminopropyl
triethoxysilane and N-(6-aminohexyl) aminomethyl triethoxysilane because
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simple substitution of functionally equivalent elements yields predictable
results, absent evidence to the contrary” and that “[o]ne would be motivated
to modify the amino-functional silane silylating agent of Huang to further
comprise APTES because of its lower cost as taught by Smith and one
would be motivated to modify the amino-functional silane silylating agent of
Huang to further comprise AHAMTES because its increased hydrolytic
stability in comparison to APTES or/and to APTMES as taught by Smith”
(Final Act. 10–11). In addition, Examiner concludes that it would have been
prima facie obvious, before the effective filing date of Appellant’s claimed
invention,
to modify the preparation of the silylated polyurethane polymer
of Huang in view of Smith to comprise a two-step process as
taught by Jiang wherein a first alkoxysilane such as 3-
aminopropyl triethoxysilane (APTES) is reacted with the
polyurethane prepolymer after which a second alkoxysilane
such as AHAMTES is reacted because Smith teach moisture
curable polyurethanes with different-end capping agents
showed better compromised properties than that with a single
alkoxysilane [and utilize] routine experimentation to determine
the optimal molar ratio for different end-capping agents
inclusive of APTES and AHAMTES in order to optimize the
hydrolytic stability of the resultant . . . polyurethane.
(Final Act. 11.)

Claim 1:
We find no limitation in Appellant’s claim 1 that requires Appellant’s
“polymers [to be] . . . curable with moisture” (see Appeal Br. 14 (Appellant
contends that “the polymers prepared according to the present invention are
curable with moisture”)). We also find no limitation in Appellant’s claim 1
that excludes curing catalysts. To the contrary, Appellant’s claim 12,
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reproduced above, which depends from Appellant’s claim 1, expressly
requires Appellant’s process to be performed in the presence of catalysts.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that “although the claims do not explicitly recite the property and
result that the polymers obtained according to the present invention is
moisture curable, this result must be considered when evaluating
patentability of the present invention,” which is not commensurate in scope
with Appellant’s claimed invention (Appeal Br. 16; see also id. at 16–17
(Appellant contends that because its polymers “are curable with moisture;
whereas, Huang is concerned with polymers that are stable in the presence of
moisture, modifying Huang as urged in the Office Action would tend to
defeat the purposes of Huang and render Huang unsatisfactory or inoperative
for its intended purposes and is therefore non-obvious”); Reply Br. 2–5
(Appellant contends that Huang’s polymers are not moisture curable)). For
the same reasons, we are not persuaded by Appellant’s contentions regarding
inherency (see id. at 16–18; see also Reply Br. 8–9 (Discussing inherency)).
Huang relates to “to silyl-functionalized polymers exhibiting
increased stability toward atmospheric moisture” and “[m]ore particularly, to
a process for the preparation of silylated polyurethane polymers which
avoids the use of tin catalysts in favor of alternative reduced toxicity
catalysts” (FF 4). Huang discloses that “silyl-functionalized polymers may
be prepared by a number of methods. One example is the reaction of
polymers having end groups containing active hydrogen with isocyanates,
particularly isocyanatoalkylalkoxysilanes. Another example is the reaction
of isocyanate-terminated polyurethane polymers with aminosilanes or
mercaptosilanes” (FF 3). Smith discloses that APTES is a commonly used
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animosilane and that the aminosilane AHAMTES is a commercially
available and economical silane (FF 9). In addition Jiang discloses the use
of mixtures of alkoxysilane for the production of polyurethane/polysiloxane
copolymers (FF 10). Thus, we are not persuaded by Appellant’s
unsupported contention that “Smith concern[s] the use of the aminosilanes
as common coupling agents used to functionalize silica surfaces, [which] is
not at all similar to or suggestive of the reaction in Huang or according to the
present invention” (see Appeal Br. 14).
For the foregoing reasons, we are also not persuaded by Appellant’s
contention that the combination of Huang, Sigma, Momentive, Smith, and
Jiang fails to make obvious Appellant’s claimed invention because Jiang
discusses “aniline-methyl-triethoxysilane and 3-aminopropyl
triethoxysilane” and does not discuss “other” combinations of well-known
alkoxysilanes (see Appeal Br. 15 cf. FF 1–10). KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”). For the same reason, we are not persuaded
by Appellant’s contention that when viewed in isolation, Huang does not
make obvious the use of two different alkoxysilanes, which fails to account
for the contribution of Sigma, Momentive, Smith, and Jiang to the rejection
of record (see Reply Br. 5; cf. FF 1–10). To be clear, Appellant failed to
establish an evidentiary basis on this record to support a conclusion that
those of ordinary skill in this art would not have found it prima facie
obvious, before the effective filing date of Appellant’s claimed invention, to
utilize known alkoxysilanes in the method suggested by the combination of
Huang, Sigma, Momentive, Smith, and Jiang (cf. FF 1–10).
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We find no evidence on this record to support a conclusion that a
catalyst cannot be used in a method of producing a polymer even if the
polymer is moisture curable. Therefore, we are not persuaded by
Appellant’s contention that “Jiang is not properly combinable with Huang,”
because “the polyurethant/polysiloxane copolymers of Jiang are moisture
curable” (Appeal Br. 15).
We acknowledge Appellant’s disclosure that “[t]here is a need to
provide compounds or compositions that have both stability properties
before application thereof to keratin materials, and good reactivity” and
“[t]here is also a need to have compounds which make it possible to obtain,
after application thereof to keratin materials, a uniform and smooth deposit”
(Spec. 1). We, however, do not find, and Appellant has not identified, an
evidentiary basis in Appellant’s Specification, or otherwise, to support a
contention that Appellant’s claimed invention achieves an unexpected result.
See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements . . . [do] not suffice.”); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”).
Appellant also failed to direct our attention to a comparison of
Appellant’s claimed invention to the closest prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”). Therefore, we are not
persuaded by Appellant’s contentions regarding unexpected results on this
record.
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Claim 24:
Huang discloses that the tin-based catalysts, i.e dialkyltin compounds,
are “[k]nown urethane reaction-forming catalysts” (FF 1). Huang discloses,
however, that regulatory agencies are “placing restrictions on the use of tin-
containing compounds in formulated products,” wherein “dibutyltin-
containing formulations are proposed to be completely phased out in
consumer applications over the next 4-6 years” (FF 2 (emphasis added)).
Thus, Huang discloses alternatives to the use of tin-based catalysts (FF 4
(Huang relates “to a process for the preparation of silylated polyurethane
polymers which avoids the use of tin catalysts in favor of alternative reduced
toxicity catalysts”)). Thus, those of ordinary skill in this art would
understand Huang to disclose that although tin-based catalysts may
ultimately “be completely phased out in consumer applications,” Huang
does not discredit, or otherwise teach away from, the use of tin-based
catalysts in non-consumer applications or in consumer applications if they
are not ultimately phased out. In addition, we find no requirement in
Appellant’s claimed invention that limits its method, or the product
produced by the claimed method, to consumer applications.
For the foregoing reasons, we are not persuaded by Appellant’s
contentions regarding tin-based catalysts, which are known to be useful in
the method made obvious by the combination of Huang, Sigma, Momentive,
Smith, and Jiang (see Appeal Br. 19–20). Therefore, we are not persuaded
by Appellant’s contention that Appellant’s “claim 24, which recites tin
catalysts, is patentable over the cited references” (Appeal Br. 20).

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Rejection II:
Based on the combination of Huang, Sigma, Momentive, Smith,
Jiang, and Kollbach, Examiner concludes that, before the effective filing
date of Appellant’s claimed invention, it would have been prima facie
obvious “to modify the reaction of the polyol and the polyisocyanate of
Huang to occur in the presence of an aprotic solvent as taught by Kollbach
because Kollbach teach polyols and polyisocyanates may be reacted in the
presence of aprotic solvents” and “to distill off the aprotic solvent employed
during the reaction of the polyol and the polyisocyanate of Huang in view of
Kollbach because Kollbach teach in solventless polyurethanes are required
the aprotic solvent is distilled off after the end of the reaction” (Final Act.
13).
Having found no deficiency in the combination of Huang, Sigma,
Momentive, Smith, and Jiang, we are not persuaded by Appellant’s
contention that Kollbach fails to make up for Appellant’s asserted deficiency
in the combination of Huang, Sigma, Momentive, Smith, and Jiang (Appeal
Br. 19).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 1 and 24 under 35 U.S.C. § 103 as
unpatentable over the combination of Huang, Sigma, Momentive, Smith, and
Jiang is affirmed. Claims 2–12, 14, 16, 17, and 25 are not separately argued
and fall with claim 1.
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The rejection of claim 1 under 35 U.S.C. § 103 as unpatentable over
the combination of Huang, Sigma, Momentive, Smith, Jiang, and Kollbach.
Claims 2–17, 24, and 25 are not separately argued and fall with claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 14, 16,
17, 24, 25
103 Huang, Sigma,
Momentive, Smith,
Jiang
1–12, 14,
16, 17, 24,
25

1–17, 24, 25 103 Huang, Sigma,
Momentive, Smith,
Jiang, Kollbach
1–17, 24,
25

Overall
Outcome
1–17, 24,
25

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).

AFFIRMED