L'ORÉAL

Patent Trials and Appeals Board

Mar 4, 2022

2021003474 (P.T.A.B. Mar. 4, 2022)

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. 15/799,919 10/31/2017 Jianxin FENG 506502US 2208 147747 7590 03/04/2022 Oblon/L'Oreal 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER BABSON, NICOLE PLOURDE ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 03/04/2022 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): iahmadi@oblon.com oblonpat@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 JIANXIN FENG and RAMAKRISHNAN HARIHARAN ____________ Appeal 2021-003474 Application 15/799,9191 Technology Center 1600 ____________ Before RYAN H. FLAX, DAVID COTTA, and CYNTHIA M. HARDMAN Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a nail composition. The Examiner rejected the claims on appeal under 35 U.S.C. § 103 as obvious. An oral hearing was held on December 6, 2021, a transcript (“Tr.”) from which has been entered into the record. We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is L’Oreal. App. Br. 1. Appeal 2021-003474 Application 15/799,919 2 STATEMENT OF THE CASE According to the Specification there is a “need for new ways to improve hardness and shine properties in solvent-based nail compositions, particularly nail compositions containing a cellulose compound like nitrocellulose.” Spec. ¶ 6. In response to this need, the Specification discloses “nail compositions comprising diisononyl 1,2- cyclohexanedicarboxylate, as well as . . . methods of improving hardness and shine properties of nail compositions by including diisononyl 1,2- cyclohexanedicarboxylate in the nail compositions.” Id. ¶ 1 Claims 1-9 are on appeal. Claim 1 is representative and reads as follows: 1. A nail composition, comprising: a solvent; a cellulose polymer; and a plasticizing component consisting of diisononyl 1,2- cyclohexanedicarboxylate and optionally one or more additional plasticizing agents selected from the group consisting of diisobutyl adipate, the ester of teributyl acid and 2,2,4- trimethylpentane-1,3-diol, diethyl adipate, dimethyl sebacate, dibutyl sebacate, ethyl stearate, 2-ethylhexyl palmitate, dipropylene glycol n-butyl ether, tributyl phosphate, tributoxyethyl phosphate, tricresyl phosphate, triphenyl phosphate, glycerol triacetate, butyl stearate, butyl glycolate, benzyl benzoate, butyl acetyltricinoleate, glyceryl acetyltricinoleate, triethyl citrate, tributyl citrate, tiibutyl acetylcitrate, tri(2-ethylhexyl) acetylcitrate, dibutyl tartrate, camphor and mixtures thereof; wherein the content of the diisononyl 1,2- cydohexanedicarboxylate is at least 6 % by weight, with respect to the total weight of the composition, and wherein a Persoz hardness of the composition is more than 50% lower than the Persoz hardness of the composition without the diisononyl 1,2-cyclohexanedicarboxyiate. Appeal 2021-003474 Application 15/799,919 3 App. Br. 8. The Examiner rejected claims 1-9 under 35 U.S.C. § 103 as obvious over the combination of Socci2 and Storzum.3 Final Act. 3.4 ANALYSIS Each of the pending claims requires “a plasticizing component consisting of diisononyl 1,2-cyclohexanedicarboxylate” that is present in an amount of “at least 6 % by weight, with respect to the total weight of the composition.” App. Br. 8-11 (Claims App’x). In addressing this claim requirement, the Examiner relies on Socci’s disclosure of a nail polish formulation including 2.3% by weight sucrose acetate isobutyrate, 1.6% by weight dibutyl phthalate, and 1.35% by weight camphor. Final Act. 3; Socci ¶ 29. The Examiner finds that each of these three components is a plasticizer, and thus Socci discloses a composition comprising 5.25% total plasticizer (the sum of the weight percentage of each of the individual plasticizers). Ans. 3-4. The Examiner then contends that it would have been obvious to substitute diisononyl 1,2-cyclohexanedicarboxylate for Socci’s three plasticizers in view of Storzum’s teaching that “[i]n nail varnishes, the cyclohexanepolycarboxylic acid derivatives used according to [Stotzum’s] invention are preferably used as plasticizers and can thus replace the plasticizers which trigger allergies such as diethyl phthalate.” Final Act. 4 (citing Storzum ¶ 172). The Examiner posits that although the total amount of plasticizer in Socci’s composition is only 5.25%, it would 2 Socci et al., US Patent Publication No. 2003/0012750 A1, published Jan. 16, 2003 (“Socci”). 3 Storzum et al., US Patent Publication No. 2007/0003583 A1, published Jan. 4, 2007 (“Storzum”). 4 Office Action mailed August 10, 2020 (“Final Act.”). Appeal 2021-003474 Application 15/799,919 4 have been obvious to “vary the diisononycyclohexane-1,2-dicarboxylate concentration through routine experimentation to arrive at the concentration of ‘at least 6%’ in order to optimize the resulting product.” Ans. 5. We are not persuaded that the combination of Socci and Storzum teaches or suggests using at least 6% diisononyl 1,2- cyclohexanedicarboxylate, as claimed. We recognize that Storzum supports that, in nail varnishes, diisononyl 1,2-cyclohexanedicarboxylate is a known equivalent of certain phthalates. Storzum ¶ 172 (Teaching that “in nail varnishes, the cyclohexanepolycarboxylic acid derivatives used according to the invention are preferably used as plasticizers and can thus replace the plasticizers which trigger allergies such as diethyl phthalate.”). Although this may support the substitution of diisononyl 1,2- cyclohexanedicarboxylate for the dibutyl phthalate in Socci’s nail polish formulation, dibutyl phthalate makes up only 1.6% by weight of Socci’s composition, not 6% by weight, as claimed. Socci discloses the use of other plasticizers, namely 1.35% camphor and 2.3% sucrose acetate isobutyrate. The Examiner, however, does not identify evidentiary support for the proposition that diisononyl 1,2- cyclohexanedicarboxylate was a known equivalent of camphor or of sucrose acetate isobutyrate. Accordingly, the record lacks an evidentiary basis to support substituting diisononyl 1,2-cyclohexanedicarboxylate for camphor or for sucrose acetate isobutyrate. Contrary to the Examiner’s position (Ans. 5), we do not find such an evidentiary basis in Socci’s disclosure that “phthalate placticizers” can be used “alone or in combination with [other] plasticizers.” Socci ¶ 18. Simply put, this disclosure does not sufficiently support replacing the camphor and the sucrose acetate isobutyrate in Socci’s Appeal 2021-003474 Application 15/799,919 5 exemplary nail polish formulation with dibutyl phthalate in a 1:1 ratio by weight, much less the subsequent step of then replacing the dibutyl phthalate with the claimed diisononyl 1,2-cyclohexanedicarboxylate in a 1:1 ratio by weight. Accordingly, we reverse the Examiner’s rejection of claims 1-9 as obvious over the combination of Socci and Storzum. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-9 103 Socci, Storzum 1-9 REVERSED