SHISEIDO COMPANY, LTD.

Patent Trials and Appeals BoardMay 4, 2021

2019006236 (P.T.A.B. May. 4, 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. 15/099,737 04/15/2016 KAZUTAKA SASAKI WINGR.P035 US 4168 28752 7590 05/04/2021 NOLTE LACKENBACH SIEGEL LACKENBACH SIEGEL BUILDING 1 CHASE ROAD SCARSDALE, NY 10583 EXAMINER JUSTICE, GINA CHIEUN YU ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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): ayoung@NLS.law docketing@nls.law patdoc@lsllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUTAKA SASAKI1 Appeal 2019-006236 Application 15/099,737 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and MICHAEL A. VALEK, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a cosmetic product, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Claims 1–7 are on appeal. Claim 1, reproduced below, is illustrative: 1. A skin cosmetic product comprising: A) 15 to 50% by mass of a powder formed of an (adipic acid/neopentyl glycol) crosspolymer, and 1 Appellant identifies the real party in interest as Shiseido Company Ltd. Appeal Br. 1. We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2019-006236 Application 15/099,737 2 (B) 0.5 to 3% by mass of an aqueous thickening agent consisting of a hydrophobically modified polyurethane. The claims stand rejected as follows: Claims 1 and 3–7 under 35 U.S.C. § 103 as obvious in view of Yoshida2 and AuraSphere3 (Ans. 3) and Claim 2 under 35 U.S.C. § 103 as obvious in view of Yoshida, AuraSphere, Adeka,4 and Tominaga5 (Ans. 5). OPINION Claims 1 and 3–7 Claims 1 and 3–7 stand rejected as obvious based on Yoshida and AuraSphere. The Examiner finds that “Yoshida teaches cosmetic compositions [comprising] an associative thickener comprising hydrophobically modified polyurethane, (B polymer of claim 1)” but “fails to specifically teach adipic acid/neopentyl glycol crosspolymer (A polymer of claim 1).” Ans. 3–4. The Examiner finds, however, that “AuraSphere teaches adipic acid/neopentyl glycol crosspolymer particles, commercially available under tradenames Penstia Powder, AuraSphere N, S or A.” Id. at 4. The Examiner concludes that it would have been obvious “to modify the teachings of Yoshida [by] add[ing] the adipic acid/neopentyl glycol crosspolymer powders as motivated by AuraSphere” because “AuraSphere teaches of desirable and predictable cosmetic benefits including (e.g., visual, 2 Yoshide et al., US 6,440,431 B1, Aug. 27, 2002. 3 Veil Wrinkles, “AuraSphere®” Centerchem, Inc. 2013. 4 ADEKA CORPORATION, “ADEKA NOL GT-730” www.adeka.co.jp. 5 Tominaga, US 8,323,629 B2, Dec. 4, 2012. Appeal 2019-006236 Application 15/099,737 3 tactile properties) and manufacturing advantages (e.g., ease of formulation, etc.).” Id. We agree with the Examiner that the product of claim 1 would have been obvious based on the cited references. Yoshida discloses “a cosmetic composition including advanced associative thickener” which is “a hydrophobic denatured polyurethane.” Yoshida 4:13–25. Yoshida also discloses that “[i]t is preferable to compound 0.01 to 10 wt % of said associative thickener into the cosmetic composition of [its] invention.” Id. at 7:51–53. Thus, as the Examiner found, Yoshida discloses a cosmetic product comprising component (B) of claim 1, in amounts that encompass the recited range. Yoshida states that its “associative thickener sometimes may be inferior in time stability of viscosity at high temperature. Also, in the case where the cosmetic composition, in particular, is an oil-in-water emulsion composition, long-term emulsion stability may be inferior.” Id. at 7:67 to 8:4. Yoshida suggests that “[s]uch problems can be resolved by using water- soluble polymers, polyhydric lower alcohols, or monohydric lower alcohol together with the associative thickener.” Id. at 8:6–8. AuraSphere discloses “PenstiaTM Powder,” an “Adipic Acid/Neopentyl Glycol Crosspolymer.” AuraSphere, second page. AuraSphere states that “Penstia™ Powder is a polymer that imparts a silky, creamy feel” and “[t]he particles of Penstia™ Powder are porous spheres that allow for high oil loading, which is for active entrapment, stabilization and sebum absorption. The chemical composition of Penstia™ Powder gives it dry binding properties, resulting in improved formula stability and reduced tackiness.” Id. Appeal 2019-006236 Application 15/099,737 4 AuraSphere also discloses “AuraSphere® N . . . an aqueous AuraSphere® complex developed from technology behind Penstia™ Powder,” which includes an “Adipic Acid/Neopentyl Glycol Crosspolymer.” Id., third page. AuraSphere states that AuraSphere® N “works to instantly minimize the appearance of lines and wrinkles, while providing a soft, comfortable film. . . . The result is a smooth, silky film, which makes the skin appear virtually free of fine lines.” Id. Based on these teachings, it would have been obvious to include AuraSphere® N, an aqueous polymer, in Yoshida’s cosmetic composition because Yoshida suggests that problems with its thickener can be resolved by using water-soluble polymers and AuraSphere teaches that its AuraSphere® N composition minimizes the appearance of lines and wrinkles, and provides a soft, comfortable film. “Appellant does not contest the fact that these claim elements are known in the art.” Appeal Br. 2.6 Appellant contends, however, that “it was not predictable that the hydrophobic urethane thickener would stabilize high concentrations (15 to 50% by mass) of the polymer particles in aqueous media.” Id. at 3. Appellant argues that “[t]he technical literature provided by Centerchem for these powders [i.e., Penstia™ and AuraSphere®] recommends a concentration of no more than 3% (specification, p. 3 lines 16–21) in aqueous media, and, as noted above, other workers skilled in the art failed to 6 With exceptions not relevant here, the Appeal Brief must contain “[t]he arguments of appellant with respect to each ground of rejection. . . . [A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board.” 37 C.F.R. § 41.37(c)(1)(iv). Thus, arguments not included in the Appeal Brief have been waived. Appeal 2019-006236 Application 15/099,737 5 identify this solution to the problem of suspension instability at higher concentrations.” Id. This argument is not persuasive because, as the Examiner found (Ans. 4, 6–7; Final Act. 3), AuraSphere discloses an example of a “Veiling cream” formulation that includes 20% of AuraSphere® N. See AuraSphere, fifth page. The formulation also includes 49.15% water, which is mixed with an “Ammonium Acryloyldimethyltaurate/VP Copolymer,” and “HYBRIDUR® 875 POLYMER.” Id. Appellant concedes that “[t]he Centerchem product brochure (of record) discloses that the commercially available AuraSphere™ powders are (adipic acid/neopentyl glycol) crosspolymer powders, of the type recited in Claim 1.” Appeal Br. 2. Thus, Appellant in its Appeal Brief does not contest the Examiner’s finding that AuraSphere discloses a composition that appears to include an amount of adipic acid/neopentyl glycol crosspolymer powder within the claimed range, and does not disclose any problem of instability. Claim 1 is not limited to aqueous suspensions, and does not require any specific amount of water. Therefore, claim 1 encompasses the composition made obvious by the cited references. Claim 2 Claim 2 requires a specific hydrophobically modified polyurethane: (PEG-240/Decyltetradeceth-20/HDI) copolymer. The Examiner finds that “Tominaga teaches an external preparation comprising an associative polyurethane thickener. Examples contain 0.5-2 wt% PEG- 240/decyltetradeceth-20/HDI copolymer” and “Adeka teaches that PEG- 240/decyltetradeceth-20/HDI copolymer was available before the time of the Appeal 2019-006236 Application 15/099,737 6 filing of the present invention and well known as a cosmetic . . . gelling agent.” Ans. 5. The Examiner concludes that it would have been obvious “to modify the teachings of Yoshida and substitute the associative thickener with PEG- 240/decyltetradeceth-20/HDI copolymer as motivated by Adeka” because “the latter teaches that the copolymer is used to make a high-elastic/ sparingly water gel that is sprayable and stable in salt.” Id. at 6. We agree with the Examiner’s findings and conclusion. Appellant acknowledges that “[t]he Adeka product brochure teaches that the specific hydrophobically modified polyurethane PEG-240/ Decyltetradeceth-20/HDI, recited in claim 2, is the effective component of commercial gelling agents marketed as ADEKA NOL GT-700 and GT- 730.” Appeal Br. 5. Appellant also acknowledges that “Tominaga teaches the use of the GT-700 product in combination with a crosslinked acrylamide to form a viscous but easily washable skin treatment.” Id. Appellant argues, however, that “Tominaga provides no teaching, suggestion, or motivation to employ GT-700 as a stabilizer of particle suspensions. One of ordinary skill in the art can learn from Tominaga only that GT-700 (hydrophobically modified urethane) is an aqueous phase thickener suitable for cosmetics.” Id. We are not persuaded by this argument. Adeka discloses the same copolymer as is recited in claim 2, which Appellant acknowledges. Appeal Br. 5 (“Appellant does not contest the fact that PEG-240/Decyltetradeceth- 20/HDI was known in the art as an aqueous phase thickener.”). Adeka also discloses that “[i]t is used for cosmetics as gelator.” Adeka, first page. Appeal 2019-006236 Application 15/099,737 7 Adeka also discloses that this polymer forms a “High elastic/Springy water gel” with “Good spray discharge” and “Good solubility in water.” Id. Yoshida discloses compositions that include an aqueous “Hair Gel” including its thickener. Yoshida 28:21–30 (Table 27). Thus, it would have been obvious to use the specific PEG-240/Decyltetradeceth-20/HDI taught by Adeka as the hydrophobic denatured polyurethane taught by Yoshida because Adeka teaches that its polymer forms a springy water gel with good spray discharge and good water solubility. Appellant argues that, “assuming, arguendo, that the patentability of claim 2 relies upon an unexpected result, the Examiner has failed to explain how claim 2, which is limited to the precise thickener for which effectiveness was demonstrated, is not commensurate in scope with the experimental evidence.” Appeal Br. 5. We do not agree that Appellant has provided evidence of unexpected results sufficient to outweigh the evidence cited by the Examiner. Appellant argues that “among all of the aqueous phase thickeners tested for use in combination with the suspension of polymer particles (specification, Table 1, see comparative Examples 1–4), satisfactory results could be obtained only with the claimed hydrophobically modified polyurethane. Nothing in the prior art teaches or suggests that this particular class of thickener would have this particular property.” Appeal Br. 3. The Specification’s Comparative Examples 3 and 4, however, show that compositions comprising “(Acrylates/C10–30 alkyl acrylate) crosspolymer” were equally effective in stabilizing a suspension of 25% or 35% (adipic acid/neopentyl glycol) crosspolymer powder as the PEG- Appeal 2019-006236 Application 15/099,737 8 240/Decyltetradeceth-20/HDI copolymers shown in the Specification’s Examples 1–4. Compare Spec. 15 (Table 1) with id. at 16 (Table 2). The only difference between the results is that the examples with PEG- 240/Decyltetradeceth-20/HDI copolymers had better stability over time, but Tominaga teaches that its “preparation for skin . . . is excellent in usability and stability.” Tominaga 1:6–7 (emphasis added). Appellant has not shown that the results in the Specification were unexpected. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–7 103 Yoshida, AuraSphere 1, 3–7 2 103 Yoshida, AuraSphere, Adeka, Tominaga 2 Overall Outcome 1–7 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). AFFIRMED