Ex parte Rosario-Melendez

• Docket Number: Appeal 2023-002783[1],Application 15/908,646,Technology Center 1600
• Decision Date: 28 December 2023
• Parties: Ex parte ROSELIN ROSARIO-MELENDEZ, SUSAN ASHLEY DESTENO, and CHAO ZHU
• Court: Patent Trial and Appeal Board

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Ex parte ROSELIN ROSARIO-MELENDEZ, SUSAN ASHLEY DESTENO, and CHAO ZHU Appeal No. 2023-002783^[1]

Application 15/908,646

Technology Center 1600

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 28, 2023

FILING DATE 02/28/2018.

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Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and CYNTHIA M. HARDMAN, Administrative Patent Judges.

DECISION ON APPEAL

HARDMAN, Administrative Patent Judge.

This is an appeal under 35 U.S.C. § 134(a) involving claims related to matte lip compositions. The Examiner rejected the claims as obvious under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

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CLAIMED SUBJECT MATTER

Claims 1-12, 15, 16, and 19-24 are pending. Final Act.^[2] 2. Claim 1 illustrates the claimed subject matter and reads:

1. A matte lip composition comprising at least one siloxysilicate resin in an amount of from about 7% to about 15% by weight, at least one polyorganosiloxane copolymer in an amount of from about 4.5% to about 10% by weight, at least one lipophilic silica in an amount of from about 1% to about 1.5% by weight, at least one non-lipophilic filler in an amount of greater than 0% to about 3.5% by weight, wherein the non-lipophilic filler is selected from the group consisting of silica, kaolin, polyamide powders, polyalanine powders, polyethylene powders, tetrafluoroethylene polymer powders, and mixtures thereof, and at least one non-volatile hydrocarbon oil in an amount of greater than 0% to about 3.5% by weight, all weights being based on the total weight of the composition, wherein the composition is free of mica and volatile alcohol, wherein the composition contains no water and wherein the composition has average gloss properties measured at 60°, of less than or equal to 10.

Appeal Br.^[3] 11 (Claims App'x).

REFERENCES

The Examiner relies on the following references to reject the claims:

Name	Reference	Date
Pappas	US 5,093,108	Mar. 3, 1992
Vatter	US 2002/0028223 A1	Mar. 7, 2002
Lu	US 2006/0110347 A1	May 25, 2006
Barba	US 2011/0002869 A1	Jan. 6, 2011
Shimizu	US 2015/0150780 A1	June 4, 2015

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REJECTION

The Examiner maintains the following rejection:

Claim(s) Rejected	35 U.S.C. §	Reference(s)/ Basis
1-12, 15, 16, 19-24	103	Lu, Barba, Vatter, Shimizu, Pappas

Final Act. 7.

OPINION

The Examiner rejects claims 1-12, 15, 16, and 19-24 as obvious over the combination of Lu, Barba, Vatter, and Shimizu, as evidenced by Pappas.^[4] See Final Act. 7. The Examiner finds that Lu teaches a layered lip composition comprising a base coat and top coat, wherein the base coat is anhydrous and comprises, among other things, siloxysilicate resin, polyorganosiloxane copolymer, and non-lipophilic fillers (particularly, polyamide powders, silica, and kaolin) in amounts that overlap with the claimed ranges. Id. at 7-8, 12 (citing various portions of Lu), 13 (discussing overlapping amounts).

The Examiner further finds that Lu teaches that the base coat comprises nonvolatile hydrocarbon oils, but does not teach the amount of such oils. Final Act. 8. For the amount, the Examiner cites Barba as teaching an anhydrous lip composition comprising nonvolatile hydrocarbon oil in amount that overlaps with the claimed range. Id. at 8-9 (citing Barba ¶¶ 200, 207). The Examiner also cites Shimizu as teaching inclusion of lipophilic silica in amounts that overlap with the claimed range, and finds that a person of ordinary skill in the art would have been motivated to include lipophilic silica in the composition taught by Lu because Shimizu

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teaches that silica silylate (a lipophilic silica) improves stability of the composition. Id. at 9-10 (citing Shimizu ¶¶ 498-502, 522, 530, examples 1-3, 5-7), 11, 12.

Regarding the claim limitation "wherein the composition is free of mica and volatile alcohol," the Examiner finds that the cited references (1) teach silica, nylon and kaolin as alternatives to mica, and suggest compositions free of mica; and (2) Lu's Example 2 and Vatter's Example V respectively teach a base coat and lipstick free of volatile alcohol. Final Act. 13.

Regarding the average gloss property recited in claim 1, the Examiner finds that this "is a property of the composition taught by the prior art comprising all the claimed ingredients in the claimed amounts." Final Act. 12. The Examiner further finds that "Lu teaches the claimed ingredients forming a base coat composition that is not shiny and the composition is rendered shiny and glossy by wearing a top coat," while Vatter teaches a composition that "has reduced shine achieved by adding polyamide to the composition that provides shine control, i.e. matte appearance, to cosmetics including lip compositions." Id.

We adopt the Examiner's findings (Final Act. 7-20), and determine that the Examiner has established a prima facie case of obviousness based on the combination of Lu, Barba, Vatter, Shimizu, and Pappas, for the reasons discussed by the Examiner. See id. We address Appellant's arguments below.

Appellant argues that "[t]he Examiner erred by ignoring the average gloss properties, measured at 60°, set forth in the appealed claims . . . and/or by assuming that Lu's compositions satisfy the average gloss properties set

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forth in these claims." Appeal Br. 5. According to Appellant, "Lu only discloses and motivates producing a glossy composition," and "requires the presence of phenylated solvent to provide gloss to its compositions." Id. at 5, 6.

We disagree with the Appellant's assertion that the Examiner "ignor[ed]" the claimed gloss property. The Examiner relies on the base coat in Lu,...