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The PTAB Says to Let Them Eat Cake

June 16, 2023
Ken W. Pung
Associate Attorney


Appeal 2023-001781

Application 16/461,557



In an appeal filed by the cosmetics company L'Oréal, the PTAB affirmed an examiner’s § 112(b) rejection against claims related to an anti-aging composition over the term “fondant texture”.

Subject Matter

As people age, the skin naturally loses elasticity and volume.  This results in a slackening of the skin which causes lines and wrinkles to form, thereby contributing to an aged appearance.

At the time of filing (2019), it was known in the art to use tensioning polymers in anti-aging compositions as a way of counteracting said slackening.  Tensioning polymers are substances that, when applied to the skin, causes retraction in the stratum corneum (the outermost layer of the epidermis).  However, the use of tensioning polymers had certain drawbacks – i.e., it can cause discomfort and it has inconsistent results due to polymer fragmentation over time.

L'Oréal created an anti-aging composition that did not use tensioning polymers.  Instead, their composition utilized a mix of solid fatty substances and an associative aqueous gelling polymer.  The term “associative polymer” is defined in the ‘557 application as being an amphiphilic polymer that is capable, in anaqueous medium, of reversibly combining with itself or with other molecules; and the term “aqueous gelling agent” is defined as a compound that is capable of gelling the aqueous phase of the composition.  Associative aqueous gelling polymers are generally categorized as “thickening polymers.” No biological explanation was provided in the ‘557 application as to how, exactly, these thickening polymers act on the skin.  But supposedly, they can provide a “sensation of containment” and can result in skin that is less slack, tighter, and firmer even after several weeks of use.

The §112(b) Rejection 

Claim 37 of the ’577 application required that the composition of claim 1 be of a fondant texture.  Admittedly, the specification does not overtly define what the term “fondant texture” means, nor does it provide any quantifiable measures by which the fondant-ness of a composition could be determined (e.g., such as a preferred range for viscosity).  Rather, the specification only provides a functional-language description of the term “fondant texture” … 

          Furthermore,during application of the composition to the
          skin, the composition is easy to spread on account of the
          fondant texture of the composition, thus allowing uniform
of the product on the surface of the skin: it
          penetrates easily into the skin. After application, the applied
          product is not tacky or greasy and has a soft, pleasant feel,
          without any sensation of heaviness.

Para. 11 of the ‘557 app (emphasis added).

Objecting to this, the Examiner noted that fondant in the world of candies and cakes comes in two forms – rolled and poured – and that each form has a different kind of texture (rolled fondant is like clay, albeit slightly stiffer; poured fondant is generally avery gelatinous, thick liquid).  Her conclusion was that given these possible meanings, the term “fondant texture” has a wide variability of interpretations and that each interpretation includes terms of degree; so therefore, rejection on §112(b) grounds was proper.

On appeal, counsel for L'Oréal asserted that a skilled artisan in the field of cosmetics would understand what is meant by the term “fondant texture” as well as the metes and bounds of the term.  In support of this, they cited to prior art showing usage of the term “fondant texture” to describe other cosmetics.

The PTAB, for its part, agreed with the Examiner.  They actually acknowledged that the term “fondant texture” may have a specific meaning in the cosmetic art, but nonetheless asserted that said meaning does not limit claims of the ‘557 application.  The reason why is because there was nothing in the claims that would specifically limit them to being a “cosmetic” composition.  And so, in the absence of that, it was appropriate for the examiner to rely on the food-based interpretations of “fondant”. Unfortunately, the PTAB did not say how, exactly, one would limit the claims to specifically being a cosmetic composition.  

The natural inclination here would be to amend the preamble of the claims to change it from “a composition comprising…” to “a cosmetic composition comprising…”.  It is, after all, acknowledged in MPEP § 2111.02(II) that a preamble may provide context for claim construction.  Moreover, there’s also case law to support the idea that this could work.  See, e.g., Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (holding that a preamble limits an invention if it is “necessary to give life, meaning, and vitality” to the claim); and Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251 (Fed. Cir. 1989) (holding that it would be inappropriate to ignore the preamble if doing so would be “divorced from reality”).  

But on the other hand, MPEP §2111.02(II) also acknowledges that preambles are not always limiting if reliance on the preamble does not result in a structural difference between the claimed invention and the prior art. Further, if the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention, then the preamble is not treated as a claim limitation. Id; see also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d1550, 1553 (Fed. Cir. 1997).  At the end of the day, L'Oréal’s composition is solid fatty substances plus an associative aqueous gelling polymer in a fondant-like texture.  To simply add the word “cosmetic” to the preamble doesn’t seem like it would result in a structural difference between it and the prior art, given that the relevant prior art compositions are also fondant-like. And, for what it’s worth, it could be also argued that adding the word “cosmetic” only serves to state a purpose or intended use for the composition.  

With the above in mind, it’s up to L'Oréal’s counsel to do the guesswork.  The PTAB seems to be suggesting that they can get the interpretation of “fondant texture” that they’re looking for, but doesn’t give any consideration as to how they might actually do that.  For their sake, and the sake of other patent practitioners, I hope they get their cake.

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