Alexandra Bazito et al.

Patent Trials and Appeals Board

Sep 6, 2019

14128262 - (D) (P.T.A.B. Sep. 6, 2019)

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.
14/128,262 04/04/2014 Alexandra Bazito 3735USPCT 1797
67749 7590 09/06/2019
Ashland LLC
WILLIAM J. DAVIS, ESQ.
1005 U.S. 202/206
Bridgewater, NJ 08807
EXAMINER
HOLLOMAN, NANNETTE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/06/2019 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):
ntietcheu@ashland.com
schen@ashland.com
wdavis@ashland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALEXANDRA BAZITO, LILIANA COLORE BRENNER,
and MARIA REGINA BARTUCCIO RAPONI
__________

Appeal 2018-004950
Application 14/128,262
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to a
complex for improvement of distribution and retention of fragrances into
keratinous matter. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as ISP Investments LLC
(App. Br. 2).
2 We have considered and herein refer to the Specification of Dec. 20, 2013
(“Spec.”); Final Office Action of Mar. 22, 2017 (“Final Action”); Appeal
Brief of Oct. 24, 2017 (“App. Br.”); Examiner’s Answer of Feb. 8, 2018
(“Answer”); and Reply Brief of Apr. 9, 2018 (“Reply Br.”).
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Application 14/128,262

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Statement of the Case
Background
The technology related to perfumes is very multifaceted.
The olfactory perception is caused by the presence of odor
molecules in the air, which are formed from the evaporation of
volatile liquids that are included in the product composition.
Thus, the nature, concentration and behaviors of these
substances are important factors to be considered during the
fragrance development and its inclusion into the various
cosmetic bases.
(Spec. 1:13–19). A “complex composition was developed which increases
the perception of the fragrance for initial and long time when it is applied to
the substrates, even when the cosmetic product is for the rinse” (id. 3:18–
21). The Specification teaches “when the mixture ‘complex + fragrance’ is
incorporated in the cosmetic base, such as in a shampoo, micro emulsion
particles are obtained, which guarantee an increase in contact area and thus
providing greater interaction with the substrate” (id. 4:28–32).
The Claims
Claims 1, 2, 4, 7, 9–12, and 14–21 are on appeal. Claim 1 is the sole
independent claim, is representative and reads as follows:
1. Complex for improvement of distribution and retention of
fragrances into keratinous matter consisting essentially of:
(A) a C10-C18 alkyl pyrrolidone present in an amount of 40
to 60% by weight,
(B) at least one polyol compound having two hydroxyl
groups, and/or three hydroxyl groups present in the amount of
40 to 60% by weight; and
(C) optionally at least one fatty alcohol.

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The Rejection
The Examiner rejected claims 1, 2, 4, 7, 9–12, and 14–21 under
35 U.S.C. § 103(a) as obvious over Janchitraponvej3 and Taylor4 (Final Act.
3–5).
The Examiner finds Janchitraponvej teaches “shampoo compositions
comprising coupling agents, such as lauryl pyrrolidone, propylene glycol,
glycerol and mixtures thereof at a concentration of 0% to 20%; and a carrier,
such as propylene glycol at a concentration of 5 to 25% . . . [and]
conditioning compositions comprising 0.3% fragrance” (Final Act. 4).
The Examiner acknowledges Janchitraponvej does “not disclose
improvement of distribution and retention of fragrances” (Final Act. 4). The
Examiner finds Taylor teaches a “personal care composition comprising 3%
or less of a perfume that enhance perfume longevity by preparing a perfume
'accord' that comprises high proportion of individual perfume raw materials
that are individually inclined to longevity” (Final Act. 4). The Examiner
finds Taylor teaches “a composition comprising about 0.3 to about 15% of a
structurants, such as fatty alcohols and lauryl pyrrolidone . . . [and]
comprising 0.3%, 0.5% and 0.8% glycerin” (Final Act. 4).
The Examiner finds it obvious to “have used the perfume of Taylor as
the fragrance of Janchitr[a]ponvej motivated by the desire to increase the
fragrance longevity at a lower cost and a desirable viscosity and latherability
to consumers due to the lower total perfume level as taught by Taylor”
(Final Act. 4).

3 Janchitraponvej et al., US 5,328,685, issued July 12, 1994.
4 Taylor et al., US 2007/0117729 A1, published May 24, 2007.
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The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that
Janchitraponvej and Taylor render the claims obvious?
Findings of Fact
1. Janchitraponvej teaches “a clear conditioning composition and
[] a method of treating hair that imparts improved conditioning properties to
hair” (Janchitraponvej 1:5–7).
2. Janchitraponvej teaches a “coupling agent, or a mixture of
coupling agents, is present in an amount of 0% to about 20% by weight of
the composition[, e]xemplary, but nonlimiting nonionic surfactants include .
. . lauryl pyrrolidone” (Janchitraponvej 14:1–9).
3. Janchitraponvej teaches the “optional polyhydric compound can
be a glycol . . . [s]pecific examples include . . . propylene glycol”
(Janchitraponvej 14:15–18).
4. Example 5 of Janchitraponvej discloses the use of 0.3 weight
percent fragrance in the composition (see Janchitraponvej 15:67).
5. Taylor teaches “perfume longevity can be obtained by
preparing a perfume ‘accord’ that comprises a high proportion of individual
PRMs that are individually inclined to longevity. The longevity benefit can
be obtained at a lower cost and a desirable viscosity and latherability to
consumers due to the lower total perfume level” (Taylor ¶ 8).
6. Taylor teaches the composition can “further comprise a liquid
crystalline phase inducing structurant, which when present is at
concentrations ranging from about 0.3% to about 15%” (Taylor ¶ 57).
7. Taylor teaches the composition can comprise 0.3 or 0.5 weight
percent glycerin (Taylor ¶ 89, Table 4).
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Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
The Examiner contends that “when equal parts of components (A) and
(B) are present within the composition, the ‘complex’ would contain an
overlap of ranges, i.e. 50% alkyl pyrrolidone and 50% of at least one polyol
compound and meet the claimed limitations” (Ans. 6).
Appellants contend
it appears that the Examiner is firstly creating a hypothetical
“complex” from the described composition, even though there
is no suggestion or motivation provided to create this
hypothetical complex. Secondly, the Examiner next asserts that
when equal amounts of components (A) and (B) are present in
this hypothetical complex, then the concentrations of the
components falls within the present claims. However,
Appellant[s] respectfully assert[] there is no basis from which
the Examiner has created this hypothetical “complex.” Further,
the creation of this hypothetical “complex” ignores the
teachings of the cited references by negating the additional
components of the described compositions.
(Reply Br. 3).
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art or analyzed for
patent eligibility. In claim 1, the term at issue is “[c]omplex . . . consisting
essentially of” at least two elements, a pyrrolidone and a polyol, each in
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amounts of 40 to 60% by weight. That is, claim 1 requires formation of a
composition containing at least 40% by weight of each of pyrrolidone and
polyol, leaving no more than 20% for other constituents.
This interpretation is consistent with the Specification, where
Example 1 teaches formation of complex formulations, including a complex
2 in Table 2 that falls within the recitation of claim 1 (see Spec. 7). These
complexes are then added to other formulations, including shampoo
formulations, as shown in Example 2, Tables 5 and 6 of the Specification
(see Spec. 8–9).
Claim 1 therefore can be reasonably interpreted as limited to a
composition comprising at least 40% by weight of each of pyrrolidone and
polyol.
Based on this claim interpretation, we agree with Appellants that
neither Janchitraponvej nor Taylor teach or suggest a composition that
includes 40% by weight of each of a C10-C18 alkyl pyrrolidone and a polyol
having two or three hydroxyl groups.
At best, Janchitraponvej teaches compositions that may include 20%
by weight of each of these components (FF 2–3). The Examiner provides no
persuasive reason to increase the amount of either component to 40% or
suggest that such an increase would be routine optimization. See In re
Sebek, 465 F.2d 904, 907 (CCPA 1972) (“Where, as here, the prior art
disclosure suggests the outer limits of the range of suitable values, and that
the optimum resides within that range . . . the determination of optimum
values outside that range may not be obvious.”)
To the extent that the Examiner is arguing that the two components
necessarily form some sort of complex within a larger composition (such as
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the composition of Taylor in Table 4) and that the resulting complex
necessarily results in a concentration of the two components within such a
hypothetical complex of at least 40%, the Examiner has provided no
evidence to support this argument (see Ans. 4–5). “Inherency . . . may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”
MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999).
Just as Appellants would be unable to assert that a larger composition
that comprised less than 40% by weight of either a C10-C18 alkyl pyrrolidone
or a polyol having two or three hydroxyl groups falls within the scope of the
claims based on an interaction between these components, so to the
Examiner cannot rely upon such an interaction to establish obviousness.
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner’s conclusion that Janchitraponvej and Taylor render the claims
obvious.
SUMMARY
In summary, we reverse the rejection of claims 1, 2, 4, 7, 9–12, and
14–21 under 35 U.S.C. § 103(a) as obvious over Janchitraponvej and Taylor.

REVERSED