Ex Parte Arora et alDownload PDFPatent Trial and Appeal BoardJun 16, 201713709496 (P.T.A.B. Jun. 16, 2017) Copy Citation 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. 13/709,496 12/10/2012 Shilpa ARORA 445765US 6338 22850 7590 06/20/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER TCHERKASSKAYA, OLGA V ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 06/20/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHILPA ARORA, MARIE HUYNH, and CARMEN CASTILLO1 Appeal 2016-003798 Application 13/709,496 Technology Center 1600 Before ULRIKE W. JENKS, JOHN G. NEW, and DAVID COTTA, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL appellants state the real party-in-interest is L’Oreal of Paris, France. App. Br. 2. Appeal 2016-003798 Application 13/709,496 SUMMARY Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 7, 20, and 22—24 which stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Lukenbach et al. (US 2004/0167046 Al, August 26, 2004) (“Lukenbach”) and Gupta (US 2006/0110415 Al, May 25, 2006) (“Gupta”).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CFAIMED INVENTION Appellants’ invention is directed to a cleansing composition containing: (a) at least one anionic surfactant; (b) at least one amphoteric surfactant; (c) at least one amphoteric polymer; (d) at least one acrylate copolymer; (e) at least one silicone; (f) at least one alcohol ester; and (g) an insoluble component, and wherein the composition is preferably clear in appearance, free of cationic polymer, and has the insoluble component effectively suspended therein. Abstract. REPRESENTATIVE CLAIM Claim 22 is representative of the claims on appeal and recites: Claim 22. A cleansing and conditioning composition, consisting essentially of: 2 Claims 7, 20, and 22—24 also stand rejected as unpatentable under the nonstatutory doctrine of obviousness-type double patenting over the claims of co-pending application US Ser. No. 13/709,544. Final Act. 5—6. This application has been abandoned. See December 14 Notice of Abandonment. This rejection is thus moot. 2 Appeal 2016-003798 Application 13/709,496 (a) from about 3% to about 15% by weight of sodium laureth sulfate, sodium lauryl sulfate, ammonium lauryl sulfate, ammonium laureth sulfate, or a combination thereof; (b) from about 1% to about 15% by weight of coco betaine, glyceryl laurate capryl/capramidopropyl betaine, Lauryl betaine, cocamidopropyl hydroxysultaine, sodium cocoamphodiacetate, sodium cocoamphoacetate, sodium cocoamphopropionate, or a combination thereof; (c) from about 0.01% to about 2% by weight of polyquatemium-39, polyquatemium-47, or a mixture thereof; (d) from about 0.15% to about 5% by weight of acrylates copolymer, polyacrylate-33, acrylates/vinyl neodecanoate crosspolymer, acrylates/steareth-20 methacrylate crosspolymer, or a combination thereof; (e) from about-0.01% to about 4% by weight of PEG-14 dimethicone, PEG/PPG-14/4, PEG/PPG-4/12 dimethicone, cetyl PEG/PPG 10/1 dimethicone, amodimethicone, dimethiconol, phenyl trimethicone, or a combination thereof; (f) from about .01% to about 4% by weight of isopropyl palmitate, isopropyl myristate, myristyl myristate, or a combination thereof; (g) from 0.001 % to about 5% by weight of cellulose beads, mannitol beads, cellulose/mannitol beads, titanium dioxide, polycaprolactone, lecithin, poloxamer 188, talc, agar, mica, iron oxides, microspheres, glass beads, plastic beads, poly (oxymethylene melamineacrylates/acrylamide), or a combination thereof; 3 Appeal 2016-003798 Application 13/709,496 (h) from about 0.1 % to about 5% by weight of PEG-30 glyceryl cocoate; and (i) water; wherein the composition has a pH greater than or equal to about 5. App. Br. 15—16. Issue 1 Appellants argue the Examiner erred by incorrectly interpreting the scope of the claims defining the claimed composition by the transitional phrase “consisting essentially of.” App. Br. —7. Analysis Appellants argue that, when a claim uses the transitional phrase, “consisting essentially of,” it covers products which include the listed elements, as well as unlisted elements, so long as the unlisted elements “do not ‘materially affect the basic and novel properties of the invention.’” App. Br. 7 (quoting HA Steel Corp. v. Sollac, 344 F.3d 1234, 1239 (Fed. Cir. 2003). Appellants acknowledge that, absent evidence or disclosure in the Specification as to what components would materially affect the invention, the USPTO commonly interprets this transitional phrase as “comprising,” and that Appellants have “the burden of showing that the introduction of additional steps or components would materially change the characteristics of [Appellants’] invention.” Id. (citing MPEP §§2163; 2111.03). Nevertheless, Appellants contend, such evidence is of record and the Examiner erred in dismissing it. Id. 4 Appeal 2016-003798 Application 13/709,496 Appellants point to their Specification which, they argue, expressly discloses the advantages of excluding conventional cationic polymer conditioners normally used in cleansing and conditioning compositions. App. Br. 7—8 (citing Spec. 4, 10). Therefore, Appellants assert, the Specification teaches that the invention is based on the preparation of compositions that do not include such conventional cationic polymer conditioners and, further, that the inclusion of such cationic polymer conditioners would have a material effect on the basic and novel characteristics of the invention in that there would be a limitation on foam quality and desirable sensory qualities when applied by the user. Id. at 8. The Examiner responds that: (1) Lukenbach and Gupta teach compositions that can be used for hair treatment, and said compositions include claimed compounds in claimed amounts; (2) Appellants expressly define the term “free of’ as meaning “an ingredient may, but need not, be present in the composition,” (see Spec. 115) thereby implying that the presence of cationic polymers is optional in the compositions, and not as a mandatory requirement (i.e., a negative limitation) defining the novelty of the invention; and that (3) Appellants expressly claim the use of such amphoteric polymers as polyquatemium-39 and polyquatemium-47 that are well-known cationic polymers. Ans. 3 (citing independent claims 22, 23). The Examiner further finds the term “consisting essentially of,” which was introduced via amendment in the Advisory Action of May 12, 2015, raises new issues not described or clarified by the Appellants’ claims or Specification. Ans. 3. In this regard, the Examiner finds it is unclear as to what materials can be considered as “those that do not materially affect the basic and novel characteristic(s)” of the claimed invention, when one 5 Appeal 2016-003798 Application 13/709,496 considers compositions comprising minimal amounts of listed compounds (i.e., 95% of water). Id. The Examiner finds that the term “consisting essentially of’ is not defined by the claim and the Specification does not provide a definition and/or examples for this term. Id. at 4. Consequently, the Examiner finds, a person of ordinary skill in the art would not have been reasonably appraised of the scope of the invention. Id. The Examiner therefore concludes that Appellants’ arguments do not comply with: (1) 37 C.F.R. § 1.111(c), because they do not clearly point out the patentable novelty which Appellants think the claims present in view of the state of the art disclosed by the references cited or the objections made; and (2) 37 C.F.R. § 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Ans. 4. We are not persuaded by Appellants’ arguments. Appellants contend that, although the term “consisting essentially of’ may be equivalent to the term “comprising” for constituents that do not materially affect the composition, the inclusion of cationic polymers would materially, and adversely, affect the properties of their claimed composition. Nevertheless, paragraph [0015] of Appellants’ Specification recites: “As used herein, the expression ‘free of means that an ingredient may, but need not, be present in the composition.” We agree with the Examiner that this definition, specifies that being “free of’ a constituent means that the constituent may be optionally present. See Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (Appellants may act as their own lexicographers as long as they have clearly set forth an explicit definition of the term). Appellants’ 6 Appeal 2016-003798 Application 13/709,496 Specification summarizes their invention as: “[A] cleansing composition ... wherein the composition is preferably clear in appearance, /fee of cationic polymer, and contains the insoluble component effectively suspended therein.” Spec. 7—8 (emphasis added). Appellants’ claims do not expressly employ the term “free of.” Nevertheless, Appellants appear to argue that, having introduced the transitional phrase “consisting essentially of,” the claims necessarily exclude cationic polymers, as these materially, and adversely, affect the desirable properties of their claimed composition. See, e.g., Spec. 14. We do not find this argument persuasive for two reasons. First, the Specification’s characterization of the claimed invention as being “free of cationic polymer” means, by Appellants’ own definition, “optionally containing cationic polymer.” Consequently, Appellants’ argument that the phrase “consisting essentially of’ in the claims should exclude polymeric cations because of their allegedly adverse material effect on the composition is inconsistent with their Specification’s definition equating “free of’ with “optionally including” polymeric cations as a constituent. Second, both independent clams 22 and 23 expressly include polyquatemium-47 and/or polyquatemium-39, in concentrations of from about 0.01% to about 2% by weight, as a requisite constituent of the claimed composition. As the Examiner correctly points out, and Appellants do not contest, both polyquatemium compounds are well-known in the art as polymeric cationic compounds. Consequently, we are not persuaded by Appellants’ reasoning. Issue 2 7 Appeal 2016-003798 Application 13/709,496 Appellants argue the Examiner erred in combining the references because Lukenbach and Gupta are nonanalogous art. App. Br. 8. Analysis Appellants point to paragraph [0008] of Lukenbach which, Appellants contend, requires the effective removal of residue from the sebum as well as residue from make-up and hair-protecting agents, while also providing “a pleasant, non-oily ‘after-feel’ to the skin and hair.” App. Br. 9. Appellants acknowledge that Gupta teaches compositions that can be in any general form, including shampoos, conditioners and others. Appellants argue that the purpose of Gupta is to provide compositions that penetrate deeply into the layer of the skin (dermal and sub-dermal layers). App. Br. 9 (citing Gupta H 47, 30). Appellants contend Gupta clearly teaches that the use of “esters of hydroxyl acids” for this purpose is “a surprising and unexpected discovery.” Id. (quoting Gupta 130). Furthermore, argue Appellants, Gupta teaches: ‘“[I]n a yet another surprising and unexpected discovery, it has now also been found that certain polyamide derivatives, which usually form gels in combination with non polar solvents, also form clear gels with alkyl esters of hydroxyacids, which are generally considered as semi-polar solvents.’” App. Br. 9-10 (quoting Gupta 136). Appellants therefore contend that Gupta is not at all related to removal of residue from the sebum nor is the reference “reasonably pertinent to the particular problem with which” either Lukenbach or the present invention is involved. App. Br. 10. According to Appellants, the present invention provides a shampoo with both good cleansing and good conditioning 8 Appeal 2016-003798 Application 13/709,496 properties even without the use of a cationic surfactant. Id. In addition, the compositions are clear even while utilizing isopropyl palmitate, an oil that is not typically utilized in a shampoo and one, moreover, known to yield hazy (not clear) compositions. Id. The Examiner responds that: (1) both Lukenbach and Gupta teach hair treatment compositions that include Appellants’ claimed compounds in the claimed amounts; (2) Lukenbach teaches the claimed compositions as hair conditioners/shampoo; (3) Gupta teaches that said compositions: (a) have a good-feel and are prepared in an esthetically appealing form for their consumer acceptance; (b) provide clear gels or solid solutions and result in crystal clear transparent systems; and (3) Gupta teaches such formulations as a shampoo for washing hair having a pH of 3 to 10. Ans. 4—5. The Examiner therefore concludes that, given that both cited references teach compositions that are used for cleansing and conditioning skin and/or hair, it would have been obvious to one of ordinary skill in the art to combine the compounds taught by Gupta, with the cleansing/conditioning compositions taught by Lukenbach. Ans. 5. The Examiner finds a person of ordinary skill would be motivated to do so, with an expectation of beneficial results, because Gupta teaches preparing its compositions in an esthetically appealing clear form for their consumer acceptance and improving delivery of beneficial cosmetic ingredients. Id. We agree with the Examiner. Two tests define the scope of analogous prior art: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In 9 Appeal 2016-003798 Application 13/709,496 re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). In this instance, Lukenbach is directed principally to: [CJleansing compositions suitable for use in personal cleansing applications, and in particular make-up removal applications, which not only impart superior cleansing properties, but also which are relatively non-irritating and thus suitable for use by people having sensitive skin and eyes. This invention is further related to a composition for effectively delivering and/or depositing various benefit agents into and onto the skin. Lukenbach 13. Gupta is directed, in relevant part, to: [SJhampoos, aftershaves, sunscreens, body and hand lotions, skin creams, liquid soaps, bar soaps, bath oil bars, shaving creams, conditioners, permanent waves, hair relaxers, hair bleaches, hair detangling lotion, styling gel, styling glazes, spray foams, styling creams, styling waxes, styling lotions, mousses, spray gels, pomades, shower gels, bubble baths, hair coloring preparations, conditioners, hair lighteners, coloring and non coloring hair rinses, hair grooming aids, hair tonics, spritzes, styling waxes, band-aids, and balms. Gupta 147; see also ]Hf 88—92. We agree with the Examiner that a person of ordinary skill in the art would have recognized that both references and Appellants’ claimed compositions are directed, at least in part, to skin and hair care products, especially cleansing products. (See claim 22, which is directed to: “A cleansing and conditioning composition”). We therefore agree with the Examiner that the references are analogous art because, at least, they are compositions used in the same field of endeavor. Bigio, 381 F.3d at 1325. 10 Appeal 2016-003798 Application 13/709,496 Issue 3 Appellants next argue that the Examiner erred in not establishing that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the references. App. Br. 10. Analysis Appellants repeat their argument that Lukenbach teaches a new and improved composition to remove compositions from the skin, particularly those that are hard to remove with conventional cleansers, while maintaining compatibility with the skin/hair upon which the cleanser is applied. App. Br. 11. Appellants argue the constituent compounds taught by Lukenbach were selected and combined to facilitate compatibility with each other, which in turn creates a composition that has reduced the drawbacks known in the prior art. Id. Appellants assert that the key characteristic of Lukenbach’s teachings are compatibility, functionality, and skin benefits. Id. Appellants contend there is no indication, nor has the Examiner reasonably established, that the type of acids, polymers and other components that are of central focus in Gupta would be compatible with the types of components taught by Lukenbach. Id. We are not persuaded by Appellants’ arguments. As we have explained supra, Lukenbach and Gupta are analogous art. furthermore, the Examiner finds that Gupta teaches that its compositions provide clear gels or solid solutions that result in crystal clear transparent systems. The Examiner concludes that it would have been obvious to combine the compounds taught by Gupta with the conditioning compositions taught by Lukenbach, because Gupta teaches that such compositions may include beneficial ingredients and 11 Appeal 2016-003798 Application 13/709,496 can be prepared in an esthetically appealing clear form for increased consumer acceptance. Final Act. 5. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Moreover: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at 421. In this instance, the Examiner has articulated a motivation to combine the references to meet a market need. We agree that a person of ordinary skill would have had a reasonable expectation of success in combining the references. Appellants adduce no evidence to the contrary, and given that the Examiner’s findings are supported by the record, mere gainsaying of the Examiner is insufficient to overcome the Examiner’s findings of fact and conclusion. We are therefore not persuaded by Appellants on this issue. Because we find none of Appellants’ arguments persuasive, we affirm the Examiner’s rejection of the claims. DECISION The Examiner’s rejection of claims 7, 20, and 22—24 as unpatentable under 35 U.S.C. § 103(a) is affirmed. 12 Appeal 2016-003798 Application 13/709,496 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation