Ex Parte Arora et al

Patent Trial and Appeal Board

Jun 16, 2017

13709496 (P.T.A.B. Jun. 16, 2017)

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.
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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;
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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.
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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
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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’
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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
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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
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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
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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.
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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
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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.
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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
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