Ex Parte Cannell et al

Patent Trial and Appeal Board

Jan 24, 2013

11301184 (P.T.A.B. Jan. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID W. CANNELL and MIKE WONG
__________

Appeal 2011-010015
Application 11/301,184
Technology Center 1600
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a hair-treating
cosmetic composition. The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Exposure to low or high humidity conditions tends to cause hair to
lose its shape, curl definition, and/or become frizzy due to the loss of water
from the fibers (Spec. [0001]). While hair benefit agents such as styling
polymers have been incorporated into shampoos and conditioners to seal
moisture into the hair fibers, “these hair benefit agents are either rinsed off
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and/or neutralized after their application onto the hair fibers. It is therefore
an object of the present invention to provide a composition and process for
inhibiting water loss from hair fibers upon exposure to high or low
humidity” (id. at [0001]-[0002]).
Claims 1-9 and 13-16 stand rejected and appealed (App. Br. 2).
Claim 1, the only independent claim, illustrates the appealed subject matter
and reads as follows:
1. A cosmetic composition capable of inhibiting water loss
from hair fibers comprising:
(a) at least one lecithin;
(b) at least one amphoteric surfactant;
(c) at least one nonionic surfactant;
(d) at least one film forming polymer;
(e) at least one cationic polymer; and
(f) at least one small molecule chosen from arginine,
asparagine, aspartic acid, glutamine, glutamic acid, histidine,
lysine, serine, threonine, their salts and derivatives, urea, its
salts and derivatives, and guanidine, its salts and derivatives.

The following rejections are before us for review:
(1) Claims 1-4, 8, 9, and 13-15, under 35 U.S.C. § 103(a) as obvious
over Cho1 and Mausner2 (Ans. 3-5);3 and

1 U.S. Patent No. 6,620,410 B1 (issued September 16, 2003).
2 U.S. Patent No. 4,140,759 (issued February 20, 1979).
3 On page 3 of the Answer the Examiner did not list claims 8 and 9 among
the claims rejected over Cho and Mausner. Both Appellants and the
Examiner agree, however, that those claims were in fact rejected (see App.
Br. 2; see also Ans. 2; see also Final Rejection 1 (entered May 7, 2010)). As
the Examiner made findings, undisputed by Appellants, that Cho’s shampoo
composition included a film forming polymer at a concentration within the
range recited in claim 8, and also included a cationic polymer at a
concentration within the range recited in claim 9 (see Ans. 3), we consider
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(2) Claims 5-7 and 16, under 35 U.S.C. § 103(a) as obvious over Cho,
Mausner, and Cannell4 (Ans. 5-7).
OBVIOUSNESS – CHO AND MAUSNER
The Examiner found that Cho described a shampoo that contained all
of the ingredients recited in Appellants’ claim 1, except for a lecithin as
required by component (a), and a small molecule as required by component
(f) (Ans. 3-4). To address that deficiency, the Examiner cited Mausner as
describing a shampoo that contained, in addition to conventional ingredients
such as surfactants, a protein detergent that included component (a)’s
lecithin, as well as a number of the amino acids recited under component (f)
(id. at 4).
Based on the references’ teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious to incorporate Mausner’s
protein detergent into Cho’s shampoo composition, “because 1) Cho teaches
adding protein hair conditioning components; and 2) Mausner teaches the
amino acid-enriched protein detergent complex provides unique mildness
and hair conditioning properties” (id. at 5). The Examiner further reasoned:
Since the Cho formulas already use[] proteins in the shampoo
formula and Mausner teaches using conventional shampoos as
the vehicle to deliver the amino acid-protein detergent complex,
the skilled artisan would have had a reasonable expectation of
successfully producing a stable shampoo formula of Cho
comprising the active ingredient of Mausner which provides
UV protection as well as improved mildness and hair
conditioning properties to hair.

the Examiner’s omission of claims 8 and 9 from the list of claims subject to
the Cho/Mausner rejection to be an inadvertent typographical error.
4 U.S. Patent No. 6,558,697 B2 (issued May 6, 2003).
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(Id.)
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

As Appellants have not argued the patentability of the claims subject
to this ground of rejection separately, the claims stand or fall together. See
37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ arguments do not persuade us that a preponderance of the
evidence does not support the Examiner’s conclusion that claim 1 would
have been prima facie obvious to an ordinary artisan.
Cho describes hair care compositions, which “provide protection
against sun exposure (e.g., exposure to ultraviolet radiation) and repeated
chemical treatment” (Cho, col. 1, ll. 31-32), and which may be in the form of
a shampoo (id. at col. 1, ll. 40-41). The Examiner found, and Appellants do
not dispute, that Cho’s shampoo compositions differ from the composition
of claim 1 only in that Cho’s compositions did not contain lecithin
(ingredient (a)), nor did they contain at least one of the small molecules
listed as ingredient (f).
As the Examiner pointed out, however, Mausner discloses a
“shampoo composition based on a biologically derived protein detergent
which is uniquely mild and possesses hair conditioning properties”
(Mausner, col. 1, ll. 39-42). Mausner explains that the improved shampoo is
prepared by combining a composition that contains surfactants and other
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ingredients conventionally used in shampoos, with a “biologically derived
protein detergent known as a lipo protein natural detergent complex which is
a complex mixture of lecithins, phospholipids, lipo-protein, lipo-
oligopeptides, and amino acids” (id. at col. 1, 48-52).
Mausner discloses that its critical protein detergent additive, termed
“CLP-3,” may be present in shampoo compositions at a range from about 5
to 30% by weight of the total composition, with other surfactants being
present in amounts from about 10 to 50% by weight of the total composition
(id. at col. 4, ll. 1-6). In addition to the lecithin listed as ingredient (a) of the
composition of Appellants’ claim 1, as the Examiner found, Mausner’s
CLP-3 contains a number of the small molecules listed as ingredient (f) of
claim 1 (see id. at Figure 5). As the Examiner also found, Mausner also
discloses that “CLP-3 has extraordinary antibacterial properties” (id. at col.
4, ll. 53-54).
Thus, given Mausner’s disclosure of the advantageous hair
conditioning and antibacterial properties conferred by CLP-3 to a shampoo
composed of conventional ingredients, Appellants’ arguments do not
persuade us that the prior art cited by the Examiner would have failed to
provide an ordinary artisan with a reason to include CLP-3 in Cho’s
shampoo.
We are also not persuaded, as Appellants suggest, that picking and
choosing from among the various ingredients in CLP-3 would have been
required to arrive at the composition recited in claim 1. Rather, because
Appellants’ claim 1 requires only one of the compounds listed under
ingredient (f) to be present the claimed composition, simply including
CLP-3 in Cho’s shampoo for the advantages suggested by Mausner would
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have resulted in a composition encompassed by claim 1, since CLP-3
includes a number of the amino acids recited in ingredient (f), in addition to
the lecithin recited as ingredient (a).
Moreover, even if it were true that the prior art suggested combining
the claimed ingredients for a different reason than Appellants’ purpose of
inhibiting water loss from hair, that fact does not demonstrate that the claims
would have been unobvious to an ordinary artisan. See KSR Int’l v. Teleflex
Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject matter
of a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.”).
Thus, Appellants’ arguments do not persuade us that a preponderance
of the evidence fails to support the Examiner’s prima facie case of
obviousness as to claim 1. We are also not persuaded that Appellants have
advanced evidence of unexpected results sufficient to overcome the
Examiner’s prima facie case.
As our reviewing court has also noted, “[m]ere improvement in
properties does not always suffice to show unexpected results. . . . [W]hen
an applicant demonstrates substantially improved results . . . and states that
the results were unexpected, this should suffice to establish unexpected
results in the absence of evidence to the contrary.” In re Soni, 54 F.3d 746,
751 (Fed. Cir. 1995).
We note the disclosure in the Specification that treating hair tresses
with a shampoo including ingredients encompassed by claim 1 gave a
“statistically significantly greater percentage of curl retention” under both
low and high humidity conditions as compared to a control shampoo (see
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Spec. [0033]-[0039]). We also note that hair tresses treated with a shampoo
including ingredients encompassed by claim 1 are described as having
“statistically significantly lower frizz” than hair treated with the control
shampoo (see id. [0040]-[0043]).
Appellants do not, however, direct us to any statement in the
Specification asserting that these results were unexpected. While Appellant
argues that the results were “surprising, unexpected and ‘unpredictable’”
(App. Br. 8), argument by counsel is not an adequate substitute for actual
evidence of unexpected results. See In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997).
Further, as the Federal Circuit has also pointed out, “when unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Here, Cho’s shampoo undisputedly contains both an amphoteric
surfactant (cocamidopropyl betaine) and a cationic polymer
(polyquaternium) (see Cho, col. 10, ll. 16-48 (Example 1)), whereas those
ingredients do not appear in the control shampoo used in Appellants’
comparison (see Spec. [0033]). Similarly, Mausner’s shampoo contains
glutamic acid (see Mausner, Fig. 5), whereas the control shampoo used in
Appellants’ comparison does not (see Spec. [0033]).
Thus, we are not persuaded that the results presented in the
Specification reflect an adequate comparison between a shampoo
encompassed by claim 1 and either Cho or Mausner, which on this record
describe the closest prior art compositions to Appellants’ claims. Moreover,
glutamic acid is the only small molecule encompassed by claim 1’s
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ingredient (f) present in the shampoo described as having improved
properties (see Spec. [0033]). However, as claim 1 does not require
glutamic acid to be present in the claimed composition, claim 1 is not
commensurate in scope with the evidence advanced by Appellants as
demonstrating an unexpected result.
In sum, for the reasons discussed above, we are not persuaded that the
Examiner failed to make out a prima facie case of obviousness as to claim 1.
As we are also not persuaded that Appellants have advanced sufficient
evidence of secondary considerations of non-obviousness to outweigh the
evidence of prima facie obviousness, we affirm the Examiner’s rejection of
claim 1 over Cho and Mausner.
As they were not argue separately, claims 2-4, 8, 9, and 13-15 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS – CHO, MAUSNER, AND CANNELL
The Examiner also rejected claims 5-7 and 16 as obvious over Cho,
Mausner, and Cannell (Ans. 5-7).
As to claims 5-7, the Examiner found that, although “Mausner
suggests less than 10 % by weight of the combination of lecithin and the
amino acids are used in a shampoo formula, the reference does not
specifically teach the weight limitations of the instant claims” (id. at 5). The
Examiner found, however, that Cannell taught that the lecithin:amphoteric
surfactant:nonionic surfactant ratio recited in claims 5-7 was suitable in
shampoo formulations (id. at 5-6), and reasoned that an ordinary artisan
would therefore have considered it obvious to
modify the teachings of Cho/Mausner by adding the
lipoprotein-amino acid mixture of Mausner or similar thereto,
wherein the weight amount of lecithin is about less than or
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equal to 5 %, as motivated by Cannell, because the latter
teaches using such amount of lecithin in a shampoo provides
beneficial hair conditioning properties including softness,
strength, added shine, and easy detangling of hair.

(Id. at 6.)
Appellants’ arguments do not persuade us that the Examiner’s
conclusion of obviousness is erroneous.
Claim 5 recites “[t]he composition of claim 1 wherein the ratio by
weight of (a) : (b) : (c) is at least about 1:0.8:2” (App. Br. 15).
As the Specification explains, “[t]he ratio is considered to be ‘above’
1/0.8/2 when the amount of either of the surfactants increases” (Spec.
[0013]). Thus, claim 5 encompasses compositions in which the amphoteric
surfactant (component (b)) is present in an amount greater than 0.8 times the
amount of lecithin present, and in which the nonionic surfactant (component
(c)) is present in amount at least twice that of the lecithin. Claim 5 therefore
also encompasses compositions in which the amphoteric and nonionic
surfactants are present at relative concentrations many times higher than the
lecithin.
As the Examiner pointed out, Cannell discloses an aqueous vehicle
that provides “hair styling compositions with little or no volatile organic
content which still effectively solubilize styling ingredients and hold the hair
while still allowing the hair to be shiny, flexible, and washable” (Cannell,
col. 2, ll. 60-63), the vehicle being useful in styling compositions such as
shampoos (id. at col. 4, ll. 12-14). As the Examiner also pointed out,
Cannell discloses that its compositions should contain phospholipid (which
may be lecithin), amphoteric surfactant, and nonionic surfactant at a
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preferred ratio of above 1:1.2:2 (see id. at col. 6, ll. 33-52), a ratio
encompassed by Appellants’ claim 5.
Thus, we agree with the Examiner that an ordinary artisan, already
advised that Mausner’s CLP-3 (of which lecithin is only a portion) is
suitably present in shampoo compositions at a significantly lower
concentration than the surfactants (see Mausner, col. 4, ll. 1-6), would have
been prompted by Cannell to ensure that, when including Mausner’s CLP-3
in Cho’s shampoo, the resulting composition included lecithin, amphoteric,
and nonionic surfactants at the ratio taught by Cannell as being desirable in
shampoo compositions. As Appellants’ arguments do not, therefore,
persuade us that the Examiner failed to make out a prima facie case of
obviousness as to claim 5, we affirm the Examiner’s rejection of that claim,
and claims 6 and 7 fall with claim 5. See 37 C.F.R. § 41.37(c)(1)(vii).
We also find Appellants’ arguments unpersuasive as to claim 16
Claim 16 recites “[t]he composition of claim 1 wherein the at least
one small molecule is present in an amount of from about 0.01% by weight
to about 5% by weight, based on the weight of the composition” (App. Br.
16).
The Examiner stated:
With respect to claim 16, since the Mausner shampoo
contains 10 % by weight of the lipoprotein-amino acid complex
in which protein and lipoprotein content is about 0.365 % and
lecithin and phospholipids may be at most 5 % by weight based
on the weight of the final composition, the artisan of ordinary
skill would have obviously found the suitable weight amount of
the amino acids for a shampoo to be about less than 5 % by
weight. Discovering the optimal weight range for amino acids
suitable for the hair conditioning shampoo by routine
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experimentations would have been well within the skill of the
art.
(Ans. 7.)
As the Federal Circuit has pointed out, “[w]here ‘the difference
between the claimed invention and the prior art is some range or other
variable within the claims . . ., the [applicants] must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results.’” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004) (quoting In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990)); see also Gardner v. TEC Systems, Inc., 725 F.2d
1338, 1349 (Fed. Cir. 1984) (claimed device that differed from the prior art
with respect to dimensional limitations but performed and operated in the
same manner as the prior art device held obvious).
Here, Appellants point to no clear or specific evidence suggesting that
the concentration of component (f) recited in claim 16 provides an
unexpected result. Moreover, the fact that an ordinary artisan’s optimization
of the amount of Mausner’s CLP-3 in a shampoo composition might not
have been for Appellants’ express purpose of retaining moisture in the hair
does not demonstrate that the claim would have been unobvious to an
ordinary artisan. See KSR, 550 U.S. at 419 (“In determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls.”). Thus, as Appellants’
arguments do not persuade us that the Examiner erred in concluding that
claim 16 would have been obvious to an ordinary artisan, we affirm the
Examiner’s rejection of that claim as well.
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SUMMARY
We affirm the Examiner’s obviousness rejection of claims 1-4, 8, 9,
and 13-15 over Cho and Mausner.
We also affirm the Examiner’s obviousness rejection of claims 5-7
and 16 over Cho, Mausner, and Cannell.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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