Ex Parte De Feij et al

Patent Trial and Appeal Board

Jan 9, 2019

14566909 (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/566,909 12/11/2014
67749 7590 01/11/2019
Ashland LLC
WILLIAM J. DA VIS, ESQ.
1005 U.S. 202/206
Bridgewater, NJ 08807
FIRST NAMED INVENTOR
Eric-Jan De Feij
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HER 11079USNP 3499
EXAMINER
DELCOTTO, GREGORYR
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
01/11/2019 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
wdavis@ashland.com
schen@ashland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC-JAN DE FEIJ,
EMMANUEL PAUL JOS MARIE EVERAERT,
MICHAEL ALBERT HERMANN FRANZKE, GIJSBERT KROON, and
TUTTU MARIA NUUTINEN
Appeal2018-003064
Application 14/566,909
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-20. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellant's invention is generally directed to a sulfate-free personal
1 Appellant is the applicant, Hercules LLC, which, according to the Appeal
Brief, is the real party in interest. Appeal Brief filed August 7, 2017 ("Br."),
4.
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Application 14/566,909
care cleansing composition. Spec. ,r 2. Claim 1 illustrates the subject matter
on appeal and is reproduced below with emphasis added to highlight
contested language:
1. A personal care cleansing composition comprising:
a) water;
b) up to about 10 wt%, based on the total weight of
the personal care cleansing composition, of a sulfate-free
surfactant selected from the group consisting of a sulfate-free
anionic surfactant, a sulfate-free amphoteric surfactant, a
sulfate-free nonionic/anionic surfactant mixture, and
combinations thereof;
c) a rheology modifying polymer;
d) a cationic-substituted guar; and
e) a copolymer of acrylamidopropyltrimonium
chloride and acrylamide, wherein the personal care cleansing
composition is sulfate-free.
App. Br. 29 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered March 2, 2017 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered November 17, 2017 ("Ans."):
I. Claims 1-7, 9-14, and 16-20 under 35 U.S.C. § 103 as
unpatentable over Bierganns2;
II. Claims 1-7, 10-13, 15-17, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over Niemiec 3;
III. Claims 9 and 14 under 35 U.S.C. § 103 as unpatentable over
Niemiec in view of Bierganns;
IV. Claim 8 under 35 U.S.C. § 103 as unpatentable over Niemiec or
2 Bierganns et al., US 2011/0002868 Al, published January 6, 2011.
3 Niemiec et al., US 6,908,889 B2, published June 21, 2005.
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Bierganns in view of Methocel Celluose Ethers4;
V. Claim 18 under 35 U.S.C. § 103 as unpatentable over Niemiec
in view of Bierganns; and
VI. Claim 15 under 35 U.S.C. § 103 as unpatentable over Bierganns
in view of Niemiec.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejections of
claims 1-20 under 3 5 U.S. C. § 103 for the reasons set forth in the Final
Office Action, the Answer, and below.
Rejections I and II
Appellant argues the claims subject to these rejections together on the
basis of claim 1, to which we accordingly limit our discussion. Br. 8-22;
37 C.F.R. § 4I.37(c)(l)(iv). Because Appellant presents substantially the
same arguments for each of Rejections I and II, we address these rejections
together, keeping in mind that the rejections are not based on a combination
of Bierganns and Niemiec; but, rather, Rejection I is based on Bierganns
alone and Rejection II is based on Niemiec alone.
It is undisputed on this appeal record that Bierganns and Niemiec each
disclose a personal care cleansing composition that comprises water; a
surfactant selected from the group consisting of an anionic surfactant, an
amphoteric surfactant, a nonionic/anionic surfactant mixture, and
combinations thereof; a rheology modifying polymer; a cationic-substituted
4 Methocel, Methocel Cellulose Ethers Technical Handbook, THE Dow
CHEMICAL COMPANY 1-29 (September 2002).
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Application 14/566,909
guar; and a copolymer of acrylamidopropyltrimonium chloride and
acrylamide. Compare Final Act. 4--8, with Br. 8-22. The dispositive issue
in this appeal is therefore whether the Examiner erred in finding that
Bierganns and Niemiec each disclose, or would have suggested, that the
personal care cleansing compositions described in the references include a
sulfate-free surfactant selected from the group consisting of a sulfate-free
anionic surfactant, a sulfate-free amphoteric surfactant, a sulfate-free
nonionic/anionic surfactant mixture, and combinations thereof, as recited in
claim 1 5. We answer this question in the negative for reasons that follow.
Bierganns discloses a personal care cleansing composition that
comprises a surfactant, among other ingredients. ,r,r 1, 55. Bierganns
discloses that "[ e ]xamples of the surfactants are anionic, nonionic,
zwitterionic, cationic or amphoteric type of surfactants, and blends thereof."
,r 56. Bierganns discloses numerous examples of each type of surfactant
suitable for use in Bierganns' cleansing composition, many of which are
sulfate-free. ,r,r 56-59. Specifically, Bierganns discloses that suitable
anionic surfactants include "alkyl and alkyl ether sulfates, phosphate esters,
and other anionic surfactants commonly used in personal care and household
formulations." ,r 56. Bierganns discloses that nonionic surfactants contain a
hydrophobic moiety and a nonionic hydrophilic moiety, and indicates that
suitable hydrophobic moieties include alkyl, alkyl aromatic, dialkyl siloxane,
5 Because the Examiner finds the prior art discloses personal care cleansing
compositions comprising a sulfate-free surfactant, we need not determine
whether the broadest reasonable interpretation of "up to about 10 wt%"
actually requires the presence of a sulfate-free surfactant. In re Mochel, 470
F.2d 638, 640 (CCPA 1972) (explaining that the term "up to" includes zero
as a lower limit.).
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polyoxyalkylene, and fluoro-substituted alkyls, while suitable hydrophilic
moieties include polyoxyalkylenes, phosphine oxides, sulfoxides, amine
oxides, and amides. ,r 57. Bierganns discloses that exemplary amphoteric
surfactants include derivatives of aliphatic secondary and tertiary amines in
which the aliphatic radical can be straight or branched chain, and one of the
aliphatic substituents contains from about 8 to about 18 carbon atoms, while
another of the aliphatic substituents contains an anionic water solubilizing
group, such as carboxy, sulfonate, sulfate, phosphate, or phosphonate. ,r 59.
The Examiner finds that Bierganns does not require inclusion of
sulfate-containing ingredients in the personal care cleansing composition
described in the reference. Ans. 11. The Examiner finds that Bierganns'
disclosure that the surfactant included in the composition may be anionic,
nonionic, zwitterionic, cationic, or amphoteric, and mixtures of such
surfactants, therefore, would have suggested use of sulfate-free surfactants in
Bierganns' cleansing composition. Id.
Similar to Bierganns, Niemiec discloses a cleansing composition that
includes a detergent, among other ingredients. Col. 2, 11. 34--39. Niemiec
discloses that the detergent may include "anionic surfactants, nonionic
surfactants, cationic surfactants, amphoteric surfactants (including betaine
surfactants and zwitterionic surfactants) and mixtures thereof." Col. 6,
11. 47-54. Niemiec discloses numerous examples of each type of surfactant
suitable for use in Niemiec' s cleansing composition, many of which are
sulfate-free. Col. 6, 1. 55---col. 7, 1. 48. Specifically, Niemiec discloses that
exemplary suitable anionic surfactants include alkyl sulfates, sulfate esters
of an alkylphenoxy polyoxyethylene ethanol, alpha-olefin sulfonates,
betaalkyloxy alkane sulfonates, alkyl arylsulfonates, alkyl carbonates, alkyl
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ether carboxylates, fatty acids, sulfosuccinates, alkyl ether sulfosuccinates,
sarcosinates, octoxynol phosphates, nonoxynol phosphates, taurates, fatty
taurides, sulfated monoglycerides, fatty acid amido polyoxyethylene
sulfates, isethionates, and mixtures thereof. Col. 6, 11. 55---64. Niemiec
discloses that exemplary suitable nonionic surfactants include polysorbate
20, long chain alkyl glucosides having alkyl groups containing about 8
carbon atoms to about 22 carbon atoms, coconut fatty acid
monoethanolamides such as cocamide MEA, coconut fatty acid
diethanolamides, and mixtures thereof. Col. 7, 11. 13-23. Niemiec discloses
that exemplary suitable amphoteric surfactants include amphocarboxylates,
alkyl betaines, amidoalkylbetaines, amidoalkylsultaines, amphophosphates,
phosphobetaines, pyrophosphobetaines, carboxyalkyl alkyl polyamines, and
mixtures thereof. Col. 7, 11. 35--48.
The Examiner finds that Niemiec does not require inclusion of
sulfate-containing ingredients in the cleansing composition described in the
reference. Ans. 11. The Examiner finds that Niemiec' s disclosure that the
surfactant included in the composition may be anionic, nonionic, cationic,
amphoteric, or zwitterionic, and mixtures of such surfactants, therefore,
would have suggested use of sulfate-free surfactants in Niemiec' s cleansing
composition. Id.
Appellant argues that it is known in art that personal care
compositions typically employ sulfate-based surfactant systems due to
numerous advantages imparted to such compositions by sulfate-based
surfactants. Br. 8-9. Appellant argues that sulfate-free surfactant systems
are known to have deficiencies and inferior performance, and Appellant
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contends that "known sulfate-free surfactants have been wholly inadequate
or unacceptable for use in personal care compositions." Br. 9.
Appellant does not provide any evidence to support these assertions,
however. Because it is well-established that unsupported attorney
arguments cannot take the place of evidence necessary to resolve a disputed
question of fact, Appellant's arguments lack persuasive merit. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) ("An assertion of what seems to
follow from common experience is just attorney argument and not the kind
of factual evidence that is required to rebut a prima facie case of
obviousness."); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1043 (Fed. Cir. 2017) ("[a]ttorney argument is not evidence" and cannot
rebut other admitted evidence).
Appellant argues that Bierganns and Niemiec each disclose use of
categories of surfactants that encompass all known types of surfactants, and
Appellant contends that Bierganns and Niemiec thus disclose "the use of any
or all surfactants-a class of compounds comprising thousands of
constituent members." Br. 11, 19. Appellant argues that "[g]iven what one
of ordinary skill in the art would have understood about the use of
surfactants in personal care compositions," the "broad, isolated, and non-
illuminating teaching" in each of Bierganns and Niemiec that the surfactant
can be "any" surfactant "without any specific teaching as to the desired
function or performance for the surfactant, does not rise to the level of
explicitly or inherently teaching a surfactant-based composition that must
necessarily include only sulfate-free surfactants as is presently claimed." Br.
12-14, 20.
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We note initially that, as discussed above, Appellant does not provide
any evidence establishing what one of ordinary skill in the art would have
understood about the use of surfactants in personal care compositions at the
time of Appellant's invention. Although Bierganns and Niemiec disclose
that anionic, nonionic, zwitterionic, cationic, or amphoteric surfactants, and
mixtures thereof, may be used in the cleansing compositions described in the
references, as discussed above, both references discloses numerous
examples of suitable surfactants, many of which are sulfate-free. The
entirety of Bierganns' and Niemiec' s disclosures must be evaluated for what
they would have fairly suggested to one of ordinary skill in the art at the
time of Appellant's invention. Accordingly, although each of Bierganns and
Niemiec may have suggested cleansing compositions that include sulfate-
containing surfactants, both references nonetheless also would have
suggested sulfate-free cleansing compositions that include sulfate-free
surfactants as recited in claim 1, regardless of whether the references fail to
include "any specific teaching as to the desired function or performance for
the surfactant." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)("[T]he fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered."); In re Boe, 355 F.2d 961,965 (CCPA 1966) (All of the
disclosures in a prior art reference "must be evaluated for what they fairly
teach one of ordinary skill in the art.").
Furthermore, Bierganns' and Niemiec' s asserted disclosure of
"thousands" of effective surfactants does not render use of any particular
surfactant-such as any of the explicitly disclosed sulfate-free surfactants-
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less obvious. Merck v. Biocraft, 874 F.2d at 807 (The fact that a reference
"discloses a multitude of effective combinations does not render any
particular formulation less obvious."); In re Corkill, 771 F.2d 1496, 1500
(Fed. Cir. 1985) (An obviousness rejection was affirmed in light of a prior
art teaching that "hydrated zeolites will work" in detergent formulations,
even though "the inventors selected the zeolites of the claims from among
'thousands' of compounds".)
Appellant argues that "the stated purpose of Bierganns is to provide a
surfactant-based formulation with improved clarity of the resulting
formulations, improved conditioning of substrates, and improved deposition
onto substrates----qualities only known at the time to be possessed by sulfate-
containing surfactant systems." Br. 14. Similarly, Appellant argues that
"the stated purpose of Niemiec is to provide a high-lathering surfactant-
based formulation with improved clarity of the resulting formulations,
conditioning of substrates, and deposition onto substrates----qualities only
known at the time to be possessed by sulfate-containing surfactant systems."
Br. 20 (citing Niemiec col. 1, 11. 39--67; col. 2, 11. 1-31). Appellant argues
that "it was known that, compared to sulfate-containing surfactant systems,
sulfate-free surfactant systems provided inferior clarity, cleansing, and
deposition of conditioners," which Appellant argues is diametrically
opposite to the cleansing compositions of Bierganns and Niemiec. Br. 14--
15, 21 ( citing Spec. ,r 6).
Appellant, however, does not provide any objective evidence
establishing that particular qualities of cleansing compositions, such as those
disclosed in Bierganns and Niemiec, were known to be possessed only by
cleansing compositions that include a sulfate-containing surfactant system.
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Nor does Appellant provide any objective evidence establishing that
cleansing compositions that include a sulfate-free surfactant system were
known to provide inferior clarity, cleansing, and deposition of conditioners
relative to cleansing compositions that include a sulfate-containing
surfactant system6• Consequently, Appellant's arguments lack persuasive
merit. Geisler, 116 F.3d at 1470; Icon, 849 F.3d at 1043.
Appellant argues that all of the Examples set forth in both Bierganns
and Niemiec are directed to sulfate-containing formulations. Br. 14, 20.
Appellant argues that given the knowledge in the art at the time of
Appellant's invention of the undesirability of sulfate-free surfactant use, and
the fact that all of the exemplary formulations of Bierganns and Niemiec
comprise a sulfate-containing surfactant, "a person of ordinary skill in the art
would be bereft of any motivation or reasonable expectation of success in
modifying the teachings and/or exemplary compositions of Bierganns to
arrive at a sulfate-free surfactant personal care composition." Br. 14--15, 21.
As discussed above, Appellant does not provide any evidence
establishing the "undesirability of sulfate-free surfactant use" at the time of
Appellant's invention. In addition, the disclosures of Bierganns and
Niemiec are not limited to the experimental examples provided in the
references, and all of the references' disclosures must be evaluated for what
they would have fairly suggested to one of ordinary skill in the art at the
time of Appellant's invention. In re Fracalossi, 681 F.2d 792, 794 n.1
(CCPA 1982) (A prior art reference's disclosure is not limited to its
6 The Fan patent submitted by Appellant ( discussed more fully below)
describes stability problems exhibited by sulfate-free surfactants. (Br. 14--
15; Fan col. 1, 11. 39---64; col. 2, 11. 31--44; col. 5, 11. 45-50).
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examples.) In view of Bierganns' and Niemiec' s disclosure of numerous
exemplary sulfate-free surfactants suitable for use in the cleansing
compositions described in the references, one of ordinary skill in the art
reasonably would have expected that a satisfactory sulfate-free cleansing
composition that includes one or more of the sulfate-free surfactants
disclosed in each reference could be successfully produced.
Appellant argues that Rejections I and II are based on impermissible
hindsight because the Examiner uses the claimed personal care cleansing
composition as a guide/recipe to find selected teachings in Bierganns and
Niemiec that somewhat support the rejection, while ignoring those aspects of
Bierganns and Niemiec that, when taken as a whole and in context,
undermine a finding of obviousness. Br. 15-17, 21-22.
Contrary to Appellant's arguments, the Examiner articulates a
thorough, reasoned explanation for why the relied-upon disclosures of each
of Bierganns and Niemiec would have led one of ordinary skill in the art to a
personal care cleansing composition as recited in claim 1. Final Act. 5-8.
Appellant's conclusory argument fails to identify any specific error in the
Examiner's rationale for why Bierganns and Niemiec would have suggested
the "requisite components" of the composition of claim 1 "in the specific
amounts" recited in the claim, and Appellant's argument is therefore
unpersuasive of reversible error in the Examiner's rejection. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness") (cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398,418 (2007)).
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Appellant argues that the "inventors surprisingly found that a specific
composition comprising a sulfate-free surfactant can be used in personal
care compositions while maintaining and/or improving the desired
effectiveness of the composition in foam production and stability, deposition
of conditioners or health aids, thickening, clarity, and cleansing." Br. 9.
Appellant, however, does not direct us to any evidence whatsoever in
support of this assertion of surprising results. Br. 8-27. "It is well settled
that unexpected results must be established by factual evidence. 'Mere
argument or conclusory statements in the specification does not suffice."'
Geisler, 116 F.3d at 1470 (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Accordingly, Appellant's unsupported argument does not meet the
burden of establishing that the personal care cleansing composition recited
in claim 1 imparts results that would have been unexpected to one of
ordinary skill in the art at the time of Appellant's invention relative to the
cleansing compositions disclosed in either Bierganns or Niemiec, the closest
prior art. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("the burden of
showing unexpected results rests on he who asserts them"); In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.").
Appellant argues that the claimed composition provides several
advantages over sulfate surfactant-containing compositions, as outlined in
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Appellant's Specification and drawings. Br. 9 (citing ,r,r 110-121 7 and
figures lB, 2B, 4, 5, and 6 of the application as filed.). Appellant argues that
"[ a ]lthough long-desired, Appellant has done what no others before were
capable of doing: providing a sulfate-free surfactant composition that
addresses all of the ... [known] functional challenges and limitations of
sulfate-free surfactants in personal care compositions." Br. 9.
As discussed above, however, Appellant does not provide any
evidence to support the assertion that functional challenges and limitations
of sulfate-free surfactants in personal care compositions were known in the
art at the time of Appellant's invention. Furthermore, Appellant does not
provide evidence demonstrating that there was a long-felt need or unsolved
problem that was solved by their invention. Br. 8-27; In re Mixon, 470 F.2d
1374, 1377 (CCPA 1973). Appellant does not show that the solution to the
problem of developing a personal care cleansing composition comprising
one or more sulfate-free surfactants would not have been apparent to one of
ordinary skill in the art from the teachings of the applied prior art,
particularly Bierganns or Niemiec. Br. 8-27; In re Gershon, 372 F.2d 535,
538-39 (CCPA 1967) (Establishing long-felt need requires objective
evidence showing existence of a persistent problem recognized by those of
ordinary skill in the art for which a solution was not known.). We note that
the Fan patent submitted by Appellant earlier in prosecution8 and cited in
7 Although Appellant cites paragraphs 130-142 "of the application as filed"
these paragraphs do not exist in the Specification as originally filed. Br. 9.
Appellant appears to refer to paragraphs 130-142 of the published
application, which correspond to paragraphs 110-121 of the Specification as
filed.
8 Response filed November 30, 2016.
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Appellant's Appeal Brief (Br. 14--15) discloses that including a particular
amount of sulfosuccinic acid or a salt thereof in a cleansing composition for
hair and skin solved the problem of poor stability exhibited by a sulfate-free
surfactant system used in the composition. Fan col. 1, 11. 39---64; col. 2,
11. 31--44; col. 5, 11. 45-50; Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d
757, 768 (Fed. Cir. 1988) (The long-felt need must not have been satisfied
by another before the invention by applicant.). Claim 1 does not exclude a
stabilizing acid or salt as disclosed in Fan due to the "comprising" transition
in the claim.
Accordingly, considering the totality of the evidence relied-upon in
this appeal, a preponderance of the evidence weighs in favor of the
Examiner's conclusion that the personal care cleansing composition recited
in claim 1 would have been obvious to one of ordinary skill in the art at the
time of Appellant's invention. We accordingly sustain the Examiner's
rejection of claims 1-7, 9-14, and 16-20 under 35 U.S.C. § 103 as
unpatentable over Bierganns, and rejection of claims 1-7, 10-13, 15-17, 19,
and 20 under 35 U.S.C. § 103 as unpatentable over Niemiec.
Rejections III-VI
To address these rejections, Appellant relies on the arguments made
for Rejections I and II ( discussed above), and argues that the references
applied in these rejections fail to cure the deficiencies of Bierganns and
Niemiec individually. Br. 22-27. Because we are unpersuaded of reversible
error in Rejections I and II for the reasons discussed above, Appellant's
position as to these rejections is also without merit.
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DECISION
We affirm the Examiner's rejections of claims 1-20 under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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