Ex Parte Everaert et alDownload PDFPatent Trial and Appeal BoardJun 27, 201612516811 (P.T.A.B. Jun. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/516,811 01115/2010 Emmanuel Paul Jos Marie Everaert 201 7590 06/29/2016 UNILEVER PATENT GROUP 800 SYLVAN A VENUE AG West S. Wing ENGLEWOOD CLIFFS, NJ 07632-3100 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. J3857USw 1280 EXAMINER PARK, HAEJIN S ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 06/29/2016 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): patentgroupus@unilever.com pair_unilever@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMMANUEL PAUL JOS MARIE EVERAERT, ANDREW MALCOLM MURRAY, THUY-ANH PHAM, SMITAPUNTAMBEKAR1 Appeal2013-008735 Application 12/516,811 Technology Center 1600 Before ULRIKE W. JENKS, JACQUELINE T. HARLOW, and TA WEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a hair conditioning composition, which have been rejected as anticipated. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse the anticipation rejection and enter a new ground of rejection based on obviousness. 1 Appellants identify the Real Party in Interest as Conopco, Inc., d/b/a UNILEVER. (Br. 3.) Appeal2013-008735 Application 12/516,811 STATEMENT OF THE CASE According to the Specification, hair conditioning compositions have traditionally used a combination of cationic surfactants and fatty materials, which forms a lamellar gel phase that imparts a desirable viscosity and deposits on the hair to provide a conditioning benefit. (Spec. 1: 17-22.) Further according to the Specification, "lighter" conditioning products with reduced content of fatty material impart a less slippery and coated feel but may reduce the viscosity of the product to an unacceptable level, necessitating the inclusion of a thickener. (Id. at 1:24--2:1.) The Specification states that, with traditional cellulosic thickener, it is difficult to obtain appropriate viscosity profiles under different usage conditions. According to the Specification, this problem can be solved "if a polygalactomannan having hydrophilic and hydrophobic substituents is used to thicken the hair conditioning composition." (Id. at 2:26-29.) Claims 1 and 8 are on appeal and read as follows: Claim 1. A hair conditioning composition comprising (1) a cationic surfactant and (2) a fatty material which together form a lamellar gel phase suitable for providing hair conditioning attributes, (3) 0.005 to 5% by wt. of a polyalkylether of a polygalactomannan having hydrophilic substituent which is a hydroxypropyl group and hydrophobic substituent which is a linear alkyl group containing 14 to 28 carbons or a mixture of such alkyls, and ( 4) an aqueous carrier wherein said cationic surfactant is selected from the group consisting of (1) cationic surfactant which is a quaternary ammonium cationic surfactant corresponding to the following general formula (I): (I) 2 Appeal2013-008735 Application 12/516,811 in which R 1, R2, R3, and R 4 are each independently selected from (a) an aliphatic group of from 1 to 22 carbon atoms, or (b) an aromatic, alkoxy, polyoxyalkylene, alkylamido, hydroxyalkyl, aryl or alkylaryl group having up to 22 carbon atoms; and Xis a salt-forming anion such as those selected from halogen, acetate, citrate, lactate, glycolate, phosphate nitrate, sulphate, and alkylsulphate radicals; and (2) cationic surfactant which is a salt of an amine corresponding to the following general formula (II): R1 - C(O)- N(H)- R2 - N(R3)(R4) (II) in which R 1 is a fatty acid chain containing from 12 to 22 carbon atoms, R2 is an alkylene group containing from one to four carbon atoms, and R3 and R 4 are, independently, an alkyl group having from one to four carbon atoms; and (3) mixtures thereof; and wherein said fatty material is selected from cetyl alcohol, stearyl alcohol, behenyl alcohol, and mixtures thereof. Claim 8. A method of obtaining viscosity profile which permits controlled pouring product dosage on hair while also spreading hair product through the hair while simultaneously imparting less of a slippery and coated feel which method comprises applying to hair a lamellar gel phase hair condition composition according to claim 1. The claims stand rejected as follows: Claims 1and8 are rejected under 35 U.S.C. § 102(b) as being anticipated by Johnson. 2 2 Johnson et al., US 2006/0210509 Al, published Sept. 21, 2006 ("Johnson"). 3 Appeal2013-008735 Application 12/516,811 Issue I. The Examiner has rejected claims 1 and 8 under 35 U.S.C. § 102(b) as being anticipated by Johnson. The Examiner finds that Johnson discloses a Test Formulation comprising di-palmitoylethyldimonium chloride and stearylamidopropyl dimethylamine, which the Examiner finds to be cationic surfactants having the formulas set forth in claim 1. (Ans. 2.) The Examiner finds that the Test Formulation also contains fatty materials recited in claim 1 (stearyl and cetyl alcohols) and an aqueous carrier (water). (Id.) The Examiner finds that Johnson teaches including preferably about 0.2% to 5% by weight of one of five types of nonionic amphiphilic polymer in its formulation. (Id. at 3.) While the specific Test Formulation disclosed contains PPG-14 Palmeth-60 hexyl dicarbamate (Elfacos® T212) as the nonionic amphiphilic polymer, the Examiner finds that Johnson also teaches hydroxypropyl guar gum modified with a fatty chain, such as Esaflor® HM22 sold by Lamberti, as a nonionic amphiphilic polymer for use in its invention. (Id.) The Examiner finds that the Specification discloses Esaflor® HM22 as a substituted polygalactomannan falling within the scope of claim 1. (Id.) The Examiner finds that Johnson anticipates claim 1 because, given that Johnson teaches only five groups of nonionic amphiphilic polymers, a skilled artisan could have clearly envisaged Johnson's Test Formulation containing a modified hydroxypropyl guar instead of the Elfacos® T212. (Id.) 4 Appeal2013-008735 Application 12/516,811 Appellants contend that Johnson does not anticipate because the Test Formulation does not contain a claimed polygalactomannan (i.e., a modified hydroxypropyl guar with the claimed substituents) as the nonionic amphiphilic polymer. (Br. 10.) The issue with respect to this rejection is whether Johnson discloses all of the limitations of claim 1 combined in the same way as recited in the claim. Analysis An anticipation rejection is proper only when the claimed subject matter is identically disclosed or described in the prior art. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). In other words, "the [prior art] reference must clearly and unequivocally disclose the claimed [composition] or direct those skilled in the art to the [composition] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference." Id. (emphasis original). In this case, the portions of the Johnson reference relied on by the Examiner do not identically describe the claimed subject matter. As the Examiner acknowledges, the Test Formulation disclosed in Johnson would fall within the claims only if the nonionic amphiphilic polymer used in the formulation, PPG-14 Palmeth-60 hexyl dicarbamate, is replaced with a modified hydroxypropyl guar such as Esaflor® HM22. (Ans. 3.) We note but do not find persuasive the Examiner's argument that, because Johnson disclosed only a limited number of nonionic amphiphilic polymer categories, a skilled artisan can immediately envisage the Test Formulation containing a modified hydroxypropyl guar instead of PPG-14 5 Appeal2013-008735 Application 12/516,811 Pahneth-60 hexyl dicarbamate. (Id.) For the Test Formulation, Johnson disclosed a specific compound outside of the claim scope as the nonionic amphiphilic polymer, not a genus containing a claimed species. Thus, we are not convinced that the "at once envisage" line of cases is applicable. Furthermore, while we acknowledge that Johnson elsewhere in the reference also discloses modified hydroxypropyl guars as nonionic amphiphilic polymers useful for its invention, the current rejection is not an obviousness rejection under 35 U.S.C. § 103(a) where we can rely on known equivalence to support a finding of prima facie obviousness. Because the Examiner's anticipation rejection requires picking and choosing from parts of Johnson in order to arrive at the claimed invention, we are constrained to reverse the Examiner's rejection of claims 1 and 8. II. Under the provision of 3 7 C.F .R. § 41. 50(b ), we enter the following new ground of rejection: Claim 1 is rejected under 35 U.S.C. § 103(a) as obvious over Johnson. Findings of Fact FFl. Johnson teaches a hair conditioning composition having improved deposition on hair, comprising dispersed, non-volatile silicone conditioning agents, cationic conditioning surfactants, at least one nonionic amphiphilic polymer having at least one fatty chain and at least one hydrophilic unit, and water. (Johnson Abstract, i-fi-18-9.) FF2. Johnson teaches that suitable examples of nonionic amphiphilic polymers useful in its invention include ( 1) hydroxypropyl guars modified 6 Appeal2013-008735 Application 12/516,811 with groups containing at least one fatty chain; (2) polyether urethanes containing at least one fatty chain such as C8-C30 alkyl or alkenyl groups; (3) copolymers of vinylpyrrolidone and of hydrophobic monomers containing a fatty chain; ( 4) copolymers of C1--C6 alkyl methacrylates or acrylates and of amphiphilic monomers containing at least one fatty chain; and ( 5) copolymers of hydrophilic methacrylates or acrylates and of hydrophobic monomers containing at least one fatty chain. (Id. at i-fi-134--39.) FF3. Johnson teaches Esaflor® HM 22 (C22 alkyl chain) sold by the company Lamberti and Miracare XC9S-3 (C14 alkyl chain) and RE20S-1 (C20 alkyl chain) sold by the company RhonePoulenc as examples of hydroxypropyl guars modified with groups containing at least one fatty chain. (Id. at i135.) FF4. Johnson teaches Dapral® T210/Elfacos® T210, Dapral® T212/Elfacos® T212, and the Bermocoll PUR series, all sold by Akzo Nobel, as examples of polyurethanes containing at least one fatty chain such as Cs-C30 alkyl or alkenyl groups. (Id. at i136.) FF5. Johnson teaches using nonionic amphiphilic polymers, preferably in an amount which may range approximately from 0.01to10% by weight and more preferably from 0.2 to 5% by weight. (Id. at i140.) FF6. Johnson teaches that its composition optionally contains fatty alcohols. (Id. at ,-r 44.) 7 Appeal2013-008735 Application 12/516,811 FF7. Johnson discloses a test formulation containing the following ingredients: Citric acid 0.14% Stearylamidopropyl dimethylamine 0.8% Stearyl alcohol 1.9% Cetyl alcohol 0.8% Glycerl [sic] stearate 0.7% Steareth-20 0.3% Di-palmitoylethyldimonium chloride 2.75% PPG-14 Palmeth-60 hexyl dicarbamate 0.6% Dimethi cone 0.9% Water Qs (Johnson i-f 48.) FF8. The Specification states that "[t]raditionally [hair] conditioning compositions have used a combination of cationic surfactants and fatty materials such as long chain fatty alcohols," which combination "forms a lamellar gel phase which imparts a desirable viscosity to the product and deposits on the hair during use of the product to provide a conditioning benefit." (Spec. 1: 17-22; see also id. 8: 12-15.) FF9. The Specification states that specific examples of suitable quaternary ammonium cationic surfactants of general formula (I) include dipalmitoylethyldimethylammonium chloride. (Id. at 4:4, 5:6-22.) 8 Appeal2013-008735 Application 12/516,811 FFlO. The Specification states that specific examples of suitable cationic surfactants for use in the invention with general formula R1-C(O)-N(H)-R2-N(R3)(R4) (II) include stearamidopropyldimethylamine, which is particularly preferred. (Id. at 6:15, 23-31; 7:12.) FF 11. The Specification further states that commercially available examples of substituted polygalactomannans suitable for use in compositions of the invention include guar gums sold under the same Esaflor® HM22 by the company Lamberti. (Id. at 12:14--17.) FF12. The Specification provides evaluation of viscosity behavior under different shear stress for 3 compositions within the claimed invention (compositions 1, 2, and 3) and 4 comparative compositions (compositions A, B, C, and D). (Id. at 17-18, Tables 1, 2.) The ingredients of the compositions are set forth in Table 1, reproduced below: ? . J ':~ ,~ " :_.; c.- ·;· " ~-_.c_. " t) i::' ·J 9 I I I ~: '~ •t ') '" ;,: :) (: I ,, .. , I i I 1; I ~'. I .. ! '· ,") I ;)(\ c~ ~; .. , -~ r . .:-: (! ,'~ c' ·; ! c: .. , I I I i I I .. ! n :; i e ' c~ ~) I ~~ ' ".: I ' «: .. , ... I Appeal2013-008735 Application 12/516,811 Table 1 lists the ingredients for compositions 1-3 and A-D. The viscosity behavior of the compositions are set forth in Table 2, reproduced below: Viscosity Shear A B l C 2 D 3 (Pa.s) Stress (!?a) Table 2 provides the viscosity of compositions 1-3 and A-D under 4 different shear stress conditions. Analysis Claim 1 is directed toward a hair conditioning composition comprising (1) a cationic surfactant corresponding to particular formulas; (2) a fatty material selected from cetyl alcohol, stearyl alcohol, behenyl alcohol, and their mixtures; (3) 0.005 to 5% by weight of a polygalactomannan with specified hydrophilic and hydrophobic substituents; and (4) an aqueous carrier. The claim further recites that the cationic surfactant and fatty material together form a lamellar gel phase suitable for providing hair conditioning attributes. Johnson discloses a Test Formulation comprising stearylamidopropyl dimethylamine, di-palmitoylethyldimonium chloride, stearyl alcohol, cetyl alcohol, water, and 0.6% of the nonionic amphiphilic polymer PPG-14 Palmeth-60 hexyl dicarbamate. 3 (FF2, FF4, FF7.) In short, Johnson's Test 3 PPG-14 Palmeth-60 hexyl dicarbamate is also known as Elfacos® T212. (Ans. 3.) 10 Appeal2013-008735 Application 12/516,811 Formulation contains all of the ingredients of claim 1 except for the substituted po lygalactomannan. (FF9, FF 10.) Johnson further teaches that, in addition to polyether urethanes such as PPG-14 Palmeth-60 hexyl dicarbamate, suitable examples of nonionic amphiphilic polymer include modified hydroxypropyl guars such as Esaflor® HM 22. (FF2, FF3.) The Specification identifies Esaflor® HM 22 as a substituted polygalactomannans suitable for use in the invention. (FFl 1.) Applying the KSR standard of obviousness to the findings of fact, we conclude that the person of ordinary skill reasonably would have found it obvious to substitute Esaflor® HM 22, a known equivalent, for the PPG-14 Palmeth-60 hexyl dicarbamate used in Johnson's Test Formulation. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("If a person of ordinary skill can implement a predictable variation [of the prior art], § 103 likely bars its patentability. ") With regard to the claimed percentage weight of the substituted polygalactomannans, Johnson teaches using nonionic amphiphilic polymer in an amount ranging from 0.2% to 5% by weight (FF5); this amount is within the range recited for the substituted polygalactomannans in claim 1. Finally, although Johnson does not expressly disclose the formation of a lamellar gel phase, we find it reasonable to conclude that this functional limitation is an inherent characteristic of Johnson's Test Formulation in light of the substantial identity of its ingredients to the claimed composition. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where ... the claimed and prior art products are identical or substantially identical ... the PTO can 11 Appeal2013-008735 Application 12/516,811 require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.). We note but are not convinced by Appellants' arguments that the claims on appeal are not obvious. Appellants argue that there is no suggestion in the prior art that the "ideal" viscosity profile can be achieved only when modified hydroxylpropyl guar is used in lamellar compositions of the claimed invention. (Br. 11.) However, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . [A ]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR, 550 U.S. at 419--20. As discussed above, a skilled artisan would find it obvious to substitute the modified hydroxylpropyl guar for the nonionic amphiphilic polymer of Johnson's Test Formulation. Thus, claim 1 is obvious even if the substitution was made for reasons other than achieving a particular viscosity profile. Appellants further argue that they have submitted data showing unexpected results. (Br. 11.) Although Appellants do not point to any specific data, we have considered the viscosity data set out in Table 2 of the Specification. (FF12; see also Br. 9--10.) We are not persuaded of unexpected results based on that data, because the results are not commensurate with the scope of the claim. In re Lindner, 457 F.2d 506, 508 (CCP A 1972) ("It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims."). With respect to claimed compositions, the results shown in Table 2 of the 12 Appeal2013-008735 Application 12/516,811 Specification are limited to compositions containing a single substituted polygalactomannan, Esaflor® HM 22, at two different% weight (0.3 and 0.4), even though the claim encompasses significantly more compounds and a broad% weight range of 0.005 to 5%. (FF12.) Likewise, "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). The data in the Specification does not provide a comparison of the claimed composition with Johnson's formulations. In sum, we conclude that Johnson renders claim 1 obvious. SUMMARY We reverse the rejection of claims 1and8 under 35 U.S.C. § 102(b) as being anticipated by Johnson. We enter a new ground of rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Johnson for the reasons set forth above. We have not addressed dependent claim 8, but in the event of further prosecution we leave it to the Examiner to consider whether that claim should also be rejected over the prior art. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 13 Appeal2013-008735 Application 12/516,811 2004)). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. ... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... REVERSED; 37 C.F.R. § 41.50(b) 14 Copy with citationCopy as parenthetical citation