Ex Parte Grit et al

Patent Trial and Appeal Board

Nov 10, 2016

13512930 (P.T.A.B. Nov. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/512,930 05/31/2012
27387 7590 11/10/2016
LONDA, BRUCE S,
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD A VE, 8TH FLOOR
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Mustafa Grit
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.
101216-187 1517
EXAMINER
FUBARA, BLESSING M
ART UNIT PAPER NUMBER
1613
MAILDATE DELIVERY MODE
11/10/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUSTAFA GRIT and JONATHAN WOOD
Appeal2015-004247
Application 13/512,930
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving a styling
composition. The Examiner rejected the claims as anticipated and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"Aerosol hair styling compositions have been widely used either as a
spray, aerosol or non-aerosol, or as foam. In principal [sic], they comprise
hair fixing polymers in an aqueous or aqueous alcoholic medium together
1 Appellants identify the Real Party in Interest as KAO GERMANY GMBH
(see Br. 2).
Appeal2015-004247
Application 13/512,930
with a propellant in case of an aerosol composition" (Spec. 1 ). "The present
inventors have surprisingly found out that a composition comprising at least
one film forming polymer and at least one dipeptide in an aqueous, aqueous-
alcoholic or alcoholic medium has excellent hair styling and restyling
benefits together with excellent volumizing and bodifying effects." (Spec.
1 ).
The Claims
Claims 1, 3-14, and 16-18 are on appeal. Claim 1 is representative
and reads as follows:
1. A styling composition for keratin fibres for human hair
comprising an aqueous, aqueous - alcoholic or alcoholic
medium, at least one film forming polymer selected from the
group consisting of vinylpyrorolidone [sic] polymers including
homopolymers and copolymers, and acrylate copolymers, and
at least one dipeptide.
Tlze Issites
A. The Examiner rejected claims 1, 3-12, 14, and 16-18 under 35 U.S.C.
§ 102(b) as anticipated by Kiffel2 as evidenced by Schuss3 (Ans. 2--4).
B. The Examiner rejected claims 1 and 13 under 35 U.S.C. § 103(a) as
obvious over Kiffel as evidenced by Schuss and Liberty4 (Ans. 5).
A. 35 USC§ 102(b) over Kiffe! as evidenced by Schuss
The Examiner finds
2 Kiffel et al., US 4,837,012, issued June 6, 1989 ("Kiffel").
3 Schuss et al., US 2007 /0079935 Al, published Apr. 12, 2007
("Schuss").
4 Liberty et al., US 2008/0142032 Al, published June 19, 2008.
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Application 13/512,930
Kiffel discloses composition comprising about 0.1-3% film
forming polymer such as polyvinylpyrrolidone,
polyvinylpyrrolidone-quatemized amino acrylate or amino
methacrylate copolymer, polyvinylpyrrolidone-vinyl acetate
copolymer, linear polymers of l-vinyl-2-pyrrolidone monomers,
octylacrylamide/ acrylates/ butylaminoethyl/ methacrylate
copolymer (column 2, lines 67 to column 3, line 6; claim 12)
with the 0.1-35 being a species of the claimed range of0.1-25%
in claim 9; amino acids such as L-camosine (column 2, line 37;
claim 1) ... water or ethanol or isopropanol or mixtures are
acceptable carrier vehicle (claim 2; column 2, lines 54-65)
(Ans. 3).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Kiffel anticipates the claims?
Findings of Fact
1. Kiffel teaches that a "method of reviving unwashed, oily hair
comprises applying to the hair, preferably via a spray mist, a composition
consisting essentially of at least one film-forming amino acid metal salt in a
cosmetically acceptable vehicle" (Kiffel 2: 16-20).
2. Kiffel teaches "metal salts of amino acids have been
surprisingly found to display film-forming properties. These amino acids
include ... L-camosine" (Kiffel 2:33-37).
3. Kiffel teaches "[ o ]ther ingredients that may be added are
conventional film-forming polymers, such as polyvinylpyrrolidone-
quatemized amino acrylate or amino methacrylate copolymer,
polyvinylpyrrolidone-vinyl acetate copolymer, linear polymers of 1-vinyl-2-
pyrrolidone monomers, octylacrylamide/acrylates/ butylaminoethyl/
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Appeal2015-004247
Application 13/512,930
methacrylate copolymer, hydroxyethylcellulose and diallyldimethyl
ammonium chloride copolymer and the like, and mixtures thereof'
(Kiffel 2: 66 to 3: 6).
Principles of Law
"A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation."
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005).
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
Analysis
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. The limitations at
issue are "at least one dipeptide" in claim 1 and "wherein at least one
dipeptide is camosine" in claim 6.
Appellants contend that a "metal salt of L-camosine is a different
species, and does not anticipate the amino acid 'camosine.' Indeed, a
'di peptide' or 'camosine' as presently claimed in claims 1, 5 or 6 does not
contain any metal compound" (App. Br. 6).
We first tum to the Specification to interpret the term "dipeptide."
The Specification teaches "[ w ]ith the term dipeptide, compounds with two
amino acid moieties are meant. ... The dipeptide compounds according to
the present invention comprise two amino acid moieties. In principal, any
dipeptide available either natural or synthetic is suitable for the purposes of
the present invention. The synthetic ones are preferred" (Spec. 2). The
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Application 13/512,930
Specification teaches that the "most preferred is camosine and is of ~-alanin
and L-histidine" (Spec. 3).
While the Specification discusses dipeptides, the Specification does
not identify whether the dipeptides are in the acid or salt form. Claim 1 and
the Specification teach an aqueous medium (see Spec. 1) that comprises
other components with sodium salts (see Spec. 4, 10) and cations including
"sodium, potassium, magnesium" (Spec. 10), recognizing that metals may be
present in the aqueous medium.
The Specification and claim 1 do not contain any language, however,
that excludes any form of dipeptide, whether a metal salt form, an acid form,
or other forms, but broadly use the term "dipeptide." Therefore, we agree
with the Examiner that the broadest reasonable interpretation of the term
"di peptide" in the Specification encompasses metal salts of the dipeptides.
Specifically, "if metal salt of camosine is a species of camosine, then
camosine is the genus of camosine dipeptide that encompasses species such
as metal salt. Metal salt of camosine is still camosine and still a dipeptide"
(Ans. 8).
We recognize, but find unpersuasive, Appellants' citation of Pfizer,
Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284 (Fed. Cir. 2006) for the
proposition that "a claim to an acid cannot be interpreted to include a salt of
the claimed acid" (App. Br. 6). In Pfizer, claim 1 expressly listed acids or
salts, claim 2 limited claim 1 to the acid form and claim 6 attempted to limit
claim 2 to the salt form. Pfizer, 457 F.3d at 1288. The issue before the
Court was not whether a general teaching of a compound, as in the instant
case, encompasses both the acid and salt forms, but rather whether claim 6
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Application 13/512,930
was properly dependent, under 35 U.S.C. § 112, fourth paragraph, because
the salt limitation in claim 6 to a salt was outside the "acid" requirement of
claim 2.
The Court recognized that "claim 6 could have been properly drafted
... as dependent from claim 1." Pfizer, 457 F.3d at 1292. This situation is
closer to the instant facts, because the instant claims 1 and 6 are drawn to
dipeptides, but do not recite any specific form of the dipeptide, whether acid
form or salt form. Thus, a salt form claim could be properly drafted as
dependent from either of claims 1 or 6 because these claims are reasonably
interpreted, consistent with the Specification, as encompassing any form of
the dipeptide as discussed above.
We recognize, but find unpersuasive, Appellants argument that
"nowhere does Kiffel disclose use of amino acid, not in metal salt form, in a
hair composition" (Reply Br. 3). Not only do the claims lack any limitation
that the dipeptide is "not in metal salt form," but the Specification provides
no suggestion to exclude metal salt forms of the dipeptide (see Spec. 2). See
In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail
from the outset because ... they are not based on limitations appearing in
the claims.").
Conclusion of Law
The evidence of record supports the Examiner's conclusion that Kiffel
anticipates the claims.
B. 35 US.C. § 103(a) over Kiffe! and Liberty, as evidenced by Schuss
Appellants contend that "Kiffel is directed to a composition
comprising a metal salt of an amino acid, in particular a metal salt of L-
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Application 13/512,930
camosine. The applicants further submit that it would not be obvious for a
skilled artisan to modify Kiffel to include a dipeptide as claimed because a
skilled artisan would have no reason to add a di peptide to Kiffel' s
composition" (App. Br. 7-8).
We find this argument unpersuasive for the reasons already given.
While Kiffel teaches dipeptides with metal salts (FF 1 ), claim 1 is
reasonably interpreted, consistent with the Specification, as encompassing
these metal salt containing dipeptides as discussed above. The Examiner
rejected the claims under obviousness to address the limitations of claim 13,
and did not separately rely upon Kiffel to demonstrate the obviousness of
claim 1 without metal salts (see Final Act. 12; Ans. 5).
SUMMARY
In summary, we affirm the rejection of claims 1 and 6 under
35 U.S.C. § 102(b) as anticipated by Kiffel as evidenced by Schuss. Claims
3-5, 7-12, 14, and 16-18 fall with claims 1 and 6.
We affirm the rejection of claims 1and13 under 35 U.S.C. § 103(a)
as obvious over Kiffel as evidenced by Schuss and Liberty.
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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