Ex Parte HOFFMANN et al

Patent Trials and Appeals Board

Jul 8, 2019

15249977 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/249,977 08/29/2016
27387 7590 07/09/2019
LONDA, BRUCE S.
NORRIS MCLAUGHLIN, PA
875 THIRD A VE, 8TH FLOOR
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Martin HOFFMANN
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.
101216-263 1927
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
07/09/2019 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 MARTIN HOFFMANN and KRISTIN OLSSON
Appeal2019-000887
Application 15/249 ,977
Technology Center 1600
Before JEFFREY N. FRED MAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134(a) involving claims to
improving color stability of artificially colored hair by washing with an
aqueous cleansing composition. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as KAO GERMANY GMBH
(see App. Br. 2).
2 We have considered and herein refer to the Specification of Aug. 29, 2016
("Spec."); Final Office Action of Aug. 8, 2017 ("Final Act."); Appeal Brief
of July 12, 2018 ("App. Br."); Examiner's Answer of Oct. 1, 2018 ("Ans.");
and Reply Brief of Nov. 13, 2018 ("Reply Br.").
Appeal2019-000887
Application 15/249 ,977
Statement of the Case
Background
"Cleansing compositions wash out dirt on the hair and at the same
time dyestuffs deposited onto or into hair are also washed out, which leads
to shorter colour durability after coloration services and is not economical in
terms of frequent hair dressing need and also health of hair" (Spec. 1: 10-
13). Prior approaches to reducing color wash out include using "special
surfactant combination which interacts with dyestuff molecules and also
with hair in a lesser extent" (Spec. 1: 18-19).
The "[p ]resent inventors have surprisingly found that an aqueous
cleansing composition comprising three anionic surfactants and a non-ionic
surfactant and substantially free from amphoteric surfactants provides
excellent foam and conditioning properties and also washes out less colour
from hair so that long lasting colours are achieved" (Spec. 2: 1-4).
The Claims
Claims 1-15 are on appeal (App. Br. 2). Independent claim 1 is
representative and reads as follows:
1. A process for washing out less color from artificially
colored hair, the process comprising:
artificially coloring hair by applying a dye composition,
comprising at least one hair dye, onto the hair;
rinsing the dye composition off from the artificially
colored hair;
improving color stability of the artificially colored hair
by washing the artificially colored hair, one or more times, with
an aqueous cleansing composition; and
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Application 15/249 ,977
drying the artificially colored hair or leaving the
artificially colored hair to dry,
wherein the aqueous cleansing composition comprises at
least three anionic surfactants and at least one non-ionic
surfactant mixed together in water,
wherein the aqueous cleansing composition is free of
amphoteric surfactants,
wherein the total surfactant concentration is in the range
of 4 to 50% by weight calculated to the total of the aqueous
cleansing composition,
wherein a first anionic surfactant of the at least three
anionic surfactants consists of one or more sodium laureth
sulphates with 1.5 to 3 ethoxy units on average,
wherein a second anionic surfactant of the at least three
anionic surfactants consists of at least one sarcosinate
surfactant,
wherein a third anionic surfactant of the at least three
anionic surfactants consists of at least one glutamate surfactant,
wherein the at least one non-ionic surfactant is an alkyl
(poly)glucoside according to the general formula
wherein Rs is an alkyl group with 8 to 18 carbon atoms,
R9 is an ethylene or propylene group, Z is a saccharide group
with 5 to 6 carbon atoms, n is a number from O to 10 and x is a
number between 1 and 5,
wherein the second anionic surfactant and the third
anionic surfactant are present at a weight ratio of the second
anionic surfactant to the third anionic surfactant in the range of
1: 1 to 10: 1, and
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Application 15/249 ,977
wherein the aqueous cleansing composition has a pH
between 2 and 8.
The Issues
A. The Examiner rejected claims 1-5 and 12 under 35 U.S.C. § 103(a) as
obvious over Hamilton,3 Sako,4 Llenado,5 and Grit6 (Final Act. 3).
B. The Examiner rejected claims 6-11 and 13-15 under 35 U.S.C.
§ 103(a) as obvious over Hamilton, Sako, Llenado, Grit, and Clariant7 (Final
Act. 7).
A. 35 U.S.C. § 103(a) over Hamilton, Sako, Llenado, and Grit
The Examiner finds Hamilton teaches "methods for treating hair
comprising the steps of applying a dye composition, rinsing the dye
composition, [] washing the hair with an aqueous cleansing composition,
and drying or leaving the hair to dry" (Ans. 3). The Examiner acknowledges
Hamilton does "not teach that the cleansing composition comprises the
claimed surfactants in the claimed ratios" (id. at 4). The Examiner finds that
Sako, Llenado, and Grit teach cleansing compositions with the claimed
surfactants (see id.). The Examiner finds one of ordinary skill in the art
would have been motivated to seek out appropriate shampoo compositions
that are compatible with hair dyes to use in Hamilton's method (see id. at 5).
3 Hamilton et al., US 2010/0254924 Al, published Oct. 7, 2010.
4 Sako et al., US 6,284,230 Bl, issued Sept. 4, 2001.
5 Llenado, US 4,565,647, issued Jan. 21, 1986.
6 Grit et al., US 2005/0031570 Al, published Feb. 10, 2005.
7 Clariant, Mild Surfactants for Personal Care Applications (2009), available
at: https://www.essentialingredients.com/pdf/ clariantmildsurfactants. pdf
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Appeal2019-000887
Application 15/249 ,977
Appellants contend that the combined prior art fails to teach a step of
"improving color stability" (Reply Br. 3). Appellants further contend the
claimed method results in an "unexpected synergistic effect" (id. at 4).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner's conclusion that the prior art render the claims obvious?
(ii) If so, have Appellants presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact ("FF'')
1. Hamilton teaches a method of treating hair including the steps of
applying a color-altering composition from the hair, removing the color-
altering composition, washing the hair with a shampoo composition,
conditioning the hair with a conditioner composition, and applying a post-
treatment composition onto the hair in order to inhibit color fading
(Hamilton ,i,i 5-12; claim 1).
2. Hamilton teaches the "shampoo, conditioner, and post-treatment
compositions ... may be used on a daily or weekly basis" (Hamilton ,i 207).
3. Sako teaches a hair condition shampoo including a primary anionic
surfactant, a polyvalent metal cation, and a cationic conditioning agent
( 1: 61-67), that may further include secondary anionic surfactants and
nonionic surfactants (Sako 11 :5-9; 15:49-54).
4. Sako teaches aqueous hair conditioning shampoos that contain at least
three anionic surfactants and no amphoteric surfactants (Sako 25: 13-59,
Examples II-V, VII-X).
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Application 15/249 ,977
5. Sako teaches preferred anionic surfactants include ammonium laureth
sulfate or sodium laureth sulfate (13:6-20), sodium lauroyl sarcosinate, and
N-acyl-L-glutamate (Sako 25: 13-59, Example V).
6. Sako teaches the shampoo may include non-ionic surfactants, e.g.,
alkyl polyglucosides, examples of which are described in Llenado, which is
incorporated by reference (Sako 15:55-56; 16:32-57).
7. Llenado teaches non-ionic alkyl polyglucosides according to the
formula R20(CnH2nO)t(Z)x, wherein R2 is a hydrophobic group, e.g., an alkyl
group with 10 to 18 carbon atoms, and Z is derived from glucose (Llenado
3:13-25).
8. Sako teaches the composition may include "coloring agents, such as
any of the FD&C or D&C dyes" (Sako 24:8-20).
9. Grit teaches a "cosmetic composition which shows optimum
conditioning and repair properties for human hair comprising hair care and
repair agents" (Grit ,i 1 ).
10. Grit teaches conditioning and repair benefits are desirable "especially
for chemically damaged hair, especially due to multiple processing with
coloration, bleaching and/or waving." (Grit ,i 4).
11. Grit teaches formulations including three anionic surfactants, e.g.,
sodium lauryl ether sulfate, sodium lauroyl sarcosinate, and sodium lauroyl
glutamate; and non-ionic surfactants, e.g., C12-C1s-alkyl glycosides (Grit ,i
91, Example 4).
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Appeal2019-000887
Application 15/249 ,977
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3-7; FFs 1-11) and agree the claims
are rendered obvious by Hamilton, Sako, Llenado, and Grit. We address
Appellants' arguments below.
Appellants contend that "Hamilton teaches a process having three
distinct, separate and completely different steps than the presently claim[ ed]
process" (Reply Br. 2). Appellants contend that "a skilled artisan would not
have been motivated to eliminate the first washing step and second
conditioning step from Hamilton's process to achieve the presently claimed
process as alleged by the Examiner" (id.).
We do not find this argument persuasive because the claims do not
exclude the additional steps of Hamilton. Claim 1 recites the transition
"comprising." "The transition 'comprising' in a method claim indicates that
the claim is open-ended and allows for additional steps." Medichem, S.A. v.
Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). Here, the claimed process
includes not only the step of washing the artificially colored hair with an
aqueous cleansing composition, but also any additional steps that may be
added, including the conditioning and post-treatment steps taught by
Hamilton. See id. Because the claims do not exclude the additional steps of
Hamilton's process, we do not find that the Examiner erred.
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Application 15/249 ,977
Appellants contend "Hamilton does not teach or suggest at least the
positively recited step of improving color stability of the artificially colored
hair by washing the artificially colored hair, one or more times, with an
aqueous cleaning composition" (Reply Br. 3, emphasis in original).
We are not persuaded. The combination of Sato, Llenado, and Grit
teaches an aqueous cleansing composition including the claimed anionic and
nonionic surfactants (FFs 3-7, 11). A person of ordinary skill in the art
would have had a reason to use the obvious aqueous composition as the
washing shampoo in Hamilton's method because the prior art teaches the
composition is compatible with colored hair (FFs 8-10). Accordingly, we
conclude that the Examiner has demonstrated a fact-based prima facie case
of obviousness and the burden thus shifts to Appellants to demonstrate that
the composition of Sato, Llenado, and Grit, when used in the method of
Hamilton, would not necessarily have the claimed color stability improving
properties.
Where ... the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. ... [The]
fairness [of the burden-shifting] is evidenced by the PTO's
inability to manufacture products or to obtain and compare
prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have not
provided evidence that rebuts the Examiner's finding.
Appellants contend that "any alleged prima facie case of obviousness
with respect to independent claim 1 is rebutted by the surprising and
unexpected synergistic result(s) shown in Inventive Composition E" (App.
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Appeal2019-000887
Application 15/249 ,977
Br. 9). As shown in Table I, reproduced below, "Composition E" contains
all four claimed surfactants, unlike Compositions A-D.
t Coo::;. ~l:;.;~o$ide: ----------------------------------------------- _______ '" _______ __ ____ 3 ...... l ............. ___________ l_ ______ ... ____________ ~ _.s ____ _
! Sod!:~~n~ ~~u.irov~ g~lJ-~.~j~J1~t& - ~ · ~) ~:. 5
j,, {~~~r)pH
i c :tr-1~) ~c;id e;. o
! Pri:,,s.er,~.,\ive,_fmgnmi:.,e ------------------------------- ------------------------------------------Sl·"'--------------------------------------------
l'~~Ja!»·f"""""""""""""""""""""""""""""""'" """""""""""""""""_q.s .. , ~:o· 1 C:tl """"""""""""""""'"
Table I lists aqueous cleansing compositions A-E, having
different combinations of surfactants and a total surfactant
amount of 20% by weight.
(Spec. 21 ). Appellants contend "[t]he results of working Example 1 clearly
show that Inventive Composition E washed less color out from the
artificially colored hair underlined by the lowest ~E value" (Reply Br. 4,
citing Table II). Table II is reproduced below:
ComposWon D 8.6
Compo:Wtio.n E 7,9
Table II lists the results of the color wash out test, wherein the higher ~E
indicates a larger color difference between tresses after 10 washes with
compositions A-E.
(Spec. ,i 21-22). Appellants contend "that color wash out is surprisingly and
unexpectedly lowest in Inventive Composition E is clear proof that an
unexpected synergistic effect occurs when the presently claimed four
surfactants are incorporated into an aqueous cleansing composition" (id.).
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Appeal2019-000887
Application 15/249 ,977
We do not find this evidence persuasive. At best there appears to be a
23% reduction in color wash out (~E value) between Composition A and
Composition E. Although the evidence indicates that Composition E may be
superior in the color wash out test, there is no evidence that these results
demonstrate "a new and unexpected result which is different in kind and not
merely in degree from the results of the prior art." In re Huang, 100 F.3d
135, 139 (Fed. Cir. 1996) ("even though applicant's modification results in
great improvement and utility over the prior art, it may still not be patentable
if the modification was within the capabilities of one skilled in the art"). As
explained above, the prior art teaches conditioning shampoos that are
compatible with colored hair. Accordingly, we conclude that it would have
been within the capabilities of one skilled in the art to modify the known
compositions to obtain a shampoo with reduced color wash out.
In addition, claim 1 encompasses a large number of types of
surfactants (see Spec. 5-12) but only one specific set of four surfactants was
tested (see Spec. 21 ). Unexpected results must be "commensurate in scope
with the degree of protection sought by the claimed subject matter." In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Here, the range of thousands
of different surfactants in thousands of different concentrations claimed is
not commensurate with the testing of one specific set of surfactants at a few
specific concentrations.
Conclusion of Law
A preponderance of the evidence of record support the Examiner's
conclusion that the prior art renders the claims obvious.
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Appeal2019-000887
Application 15/249 ,977
B. 35 U.S.C. § 103(a) over Hamilton, Sako, Llenado, Grit, and Clariant
Appellants do not separately argue these obviousness rejections,
instead relying upon their arguments to overcome the combination of
Hamilton, Sako, Llenado, and Grit (see App. Br. 11-16). Having affirmed
the obviousness of claim 1 for the reasons given above, we also find that the
further combination renders the rejected claims obvious for the reasons
given by the Examiner.
SUMMARY
In summary, we affirm the rejection of claim 1 as obvious over
Hamilton, Sako, Llenado, and Grit. Claims 2-5 and 12 fall with claim 1.
We affirm the rejection of claims 6-11 and 13-15 under 35 U.S.C.
§ 103(a) as obvious over Hamilton, Sako, Llenado, Grit, and Clariant.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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