Ex Parte KUDODownload PDFPatent Trial and Appeal BoardDec 14, 201712960022 (P.T.A.B. Dec. 14, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/960,022 12/03/2010 Hiroyuki KUDO AA795 6308 27752 7590 12/18/2017 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER HAQ, SHAFIQUL ART UNIT PAPER NUMBER 1678 NOTIFICATION DATE DELIVERY MODE 12/18/2017 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): centraldocket. im @ pg. com pair_pg @ firsttofile. com mayer.jk @ pg. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROYUKI KUDO1 Appeal 2017-000151 Application 12/960,022 Technology Center 1600 Before RICHARD J. SMITH, TIMOTHY G. MAJORS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a method for assessing damage to keratin fibers, which have been rejected as indefinite and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the Real Party in Interest as The Proctor & Gamble Company of Cincinnati, Ohio. (App. Br. 2.) Appeal 2017-000151 Application 12/960,022 STATEMENT OF THE CASE Appellant’s “invention relates to a method for assessing damages of keratin fibers using a cationic fluorescent compound comprising a cationic ammonium group and being free of carboxyl and/or sulfonyl groups.” (Spec. 1:8-10.) Claims 1, 2, 6, 9-11, and 13 are on appeal. Claim 1 is illustrative: 1. A method for assessing damages of keratin fibers comprising the steps of: providing at least one sample of keratin fiber(s); providing a cationic fluorescent compound comprising at least one quaternary ammonium group and being free of carboxyl and/or sulfonyl groups wherein the cationic fluorescent compound is a thiazole compound of formula I: CHS v,„./=v ch3 i; / v Cf tagging said sample of keratin fiber(s) with said cationic fluorescent compound; rinsing out an excess of said cationic fluorescent compound; assessing the fluorescence of the fiber(s) by exciting the cationic fluorescent compound using a source providing appropriate excitation wavelength(s) wherein the tagging step is carried out by immersing said sample of keratin fiber(s) into a solution of the cationic fluorescent compound for 1 sec to 1 min; wherein the rinsing step is carried out by immersing said sample of keratin fiber(s) in an aqueous solution from 1 sec to 1 min; and wherein the fluorescence of the keratin hair fiber(s) is qualitatively assessed by visual inspection using a fluorescence microscope. 2 Appeal 2017-000151 Application 12/960,022 (Br. 10 (Claims App.).) Dependent claim 13, which is rejected as indefinite, is also reproduced below: 13. A method, according to claim 1, further comprising the step of utilizing said assessment to support advertising claims according to which a cosmetic, chemical and/or mechanical treatment prevents or repairs fiber damage. (Id. at 11.) The claims stand rejected as follows: I. Claim 13 under 35U.S.C. § 112, second paragraph (pre-AIA), for indefmiteness. II. Claims 1, 2, 6, 9-11, and 13 under 35 U.S.C. § 103(a) over Tate,2 Khurana,3 Puchtler,4 and Pinkus.5 I-INDEFINITENESS According to the Examiner, “[t]he utilizing process [in claim 13] is unclear” and “it is unclear how the assessment would provide support for the vague ‘advertising claims’” of claim 13. (Ans. 2.) As the Examiner explains, “[t]he meets [sic, metes] and bounds as to how [the assessment] will be used to support advertising claims is not clear.” (Id. at 5.) The 2 Tate et al., Quantification and prevention of hair damage, 44 J. Soc. Cosmet. Chem. 347-71 (1993). 3 Khurana et al., Mechanism of thioflavin T binding to amyloid fibers, 151 J. of Structural Biology 229-38 (2005). 4 Puchtler et al., Application ofThiazole Dyes to Amyloid under Conditions of Direct Cotton Dyeing: Correlation of Histochemical and Chemical Data, 77 Histochemistry 431^45 (1983). 5 Pinkus et al., Outer root sheath keratinization in anagen and catagen of the mammalian hair follicle. A seventh distinct type of keratinization in the hair follicle: trichilemmal keratinization, 133 J. Anat. 19—35 (1981). 3 Appeal 2017-000151 Application 12/960,022 Examiner poses the following question to further illustrate the indefiniteness of the claim: “would it be necessary that the advertising claims actually depict data such as the fluorescent image of hair . . or could one infringe simply by obtaining positive results of the method and then making advertising claims with the results in mind?” {Id. at 6.) Appellant argues claim 13 is reasonably clear in light of the Specification. (Br. 3 (citing Spec. 9:11—17).) Appellant points out, inter alia, that the “method allows correlating the degree of damages of keratin fibers with the fluorescence intensity” and “the data and/or the pictures obtained using this method may be used therefore [to] support and/or demonstrate advertising claims or an advertising step asserting said treatment [to] prevent and/or repair fiber damages.” {Id.) The Examiner has the better position. Claim 13 does not require data or pictures from the assessment be affirmatively or expressly used in any “advertising claims.” Although one might imagine, for example, a marketing brochure, commercial, etc. that depicts a photo from the claimed assessment used to support an assertion that one product performs better than another, claim 13 is broader. And, as the Examiner notes, the claim’s metes and bounds are unclear. See In re McAward, No. 2015-006416 (PTAB Aug. 25, 2017) (precedential) (“[T]he Office establishes aprima facie case of indefmiteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.”). Indeed, in its present form, claim 13 might read on a salesperson making a laudatory statement about a product, and merely thinking of an assessment before or while doing so. The 4 Appeal 2017-000151 Application 12/960,022 Specification and claims fail to provide the necessary clarity about what is (and is not) covered by claim 13, rendering it indefinite. Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003) (holding that claims are indefinite if the legal scope is not clear enough to a skilled person to determine infringement). And, at the prosecution stage, this lack of clarity should be addressed and resolved. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[Djuring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”) II-OBVIOUSNESS Issue Has the Examiner established by a preponderance of the evidence that claims 1, 2, 6, 9-11, and 13 would have been obvious over Tate, Khurana, Puchtler, and Pinkus? Findings of Fact (FF) The Examiner’s findings of fact and statement of the rejection are provided at pages 2—6 of the Final Rejection dated May 19, 2015, and pages 2—5 of the Examiner’s Answer. (See also Ans. 6—10.) The following findings are provided for emphasis and convenient reference. FF 1. Tate teaches methods for evaluating chemical damage to hair from oxidative and reductive treatments, as well as from grooming treatments (combing, shampooing, and conditioning). (Tate 347 (Synopsis).) The analytical methods used to evaluate such hair damage included surface analysis of the hair through microfluorometry. (Id.) 5 Appeal 2017-000151 Application 12/960,022 FF 2. Tate teaches “hair may be exposed to damaging chemical and mechanical modifications” and that “assessment of hair damage is required so that the protective effects of hair care formulations can be established.” {Id. (Introduction).) According to Tate, prior “work has centered on microscopy and on wearing away [of] the cuticular layer [of the hair], which is five to ten scales thick,” and which damage may be caused by grooming and cosmetic treatments. {Id.) FF 3. Tate teaches “changes caused by bleaching, perming, and grooming were evaluated in terms of both surface and structural properties,” and that “[s]urface properties were evaluated by microfluorometry.” (Id. at 350.) In further describing the evaluation, Tate teaches: Bleached hair samples were treated for ten minutes at room temperature in a 0.005% aqueous Rhodamine B solution brought to pH 3.3 with acetic acid, then rinsed for three seconds in distilled water. For grooming studies, a treatment time of 90 seconds was used. Cross-sectional and longitudinal microfluorometric studies were carried out using a Leitz MPV 1.1 micro spectrophotometer with a PLOEMOPAK attachment . . . [providing for] excitation of molecules fluorescing at various wavelengths. {Id.) FF 4. Tate teaches “[previous work with the fluorescent tracer Rhodamine B . . . suggests that this compound would be suitable for exploring aspects of oxidative damage of the fiber surface and the cuticular region.” {Id. at 351 (“Rhodamine B is a cationic dye that would be expected to show interactions with the sulfonic acid groups produced by oxidative treatment of hair.”).) 6 Appeal 2017-000151 Application 12/960,022 FF 5. Tate discloses results showing Rhodamine B deposited at scale edges of bleached and unbleached hair and that “scale penetration and scale face deposition ... is much more pronounced after four hours of bleaching (Figure 2c), where the scale face appears to be extensively marked by the tracer.” {Id. at 352; see also id at Fig. 2 and Fig. 4 (showing “[ajverage fluorescence intensity for five each of longitudinally scanned unbleached and bleached fibers treated with Rhodamine B.”).) FF 6. Khurana teaches Thioflavin T is “a cationic benzothiazole dye” (Khurana 229) that “is known to bind to many structures,” including keratin, and that the interaction between positive charges of Thioflavin T micelles and negative charges on the binding target “leads to enhanced fluorescence.” {Id. at 236, see also id. at 229 and 237.) FF 7. Puchtler teaches that Thioflavin T is a fluorescing thiazole dye that binds to keratin and hair shafts. (Puchtler 431 and 433.) Puchtler teaches “[kjeratin and hair shafts emitted bright yellow fluorescence” when stained with Thioflavin T. {Id. at 436—37.) FF 8. Pinkus teaches “keratin stains yellow with picric acid, whitish- green with thioflavin T under fluorescent illumination, and deep red with rhodamin-B.” (Pinkus 25.) Principles of Law “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the 7 Appeal 2017-000151 Application 12/960,022 field, the combination must do more than yield a predictable result.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Analysis Appellant does not separately argue the claims in response to the Examiner’s rejection. (Br. 3—9.) We select claim 1, the only independent claim, as representative. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Tate discloses the method of claim 1, with a few exceptions. (Ans. 2.) According to the Examiner, “Tate discloses cationic Rhodamine B dye but does not teach other dyes for assessing keratin fiber damage.” (Id.) In other words, the Examiner finds that Tate does not disclose the cationic dye Thioflavin T — the fluorescing “thiazole compound of formula I” recited in claim 1. (Id. at 3; Br. 10.) The Examiner finds, however, that each of Khurana, Puchtler, and Pinkus teach that Thioflavin T is a thiazole dye that binds to keratin fibers and that brightly fluoresces. (Ans. 3.) The Examiner concludes it would have been obvious for the skilled artisan to use other keratin-binding dyes in Tate’s method “with the expectation of expanding the arsenal of dyes for detection of hair damage and/or finding dyes with improved detection sensitivity to access [sic, assess] hair damage.” (Id.) This is particularly true, the Examiner reasons, for Thioflavin T because the art teaches it “provides intense fluorescence after binding” and that it is an “art recognized rhodamin alternative.” (Id.) The Examiner also points out that claim 1 ’s and Tate’s methods differ with respect to the time provided for the “tagging step.” In claim 1, this step involves immersing the keratin fiber(s) into a solution with Thioflavin T for 8 Appeal 2017-000151 Application 12/960,022 “1 sec to 1 min.” (Br. 10.) In Tate, by contrast, the bleached fibers are treated with Rhodamine B for 10 minutes and, in the grooming studies, the treatment time is 90 seconds. (Tate 350; Ans. 4, 7.) The Examiner, however, finds that the time in which a keratin fiber is immersed in the dye is a result-effective variable. (Ans. 4.) More specifically, the Examiner finds “an optimal staining of a keratin[] fiber with a particular dye can routinely be optimized by varying the incubation time, temperature, and concentration,” and thus, identifying the claimed time for carrying out the tagging step would have been obvious to the skilled person. (Id.) We agree with and adopt the Examiner’s findings concerning the scope and content of the prior art, as well as the Examiner’s reasoning and conclusion that claim 1 would have been obvious over the combined teachings of the art. The only differences between claim 1 and Tate are the fluorescent dye used and the time in which the fibers are treated with the dye. Yet the art, quite clearly, teaches that Thioflavin T is a fluorescent cationic dye that binds to keratin fibers like hair shafts, and is an alternative to Rhodamine B — the dye used in Tate. (FF 5—8.) Using Thioflavin T instead of Rhodamine B is little “more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. And, absent persuasive evidence to the contrary, the amount of time a fiber is treated with the fluorescent dye prior to rinsing and microscopic evaluation is a result-effective variable. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In reAller, 220 F.2d 454, 456 (CCPA 1955). This is reinforced by Tate’s suggestion that different durations may be used for 9 Appeal 2017-000151 Application 12/960,022 treatment with Rhodamine B (10 minutes for bleached hair vs. 90 seconds for groomed hair). (FF 3; Ans. 4, 7.) Below we address Appellant’s arguments. Appellant argues the rejection is improper because the combination of the art “does not disclose or teach or suggest all of the claim limitations.” (Br. 5.) Appellant contends Tate “evaluates the surface damage caused by cosmetic and physical treatments but. . . does not discuss the improvement of hair surface damage by fluorescent microscope.” (Id.) Appellant further contends, given the length of time the fibers of Tate are immersed in the dye solution “deposited cosmetic ingredients would be washed away . . . [such] that the improvement of hair surface delivered by cosmetics cannot be studied by Tate.” (Id. at 6.) Appellant is arguing limitations not found in claim 1, so the argument is unpersuasive. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[AJppellanf s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Claim 1 is not limited to assessing “improvement” of the hair surface, much less improvement caused by deposited cosmetic ingredients. (Ans. 7.) Claim 1 reads on assessing damage by whatever cause (e.g., environmental, mechanical, chemical) of a “sample of keratin fiber(s)” — even a single hair. Appellant’s citation to excerpts from the Specification (Br. 7) are not to the contrary. Indeed, those excerpts confirm that the claimed method may include assessment of “one fiber” for damage, and the excerpts otherwise reflect optional embodiments. (Spec. 4:13 (“Said sample usually comprises fibers of the same origin . . . and/or having been subjected to the same cosmetic, chemical and/or 10 Appeal 2017-000151 Application 12/960,022 mechanical treatment.”) (emphasis added).) We decline to read into the claims language about optional embodiments. Moreover, as the Examiner points out, Appellant provides argument but no persuasive evidence that the amount of time used to treat samples in Tate (10 minutes or 90 seconds), which is longer in comparison to the claimed method (60 seconds), would wash away deposited cosmetic and render Tate’s method unsuitable for assessing improvements caused by cosmetic treatments.6 (Ans. 7—8; Br. 6.) Appellant turns to a declaration from the inventor,7 but this evidence suffers from the same shortcomings discussed above. (Br. 6—7.) Even considering the testing shown in the declaration, and Mr. Kudoh’s conclusion that the “method according to the present invention is suitable for assessing the efficacy of conditioning compositions and/or rinse-off treatments for repairing — and by extension preventing — damages to hair fibers,” claim 1 is not so narrow. (Kudoh Decl. 4; Br. 7.) That a claimed method might be “suitable for” particular comparative testing of particular cosmetic products does not mean the claim is limited to that product testing. 6 Also, notwithstanding Tate’s longer immersion times with the dye solution, Tate’s method explicitly disclosed fluoroscopic assessment of the condition of the hair surface after various treatments of the hair, such as with peroxide compared to a bleach cream. (See, e.g, Tate Figs 2 and 4; FF 3—5.) Thus, according to Tate, the damages or improvement (relative prevention of damage) of one cosmetic treatment over another is suggested. (See also Ans. 8 (discussing Tate’s study of improvement of hair surface delivered by cosmetics, such as shampoos and conditioners).) 7 Declaration of Hiroyuki Kudoh under 37 C.F.R. § 132, dated Jan. 31, 2013 (“Kudoh Decl.”). 11 Appeal 2017-000151 Application 12/960,022 Claim 1 reads on assessing damage to keratin fiber(s) more generally as already explained. Finally, Appellant argues that “Khurana and Puchtler only disclose Thioflavin T fluorescence on a bare hair shaft but do not discuss the change caused by cosmetic treatment.” (Br. 8.) Here again, the argument is unpersuasive as it relates to limitations not appearing in claim 1. Moreover, the argument fails to account for Tate’s teachings, which disclose application of an art-recognized alternative fluorescing dye to cosmetically treated hair. (FF 1—5.) The combination of references makes obvious the method of claim 1, and Appellant does not provide persuasive argument or evidence in rebuttal. Conclusion of Law The preponderance of the evidence on this record supports the Examiner’s conclusion that claim 1 would have been obvious over Tate, Khurana, Puchtler, and Pinkus. Claims 2, 6, 9—11, and 13 have not been argued separately and thus fall with claim 1. SUMMARY We affirm the rejection of claim 13 as indefinite, and affirm the rejection of claims 1, 2, 6, 9-11, and 13 for obviousness. 12 Appeal 2017-000151 Application 12/960,022 TIME PERIOD FOR RESPONSE 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 13 Copy with citationCopy as parenthetical citation