Ex Parte Shao et al

Patent Trial and Appeal Board

Mar 8, 2019

13391594 (P.T.A.B. Mar. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/391,594 02/21/2012
23909 7590 03/12/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Yun Shao
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.
T8810-0l-US-Ol-PC 4652
EXAMINER
YU,HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
03/12/2019 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUN SHAO, DAVID SCHLOSSMAN, NERINGA
KONTRIMIENE, and ARIEL HASKEL
Appeal2018-004626
Application 13/391,594
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.
WISZ, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek review of claims 1,
3---6, 8-14, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). For the
reasons set forth below, we AFFIRM.
STATEMENT OF THE CASE
The Specification describes a composition comprising a pigment
particle that is coated with a cationic material and isopropyl titanium
triisostearate. Spec. ,r 4. Claim 1, the only independent claim, is illustrative:
1 Appellants identify the Real Parties in Interest as Colgate-Palmolive
Company and Kobo Products, Inc. App. Br. 3.
Appeal2018-004626
Application 13/391,594
1. A composition comprising a pigment particle that is pre-
coated with a cationic polymer and isopropyl titanium
triisostearate, wherein an amount of isopropyl titanium
triisostearate on the total weight of the pigment particle is 0.1 to
5 weight%, and wherein an amount of cationic polymer on the
total weight of the pigment particle is 0.1 to 10 weight %;
wherein the composition is a body wash; and wherein the
cationic polymer is Polyquatemium-67.
The Examiner rejected claims 1, 3---6, 8-14, 17, and 18 under 35
U.S.C. § I03(a) as being obvious over Colaco et al. 2 in view of Hoffman et
al.3
The Examiner provisionally rejected claims 1, 3---6, 8-14, 17, and 18
on the ground of nonstatutory double patenting as being unpatentable over
claims 1-14 of copending Application No. 13/391,590.
ISSUES AND ANALYSIS
We affirm the Examiner's obviousness rejection. We do not address
the provisional nonstatutory double patenting rejection. We address the
arguments raised by Appellants below.
Obviousness
The Examiner finds that Colaco teaches a composition for depositing
a benefiting agent such as pigment onto a keratin-containing substrate,
including skin and hair. Final Act. 7. The Examiner further finds that
Colaco discloses that the pigment may be coated with up to about 5% by
weight of a lipophilic compound such as isopropyl titanium triisostearate
and with up to 14.3% by weight of a cationic polymer such as
2 Colaco et al., US 2009/0013418 Al, published Jan. 15, 2009 ("Colaco").
3 Hoffman et al., US 2009/0258807 Al, published Oct. 15, 2009 ("Hoffman").
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Application 13/391,594
Polyquatemium-7 ("PQ-7"). See id. at 7-9. Although the use of
Polyquatemium-67 ("PQ-67") as a cationic polymer is not disclosed in
Colaco, the Examiner finds that this limitation is disclosed in Hoffman,
which teaches a hair cleansing composition with shear thickening property.
See id. at 9. The Examiner concludes that it would have been obvious at the
time of the invention for a person of ordinary skill in the art to replace PQ-7
in the composition taught by Colaco with PQ-67 as taught by Hoffman since
PQ-7 and PQ-67 were known interchangeable cationic polymers that could
be used in hair cleansing compositions. See id. at 9-10.
Appellants do not contest the above-referenced factual findings of the
Examiner. Appellants' main argument is that the present claims are directed
to a body wash and Colaco is "primarily directed to deposition of benefit
agents on hair." App. Br. 6. The Examiner responds that Colaco teaches a
composition for depositing a benefiting agent, such as a pigment, onto a
keratin-containing substrate, including skin, and teaches a body wash at
paragraph 27. Ans. 2. The Examiner also finds that the intended use of the
claimed composition as a body wash does not patentably distinguish the
composition. Final Act. 8. Appellants respond that the "body wash"
limitation is a structural limitation that "serves to eliminate from the scope
of the claims any component that is incompatible with body wash, regardless
of where it may be reported in the literature." App. Br. 7. Appellants also
assert that shampoos and body washes are formulated differently by citing to
the O'Lenick4 reference. See id. at 7-8.
4 Anthony J. O'Lenick & Fenbao Zhang, Comparatively Speaking: Shampoo
vs. Body Wash Formulation, Cosmetics & Toiletries Science Applied (Oct.
2012).
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Application 13/391,594
We are not persuaded by Appellants' arguments. First, Colaco
discloses that the compositions disclosed therein can be used on skin
(Colaco ,r,r 1, 18, 31, 35, 36) and states the following:
The quaternary ammonium compounds useful in the
compositions and methods of this invention should be capable
of complexing with anionic compounds that can be benefit
agents in order to adhere to keratin-containing substrates such
as hair. Examples of such anionic compounds include acrylates,
sulfates, sulfonates, sufosuccinate, phosphate and phosphonates
and the like. Such anionic compounds may be present in the
form of surfactants, polymers, salts, acids, bases AND THE
LIKE. They can be useful as coloring agents, conditioners,
shampoos, body cleansers and other soap-like products.
Colaco ,r 27 (emphasis added).
Second, the "body wash" limitation of claim 1 merely states an
intended use for the claimed composition. ''An [] intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention
operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Appellants do not identify any
necessary structural differences between the composition of Colaco and the
claimed composition. "It is well settled that the recitation of a new intended
use for an old product does not make a claim to that old product patentable."
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997). Furthermore, even if shampoos and body washes may be formulated
differently, it is well established that the "patentability of a claim to a
product does not rest merely on a difference in the method by which that
product is made. Rather, it is the product itself which must be new and
unobvious." In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969).
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Application 13/391,594
Appellants also argue that "to the extent that Colaco utilizes body
cleansing compounds at all, it does so not in a manner to function as a body
cleaning composition, but to effect retention of the body cleaning
compounds on the skin or hair" which is in direct contrast to the present
invention. App. Br. 9. We agree with the Examiner that a formulation can
be a body cleanser and cause the retention of the benefit agent/pigment on
the skin. Ans. 4. We also agree that this concept is disclosed in the
Specification of the pending application, which states, "[t]he problem with
using a cleansing composition is that the composition performs its function
of cleaning by removing oil and dirt from skin. To be effective, the pigment
needs to be modified to adhere to skin to avoid being washed away by the
cleansing composition." Spec. ,r 2.
Appellants also argue that the deficiencies of Colaco are not cured by
Hoffman, which discloses a cleansing compound for hair - not a body
wash. App. Br. 9. We agree with the Examiner in finding this argument
unpersuasive because, as discussed above, Colaco teaches a body wash;
therefore, this limitation does not need to be taught by Hoffman. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art" In re Keller, 642 F.2d 413, 425 (CCPA
1981 ).
With respect to claims 4, 6, 11, and 14, Appellants argue that "Colaco
does not disclose a composition comprising mica/titanium dioxide, but
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Application 13/391,594
rather discloses a composition comprising 'a particulate benefit agent',
where the benefit agent can be mica or titanium dioxide." App. Br. 10. The
Examiner finds that Colaco teaches that the pigment particles can be an
admixture of pigments and claims both mica and Ti02 as pigment particles
in claim 9. Ans. 6. The Examiner concludes that, absent some
demonstration of an unexpected result, it would have been obvious to one of
ordinary skill in the art to pick any individual pigment in claim 9 and come
up with a mixture of mica/titanium dioxide. See id. We agree with the
Examiner that it would have been obvious for one of skill in the art to
combine these two pigments and Appellants have not shown any unexpected
results with regard to the use of mica/titanium dioxide as a pigment. See In
re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("It is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.").
For the reasons described herein and those already of record, we
sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as
being obvious over Colaco in view of Hoffman. We also sustain the
Examiner's rejection of claims 4, 6, 11, and 14. Claims 3, 5-6, 8-10,
12-13, 17, and 18 are not argued separately, and fall with claim 1. See 37
C.F.R. § 4I.37(c)(l)(iv).
Provisional Nonstatutory Double Patenting
We decline to reach this undisputed provisional rejection. See In re
Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010) (precedential). The rejection
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Application 13/391,594
is provisional and Application No. 13/391,590 remains copending and not
allowed; accordingly, the issues are not ripe for decision.
CONCLUSION
We affirm the Examiner's rejection of claims 1, 3---6, 8-14, 17, and
18. 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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