Ex Parte Verboom et al

Patent Trial and Appeal Board

Jul 21, 2016

12519111 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/519,111 12/11/2009 Gilles Verboom
201 7590 07/25/2016
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.
705007 /US (J9200USw) 1269
EXAMINER
FRAZIER, BARBARA S
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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 GILES VERBOOM, and MICHAEL KONIECZNY
Appeal2014-008791
Application 12/519,111 1
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREYN. FREDMAN, and
DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hair
styling composition. The Examiner rejected the claims on appeal as obvious
under 35 U.S.C. § 103(a).
We affirm.
1 According to Appellants, the real party in interest is Conopco, Inc., d/b/a
Unilever (Appeal Br. 3).
Appeal2014-008791
Application 12/519,111
STATEivIENT OF THE CASE
Claims 1, 12-15, 26, 29, and 30 are on appeal. Claim 1, the only
independent claim on appeal, is illustrative and reads as follows:
1. A hair-styling composition comprising:
1) from about 0.01 wt.% to about 20 wt.% of a
polyvinylpyrrolidone film former;
2) from about 0.01 wt.% to about 20 wt.% of at
least one additional film former, which is a non-ionic
vinylpyrrolidone copolymer comprising N-
vinylpyrrolidone, methacrylamide and N-
vinylimidazole monomeric units;
3) from about 0.01 wt.% to about 20 wt.% of at
least one additional film former which is a cellulosic
polymer comprising cationic substituents derived
from the polymerization or oligomerizatlon of
dimethyl diallyl ammonium chloride;
4) from about 0.0 1 wt.% to about 15 wt.% of at
least one thickener, which thickener is a mixture of an
acrylates/beheneth-25 acrylate copolymer and a PEG-
180/Dodoxynol-5/PEG-25
tristyrylphenol/tetramethoxymethylglycouril
copolymer,; and
5) water,
wherein the composition includes no more them
about 0.5 wt% carbomer and, when applied to human
hair, exhibits at least about 80% curl retention after
about 2 hours under conditions of about 85% relative
humidity and about 75°F.
2
Appeal2014-008791
Application 12/519,111
The Examiner rejected claims 1, 12-15, 26, 29, and 30 under 35
U.S.C. § 103 (a) over Tamareselvy2 in view ofBirkel3 and Azevedo.4
The Examiner found that Tamareselvy disclosed "polymers ... useful
in hair setting and hair styling compositions, either alone or in combination
with commercially available hair fixative and hair setting polymers." Final
Rejection 3. The Examiner further found that Example 6b of "Tamareselvy
[disclosed] an acrylates/beheneth 25/acrylate copolymer (Polymer A, 2%) in
combination with PVP (3%), Polyquatemium-11 (a nonionic copolymer,
0.5%), and water as an acidic, aqueous gel suitable for conditioning, fixing
and styling hair." Id. The Examiner thus concluded that Example 6b met all
of the limitations of claim 1 with the exception that it did not disclose a
"cellulosic polymer ... ", "a non-ionic vinylpyrrolidone copolymer ... ", and
the "PEG-180 ... "component of the thickener mixture. Id. at 3-5.
With respect to the "cellulosic polymer," the Examiner found that
polyquatemium-4 (a diallyldimonium chloride/hydroxyethylcellulose
copolymer) and polyquatemium 11 (a component of Example 6b), were
taught by Tamraselvy to be "functionally equivalent to one another." Id. at
4. Therefore, the Examiner concluded, "it would be well within the purview
2 Tamareselvy et al., U.S. Patent Publication No. 2004/0052746 Al,
published on Mar. 18, 2004 ("Tamereselvy").
3 Birkel et al., WO 2005/082322, published Sept. 9, 2005 ("Birkel"). U.S.
Patent Publication No. 2008/0020004 Al ("the '004 Publication") is the
national stage entry of Birkel, and thus serves as an English translation of
W02005/082322. Accordingly, all citations herein to Birkel are to the '004
Publication.
4 de Azevedo et al., U.S. Patent Publication No. 2004/0109840 Al,
published Jun. 10, 2004 ("Azevedo").
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Appeal2014-008791
Application 12/519,111
of the skilled artisan to choose either compound as a hair styling/fixative
polymer in the composition of Tamareselvy." Id.
With respect to the "non-ionic vinylpyrrolidone copolymer," the
Examiner found that Birkel taught "a hair treatment agent comprising a
terpolymer constructed from vinylpyrrolidone, methacrylamide and
vinylimidazole, and at least one active ingredient such as a hair-setting
substance." Id. at 5. The Examiner concluded:
Id. at 6.
[I]t would have been obvious to a person having ordinary
skill in the art at the time the invention was made to
include Luviset Clear [the terpolymer] in the composition
of Tamareselvy ... because the combination of the
terpolymer taught by Birkeland a hair-setting substance
(such as PVP) provides the benefits of satisfactory feel,
shine, combability, durability of setting, etc. as taught by
Birk el.
With respect to the "PEG-180 ... " component of the thickener
mixture, the Examiner found that Azevedo taught a thickener compnsmg "a
copolymer of PEG-180, Dodoxinol-5, PEG-25 tristyriphenol, and
tetramethoxylmethylglycouril." Id. at 5. The examiner concluded that it
would have been obvious to a person having ordinary skill in the art at the
time the invention was made to include the thickener of Azevedo in the
composition of Tamareselvy "because the inclusion of said thickener
provides the benefits of reducing any appearance of heavy hair, (thus
preventing curl formation) or 'falling' hair (which would not cause the film
on the hair to loosen, thus causing an uncomfortable appearance of
dandruff), as taught by Azevedo." Id. at 6.
Appellants argue that none of the references "comes close to
teaching" the claimed compositions and there is "no impetus or reason to
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Appeal2014-008791
Application 12/519,111
have combined these references from the millions of hair references which
might be combined." App. Br. 7.
FINDINGS OF FACT
1. Tamareselvy discloses multi-purpose polymers which are
useful in variety of products. Tamareselvy Abstract.
2. Tamareselvy discloses:
Id. at i-f 149.
A preferred hair care composition embodiment [that]
comprises a polymer of the present invention in an
amount effective to provide to the hair care composition
a property, such as a hair fixative property, a hair
conditioning property, a viscid property (thickening,
rheology modifying), or a combination thereof.
Optionally, the hair care composition can include one or
more auxiliary film-forming agent, auxiliary hair-fixative
agent, auxiliary hair conditioning agent, auxiliary
rheology modifying agent, or a mixture thereof."
3. Tamareselvy discloses:
Id. at i-f 169.
The polymers of the present invention are surprisingly useful in
hair setting and hair styling compositions as the sole film-
forming, rheology modifying, conditioning fixative agent. The
polymers of the present invention are also useful in
combination with commercially available auxiliary hair fixative
polymers, such as nonionic, cationic, and amphoteric hair
setting polymers, cationic conditioning polymers, and
combinations thereof.
4. Tamareselvy discloses that suitable "commercially available
nonionic polymers (i.e., neutral) used as hair styling or fixative polymers
include, without limitation thereto, polyvinylpyrrolidone (PVP) ... " Id. at i-f
170.
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Appeal2014-008791
Application 12/519,111
5. Tamareselvy discloses that suitable "[ c ]ommercially available
cationic fixative polymers include, without limitation thereto, polymers
having the INCi name, polyquatemium, such as polyquatemium-4, a
diallyldimonium chloride/hydroxyethylcellulose copolymer (such as
CELQUAT® H-100, National Starch); polyquatemium-11, a quatemized
vinyl pyrrolidone/dimethylaminoethyl methacrylate copolymer (such as
GAFQUAT® 734, 755, 755N, ISP) .. . "Id.
6. Example 6b of Tamareselvy discloses "Hair Conditioning Hair
Setting Compositions" comprising Polymer A, polyvinylpyrrolidone (PVP),
polyquatemium-11, and water. Id. at Table 7.
7. Table 2 of Tamareselvy discloses a "cationic acid-swellable
associative polymer identified as Polymer A." The portion of Table 2
relating to Polymer A is reproduced below.
Pd. ;\.SV
Ne'>. 11-fo iL ('\>)
HXV
Mz):~.
TABLE 2
AV SVS
\fr,_:.i. ('.;f) M.EMA (.'r?) FA ('>:'\ .. ";'.') Bl'M1S (3} R?Cx'! J.:: D~GD\V\ (C'.1 '>.L O:•Y? (7}
HE.MA{'..:)
8. Tamareselvy discloses that the composition of Example 6b was
"smoothly spreadable and free of any unaesthetic 'stringy' character and
provided good hair setting efficacy (70% HHCR for about 1 hour)." Id. at
,-r 243.
9. Birkel discloses "[a] hair-treatment agent ... with a content of a
combination of a terpolymer constructed from vinylpyrrolidone,
methacrylamide and vinylimidazole, and at least one active ingredient or
additive ... " Birkel, Abstract. The specification identifies Luviset® Clear
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Appeal2014-008791
Application 12/519,111
as a terpolymer of vinylpyrrolidone, methacrylamide and vinylimidazole.
Id. at i180.
10. Birkel discloses that existing hair care products do not satisfy
requirements for "feel, shine, combability, durability of setting etc." and that
the combination of its terpolymer with at least one active ingredient or
additive solves these problems. Birkel at i1i12-5.
11. Azevedo discloses a non-rinse composition for combing hair
including a thickener comprised of "PEG-180, Dodoxinol-5, PEG-25
tristyriphenol and monomers of tetrametoxymethylglycoury." Id. at i127.
"Particularly, the thickener employed in the present invention is Polyether- I,
commercially available as PURE TRIX 1442â„¢ and/or PURE-TRIX RRâ„¢
from Sud-Chemie Rheologicals. Id. i130.
12. Azevedo discloses that compositions including its thickener
"impart[] lightness to the hair, leaving them, after brushing, with the
appearance of looseness, with well-shaped, clean, untangled curls having
adequate volume, even in wetting days." Id. at i12; see also, id. at i-fi-f 13-14
(discussing advantages of its thickener containing compositions relative to
existing hair care products).
13. The Specification states: "An exemplary film forming
vinylpyrrolidone copolymer is LUVISET® CLEAR, available from BASF."
Specification i-f 11.
14. The Specification states: "An exemplary thickener includes a
combination of the following associative thickeners: TINO VIS® OTC,
available from Ciba Specialty Chemicals, and PURE TRIX® RR, available
from Southern Clay." Id. at i-f 14.
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Application 12/519,111
15. The Specification states: "An exemplary cationic cellulose
derivative is CELQUAT® H-100, available from National Starch and
Chemical." Id. at i-f 12.
ANALYSIS
We agree with the Examiner that the challenged claims would have
been obvious over Tamareselvy in view of Birkel and Azevedo. Appellants
contend that "since none of the references, alone or combined, recognizes or
addresses the problem of curl retention at high humidity, there is no impetus
or reason to have combined these references from the millions of hair
references which might be combined." App. Br. 3.
We disagree. As an initial matter, Appellant is incorrect to suggest
that the reason to combine the references at issue must stem from "the
problem of curl retention at high humidity." The law is clear that "any 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 Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007); In re Beattie, 974 F.3d 1309, 1312 (Fed. Cir. 1992) ("[T]he law does
not require that the references be combined for the reasons contemplated by
the inventor.").
Here, the Examiner provided very specific reasons why the person of
ordinary skill in the art would have combined the references at issue. The
Examiner explained that the terpolymer of Birkel "provides the benefits of
satisfactory feel, shine, combability, durability of setting, ... which are
desired characteristics in a hair-setting composition." Final Rejection 6; see
also, Ans. 8. Similarly, the Examiner found that the thickener of Azevedo
"provides the benefits of reducing any appearance of heavy hair, (thus
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Application 12/519,111
preventing curl formation) or 'falling' hair (which would cause the film on
the hair to loosen, thus causing an uncomfortable appearance of dandruff)."
Id. We find that these reasons are well supported by the references, see
FF 10 and FF 12, and that they would have provided the person of ordinary
skill in the art good reason to combine the references at issue.
Appellants argue that even if there were reason to combine the
combine Birkel with Tamareselvy, there would be no reason to "focus on the
terpolymer specifically from among the thousands of components disclosed
in Birkel." App. Br. 9. Appellants then argue that "Azevedo suffers from
the same issues." App. Br. at 9. These arguments are not persuasive
because Birkel and Azevedo teach that the specific components provide the
benefits described.
In Birkel, the benefits stem from a particular terpolymer. The focus of
the Birkel reference is that specific terpolymer. The title of Birkel identifies
the terpolymer by name, see Birkel, title ("Hair-Treatment Agent
Comprising Terpolymer of Vinylprrolidone, Methacrylamide and
Vinylimadazole and Active Ingredients and Additives"); the first paragraph
of Birkel' s specification identifies the invention as relating to the "special"
terpolymer, id. at i-f 1 ("The invention relates to a hair-treatment agent with a
content of a special terpolymer of vinylpyrrolidone, methacrylamide and
vinylimidazole in combination with selected active ingredients and/or
additives."); and every one of the 35 example compositions disclosed in
Birkel includes the specific polymer (identified in the examples as Luviset®
Clear). See, id. at i-fi-197-154 and FF9. We find that these disclosures
provide ample reason to "focus on the terpolymer specifically" from among
the various components of Birkel's compositions. See, e.g., Wm. Wrigley Jr.
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Application 12/519,111
Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012)
(Claims drawn to "two of the three most preferred candidates" in the prior
art).
Azevedo similarly focuses on a particular component - the thickener -
as providing the benefits of the disclosed composition. After discussing the
benefits of its composition, Azevedo states:
It was then found that certain groups of thickeners were
capable of providing these characteristics. The thickener
found to impart the new and inventive characteristics of
the present invention has been selected from the group of
non-ionic, hydrophobic modified polymers, preferably a
polyester from copolymer of PEG-180, Dodoxinol-5,
PEG-25 tristyriphenol and monomers of
tetrametoxymethylglycoury of the chemical class of
synthetic polymers, the function of which is to act as an
aqueous agent for intensifying viscosity.
* * *
Particularly, the thickener employed in the present
invention is Polyether- I, commercially available as
PURE TRIX 1442â„¢ and/or PURE-TRIX RRâ„¢ from
Sud-Chemie Rheologicals.
Azevedo i-fi-127-30 (emphasis added). As with Birkel, the disclosure of
Azevedo is very specific as to the component that provides the benefits
described. We find that this disclosure provides ample reason to focus on
Azevedo' s thickener from among the various components of Azevedo' s
compositions.
Appellants also take issue with the primary reference, Tamareselvy,
arguing that Tamareselvy' s thickener is "different" from the claimed
thickener. App. Br. 8. But the Examiner did not rely on Tamareselvy alone
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Application 12/519,111
for disclosure of the thickener. The claimed thickener is a mixture of two
copolymers. The Examiner found that Tamareselvy disclosed the first
copolymer (acrylates/ beheneth-25 acrylate) while the Azevedo disclosed the
second (the previously discussed thickener). Ans. 9; see also, FF5---6 and
11.5
Appellants argue that Polyquat 11 in Tamareselvy is different from
and not equivalent to the claimed cellulosic polymer. App. Br. at 8. The
Examiner, however, did not rely on Polyquat 11 as disclosing a cellulosic
primer. Rather the examiner found that polyquatemium 11 and
polyquatemium 4 were disclosed in Tamareselvy to be functionally
equivalent and thus it would have been "within the purview of the skilled
artisan to substitute polyquatemium 4 for polyquatemium 11." Ans. 3. We
agree with the Examiner that Tamareselvy discloses functional equivalence,
see, FF5, and that it would have been obvious to substitute polyquatemium 4
for polyquatemium 11 in exemplified composition 6b.
Appellants contend that the claimed curl retention benefits render the
claimed composition nonobvious over the combination of Tamareslevy,
Birkel and Azevedo because "none of the three references identified the curl -- --
retention benefits." App. Br. 10. This is incorrect. Tamareslevy describes
composition 6b as having "good high humidity resistance." Tamareslevy i-fi-1
209, 243. Indeed, the examiner found that Tamareselvy exhibited slightly
lower curl retention (70% v 80%) at slightly higher humidity (85% v. 90%).
5 The fact that the two components of the mixture are disclosed in separate
references does not render the claimed mixture nonobvious, particularly as
Appellants do not argue, and the Specification does not disclose, that the two
thickeners interact with each other or form a single thickener.
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Application 12/519,111
.l -1 A f:.. .l -1-1 ' -1 ' • ' -1 ' • £""" • -1 • ,.. -1 Ans. l u. v Appellants nave not pomtea to any spec1nc ev10ence m me recora
demonstrating that the claimed curl retention is patentably distinct from the
curl retention disclosed in Tamareslevy.
Moreover, as the combined teachings of Tamareslevy, Birkel and
Azevedo teach the claimed composition, one would expect it to have the
claimed curl retention properties. See, In re Dillon, 919 F.2d 688, 693 (Fed.
Cir. 1990) ("[S]tructural similarity between clahned and prior art subject
matter, proved by combining references or otherwise, where the prior art
gives reason or motivation to make the claimed compositions, creates
a prima.facie case of obviousness ... [T]he discovery that a claimed
composition possesses a property not disclosed for the prior art subject
matter, does not by itself defeat a primafacie case."); see also, Application
of Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (A "mere statement of a new
use for an otherwise old or obvious composition cannot render a claim to the
composition patentable.").
Finally, Appellants assert that the claimed combination provides "a
surprising and unexpected benefit which is entirely unappreciated in the art."
Appellants, however, do not identify what it is they contend is the
unexpected benefit. Nor do they compare any alleged benefit to the closest
prior art. Nor do they attempt to prove a nexus between the claim and the
any particular benefit. In short all that Appellants provide regarding
secondary considerations is a single sentence asserting that the composition
provides an unidentified benefit. This is plainly insufficient to overcome the
prima facie case of obviousness established by the combination of
6 Tamareselvy's curl retention measurements were also taken at higher
temperature than is recited in the claims (27QC (80.6QF) v. 75QF).
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Tamareselvy, Birkeland Azevedo. See, In re Baxter Travenol Labs, 952
F.2d 388, 392 (Fed. Cir. 1991) ("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 Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005) ("The 32--43% increase in stress rupture life ... does not
represent a 'difference in kind' that is required to show unexpected results.")
(quoting In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)); In re Kao, 639
F.3d 1057, 1068 (Fed. Cir. 2011) (holding that "before secondary
considerations can carry the day" in an obviousness context, the applicants
must establish a nexus between the evidence and the merits of the
invention).
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 1. Because they
were not argued separately, claims 12-15, 26, and 29-30 fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 1, 12-15, 26, and 29-30 is
affirmed.
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).
AFFIRMED
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