Ex Parte Verboom et alDownload PDFPatent Trial and Appeal BoardJul 21, 201612519111 (P.T.A.B. Jul. 21, 2016) Copy Citation 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"). 3 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 4 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. 5 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 6 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 1442™ and/or PURE-TRIX RR™ 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. 7 Appeal2014-008791 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 8 Appeal2014-008791 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. 9 Appeal2014-008791 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 1442™ and/or PURE-TRIX RR™ 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 10 Appeal2014-008791 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. 11 Appeal2014-008791 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). 12 Appeal2014-008791 Application 12/519,111 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 13 Copy with citationCopy as parenthetical citation