Ex Parte Wells et al

Board of Patent Appeals and Interferences

May 30, 2007

10454564 (B.P.A.I. May. 30, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT LEE WELLS and KENDRICK JON HUGHES
__________

Appeal 2007-0284
Application 10/454,564
Technology Center 1700
__________

DECIDED: May 30, 2007
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and NANCY J. LINCK,
Administrative Patent Judges.

LINCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal the Examiner’s 35 U.S.C. § 102(b) rejection of
claims 12 and 14-20, all pending claims in the above-identified application,
based on U.S. 6,194,363 B1 (“Murray”). We have jurisdiction to decide this
appeal under 35 U.S.C. § 6(b).
We affirm.
Appeal 2007-0284
Application 10/454,564

STATEMENT OF THE CASE
The field of Appellants’ invention is conditioning shampoo
compositions (Specification 1). The claimed subject matter is reflected in
representative claim 12, reproduced below:1
12. A conditioning shampoo composition comprising:
a) a detersive surfactant;
b) an aminosilicone having less than 0.5% nitrogen by weight of the
aminosilicone;
c) a non-amino-functionalized silicone having a viscosity of at least 10,000
cs and
d) an aqueous carrier,
wherein the aminosilicone and non-amino functionalized silicone are in the
form of emulsion drops containing a blend of the aminosilicone and non-
amino-functionalized silicone.

ISSUE ON APPEAL
Appellants contend:
There is no teaching or suggestion in Murray to blend the
pre-formed emulsion of amino-functionalized silicone with
the separate pre-formed emulsion of non-amino-
functionalized silicone before they are added to the shampoo
composition. As a result, the shampoo compositions of
Murray only contain emulsion drops of amino-functionalized
silicone and separate emulsion drops of non-amino-
functionalized silicone. . . . Thus, the compositions of
Murray are structurally different from the claimed
conditioning shampoo.
(Br. 5.)

1 The claims are not separately argued. Thus we determine the patentability
of the remaining claims based on our review of claim 12.

2
Appeal 2007-0284
Application 10/454,564

The Examiner responds:
[T]he mixing of the ingredients in Examples 1-2 would
inherently result in a shampoo that contains emulsified drops
that contain a blend of both aminosilicone and non-amino
functionalized silicone, since mixing the emulsified
aminosilicone with the emulsified non-amino functionalized
silicone would necessarily result in a blend of the two
emulsions, as required in the instant claims.
(Answer 4.)
Based on these conflicting positions, the single issue before us is, does
Murray’s mixing of pre-emulsified amino silicone and pre-emulsified non-
aminosilicone in his aqueous shampoo inherently result in “emulsion drops
containing a blend of the aminosilicone and non-amino-functionalized
silicone,” as required by claim 12?

FINDINGS OF FACT
1. Giving claim 12 its broadest reasonable interpretation, it requires at
least some emulsion droplets containing both aminosilicone and non-amino-
functionalized silicone particles. (See claim 12.)
2. Appellants do not dispute that Murray discloses all the elements of
claim 12, except that required by the clause “wherein the aminosilicone and
non-amino functionalized silicone are in the form of emulsion drops
containing a blend of the aminosilicone and non-amino-functionalized
silicone.” (See Br. passim.)
3. Murray generally discloses that the “use of silicones as
conditioning agents in cosmetic formulations is well known” and “dispersed
3
Appeal 2007-0284
Application 10/454,564

droplets of the silicone oil are suspended in the composition . . . .” (Murray,
col. 1, ll. 10-13.)
4. Murray further discloses “incorporating the silicone as a preformed
aqueous emulsion” to avoid using an “in situ hot process[]” and thereby to
make processing “easier.” (Id., col. 1, ll. 39-48.)
5. According to Murray, a “typical method for incorporating
insoluble, non-volatile silicone materials into a conditioning shampoo” is
one “in which such materials are incorporated in the shampoo composition
as a pre-formed aqueous emulsion . . . .” (Id., col. 1, ll. 49-54.)
6. More specifically, Murray discloses preparing a shampoo by
“mixing” with water and other ingredients, a pre-emulsified non-amino
functionalized silicone and a pre-emulsified amino functionalized silicone.
(Murray, col. 9, l. 24 to col. 10, l. 19 (Examples 1 & 2).)
7. Appellants’ and Murray’s emulsions are “stable mixture[s] of two
or more immiscible liquids”, i.e., silicones and water, “held in suspension by
small percentages of emulsifiers.” Hawley’s Condensed Chemical
Dictionary 460 (11th ed. 1987).
8. Appellants’ and Murray’s predominantly aqueous shampoos are
“emulsions … comprised of a continuous [hydrophilic] phase”, i.e., water,
“and a [hydrophobic] disperse phase”, i.e., the various silicones. Id.
9. In the absence of any teaching or suggestion to the contrary and
based on the general laws of physics regarding the combination of
hydrophobic and hydrophilic substances, Murray’s mixing the two pre-
formed silicone emulsions in his aqueous-based shampoo in Examples 1 and
2 would result in at least some droplets containing amino functionalized
4
Appeal 2007-0284
Application 10/454,564

particles blending with some droplets containing non-amino functionalized
particles in the hydrophobic (or oil) phase. (See Answer 4.)

PRINCIPLES OF LAW
With respect to claim interpretation:
[D]uring examination proceedings, “claims are given their
broadest reasonable interpretation consistent with the
specification. . . . [This] proposition ‘serves the public
interest by reducing the possibility that claims, finally
allowed, will be given broader scope than is justified,’ In re
Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.
Cir. 1984), and it is not unfair to applicants, because ‘before
a patent is granted the claims are readily amended as part of
the examination process,’ Burlington Indus., Inc. v. Quigg,
822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed. Cir.
1987).”
In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
“Under 35 U.S.C. § 102, every limitation of a claim must identically
appear in a single prior art reference for it to anticipate the claim.” Gechter
v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997).
However, a limitation can be satisfied through inherency:
Where, as here, 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. . . . Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain
and compare prior art products.
5
Appeal 2007-0284
Application 10/454,564

In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)
(footnote omitted). See also In re Spada, 911 F.2d 705, 709, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990) (“when the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not”).

DISCUSSION
Appellants do not dispute that Murray discloses every limitation of
claim 12, except the clause “wherein the aminosilicone and non-amino
functionalized silicone are in the form of emulsion drops containing a blend
of the aminosilicone and non-amino-functionalized silicone.” (See Br.
passim.) Based on the laws of physics, in the absence of any evidence to
the contrary, we find this disputed limitation is met: Murray’s mixing of
pre-emulsified amino silicone and pre-emulsified non-aminosilicone in his
aqueous shampoo inherently results in at least some “emulsion drops
containing a blend of the aminosilicone and non-amino-functionalized
silicone,” as required by claim 12. (See Answer 4.)
We disagree with Appellants’ unsupported argument that Murray’s
shampoo compositions “only contain emulsion drops of amino-
functionalized silicone and separate emulsion drops of non-amino-
functionalized silicone” and thus are “structurally different from the claimed
conditioning shampoo.” (Br. 5.) The Examiner has at least made a prima
facie case to the contrary. Appellants have not provided any evidence to
rebut the Examiner’s prima facie case. Thus, we affirm the Examiner’s
§ 102(b) rejection of claim 12.
6
Appeal 2007-0284
Application 10/454,564

Since Appellants did not separately argue the patentability of claims
14-20, we also affirm their rejection pursuant to 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSIONS
We affirm the § 102(b) rejection of claims 12 and 14-20, all the
pending claims, based on Murray.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
AFFIRMED

lbg

THE PROCTER & GAMBLE COMPANY
INTELLECTUAL PROPERTY DIVISION - WEST BLDG.
WINTON HILL BUSINESS CENTER - BOX 412
6250 CENTER HILL AVENUE
CINCINNATI OH 45224
7