Ex Parte Wood et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201712145206 (P.T.A.B. Feb. 21, 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. 12/145,206 06/24/2008 JONATHAN WOOD 101216-100 2905 27387 7590 02/21/2017 LONDA, BRUCE S. NORRIS MCLAUGHLIN & MARCUS, PA 875 THIRD AVE, 8TH FLOOR NEW YORK, NY 10022 EXAMINER MATTISON, LORI K ART UNIT PAPER NUMBER 1619 MAIL DATE DELIVERY MODE 02/21/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN WOOD, BRITTA PUNSCH, and JORG SCHNEIDER1 Appeal 2015-007455 Application 12/145,206 Technology Center 1600 Before ERIC B. GRIMES, RYAN H. FLAX, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to a composition for permanent shaping of hair, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The “invention concerns a composition for the permanent shaping of human hair.” (Spec. 1.) The Specification states that “[u]se of aminated 1 Appellants identify the Real Party in Interest as KAO GERMANY GMBH. (Appeal Br. 2.) Appeal 2015-007455 Application 12/145,206 silicone emulsions in permanent shaping compositions of keratin fibres is generally known in the art. The aminated silicone emulsion used until now in permament [sic] shaping compositions comprises cationic surfactants such as cetrimonium chloride as emulsifiers. The aminated silicone used is amodimethicone.” (Id. at 2.) The Specification also states that “replacing amodimethicone emulsion based on cationic emulsifier with an amodimethicone emulsion based on non-ionic emulsifier and free from any cationic surfactant improves shaping efficiency and gives hair natural feel of hair upon toughing [sic, touching].” (Id.) “Among the non-ionic surfactants the most preferred nonionc [sic] surfactants are the ones according to formula CH3(CH2)12(OCH2CH2)„OH wherein n is a number between 2 and 20. Preferred ones have an n between 4 and 10. Such are known with the CTFA name Trideceth and with a number defining the number of ethoxy groups.” (Id. at 3.) Claims 1, 2, 6—11, 16, and 17 are on appeal. Claim 1 is the only independent claim and reads as follows: 1. A reducing composition for the permanent shaping of human hair, comprising at least one reducing agent at a concentration of above 2% by weight, calculated to the total composition, and an aminated silicone emulsion at a concentration in the range of 0.1 to 2.5% by weight calculated to the total composition, wherein the aminated silicone emulsion comprises amodimethicone emulsified in at least one nonionic surfactant, wherein the aminated silicone emulsion is free of cationic surfactants, wherein the at least one nonionic surfactant is according to the formula CH3(CH2)i2(OCH2CH2)„OH wherein n is between 4 and 10. App. Br. 22 (Claims Appendix). 2 Appeal 2015-007455 Application 12/145,206 The claims stand rejected as follows: Claims 1, 2, 7, 8, 11, and 17 under 35 U.S.C. § 103(a) based on Rezvani,2 Gruber,3 Ellis,4 and Bergstrom5 (Ans. 3); Claims 1, 2, 6—8, 10, 11, 16, and 17 under 35 U.S.C. § 103(a) based on Rezvani, Gruber, Ellis, Bergstrom, and Williams6 (Ans. 6); Claims 1, 2, 7, 8, 10, 11, and 17 under 35 U.S.C. § 103(a) based on Rezvani, Gruber, Ellis, Bergstrom, and Dubief7 (Ans. 9); and Claims 1, 2, 7—9, 11, and 17 under 35 U.S.C. § 103(a) based on Rezvani, Gruber, Ellis, Bergstrom, and Roller8 (Ans. 10). DISCUSSION The Examiner has rejected the claims as obvious based on Rezvani, Gruber, Ellis, and Bergstrom, by themselves or combined with one of Williams, Dubief, or Roller. The same issue is dispositive for all of the rejections. The Examiner finds that Rezvani discloses a permanent wave lotion that comprises a reducing agent (6.75 wt%) and a nonionic surfactant (1.5 wt%), and which can incorporate additional additives, including amodimethicone (2 wt%). (Ans. 3.) The Examiner notes that Rezvani does 2 Rezvani et al., US 6,378,530 Bl, issued Apr. 30, 2002. 3 Gruber et al., Principles of Polymer Science and Technology in Cosmetics and Personal Care (E. Desmond Goddard ed., 1999). 4 Ellis et al., US 2001/0008631 Al, published July 19, 2001. 5 Bergstrom et al., US 5,332,570, issued July 26, 1994. 6 Williams et al., WO 89/07435, published Aug. 24, 1989. 7 Dubief et al., US 5,208,014, issued May 4, 1993. 8 Roller et al., EP 1059077 A2, published Dec. 13, 2000. We rely on the English translation, as did the Examiner. 3 Appeal 2015-007455 Application 12/145,206 not disclose an emulsion of amodimethicone and the specific surfactant recited in claim 1. {Id. at 5.) The Examiner finds that Gruber teaches that amodimethicone emulsions using nonionic surfactants are desirable in shampoos because they avoid complex formation between cationic emulsifiers and anionic surfactants in the shampoo system. (Id.) The Examiner finds that Ellis teaches the use of DC 2-8177 in shampoos and conditioners to repair damaged hair, including hair damaged by perming. (Id.) The Examiner also finds that DC 2-8177 contains amodimethicone and surfactants encompassed by the formula of claim 1. (Id.) Finally, the Examiner finds that Bergstrom teaches that nonionic surfactants make hair more easily penetrable by a permanent wave solution. {Id. at 6.) The Examiner concludes that it would have been obvious to replace the amodimethicone in Rezvani’s composition with DC 2-8177 in order to repair damage caused by perming and to increase penetration of the solution into hair, based on Ellis and Bergstrom. {Id.) Appellants argue that the references do not support a prima facie case of obviousness because all of Rezvani’s compositions that contain amodimethicone also contain Quatemium 75, which is a cationic surfactant. (Appeal Br. 7.) Appellants also argue that they have presented evidence of unexpected results that supports nonobviousness. (Appeal Br. 8—19.) We agree with Appellants that the Examiner’s rejection is not supported by a preponderance of the evidence. Specifically, Appellants have shown evidence of unexpected results that outweigh the evidence favoring obviousness. 4 Appeal 2015-007455 Application 12/145,206 The cited references do not strongly support a prima facie case of obviousness. As Appellants have noted, all of the compositions disclosed by Rezvani that contain amodimethicone, including its general “preferred” composition, also contain Quatemium 75. (Rezvani, Tables II, IV, V, VIII, and X—XIV.) The Examiner reasons that it would have been obvious to add amodimethicone to Rezvani’s compositions that contain only a nonionic surfactant in order to condition hair during the perming process, but does not cite an evidentiary basis for expecting or desiring this result. (Ans. 14—15.) Although Ellis states that emulsified particles of silicone enhance conditioning performance (Ellis 190), both Ellis and Gruber are directed to shampoos or conditioners, not to permanent waving compositions. In addition, Bergstrom’s teachings are directed to nonionic surfactants generally, not to an emulsion comprising amodimethicone and the specific nonionic surfactant recited in claim 1. In rebuttal to the Examiner’s case, Appellants point to the Specification’s Example 1 and to the Wood Declarations.9 (Appeal Br. 8— 19.) Example 1 describes a composition comprising 21.3 wt% ammonium thioglycolate (reducing agent; Spec. 3), 0.5 wt% Belsil ADM 8020 VP,10 and free of cationic surfactants. (Spec. 11.) The Specification states that 9 Declarations under 37 C.F.R. § 1.132 of Jonathan Wood dated June 30, 2011 (“First Wood Declaration”) and Dec. 2, 2011 (“Second Wood Declaration”). 10 The Specification states that Belsil ADM 8020 VP is an emulsion comprising amodimethicone, Trideceth-5, and Trideceth-10. (Spec. 3.) Therefore, it is encompassed by the aminated silicone emulsion of claim 1. 5 Appeal 2015-007455 Application 12/145,206 when hair was permanently waved using this composition, “[homogeneous wave appearance was obtained.” (Id.) The Specification states that when the same composition was prepared using DC 949, which comprises a cationic surfactant, as an emulsifier, “[i]t was found that the hair waved with inventive composition produced more intensive and uniform waves and hair felt more natural upon touching and had its natural shine.” (Id.) The Specification also states that “[i]t has surprisingly been found out by the present inventors replacing amodimethicone emulsion based on cationic emulsifier with an amodimethicone emulsion based on non-ionic emulsifier and free from any cationic surfactant improves shaping efficiency and gives hair natural feel of hair upon toughing [sic, touching].” (Id. at 2.) The First Wood Declaration describes in more detail the experiment that was carried out and led to the results described in the Specification. (First Wood Decl. 3—4.) The First Wood Declaration states that the two compositions described in the example were tested on ten subjects, with each composition used on a half-side of hair on each subject, and then hair dressers evaluated both half-sides of hair for wave intensity and wave uniformity. The First Wood Declaration states: The hair dressers’ evaluations were as follows: Inventive Composition Comparative Composition of Example 1 of Examp le 1 No difference Wave intensify 7 2 1 Wave uniformity 8 1 1 (Id. at 3.) 6 Appeal 2015-007455 Application 12/145,206 Mr. Wood states that “[i]t would have been expected that the results for the first and second half sides of hair of each of the ten half side tests would have been the same or very similar,” because the only difference between the compositions was the surfactant used. {Id. at 4.) Mr. Wood states, however, that “it was observed that the hair dressers surprisingly and unexpectedly preferred the first half sides of hair treated with the inventive composition” for both wave intensity and wave uniformity. {Id.) Mr. Wood concludes that the “inventive composition of Example 1 . . . provides surprisingly unexpected and superior results when directly compared to the results obtained from the comparative composition of Example 1.” {Id.) The Examiner finds, however, that Example 1 does not show a comparison to the closest prior art “because it compares the inventive composition to Comparative Example 1 which is not the closest prior art because Comparative Example 1 comprises cationic surfactants and cationic surfactants are explicitly excluded by claim 1.” (Ans. 17.) The Examiner finds that “REZVANI is the closest prior art because REZVANI explicitly teaches reducing lotions (emulsions) which contain nonionic surfactant as the only surfactant. . . and further teaches inclusion of amodimethicone in the reducing lotions (emulsions).” {Id.) Appellants argue that the Examiner is asking for a comparison to “what the hypothetical combined teachings of the prior art produce, and not on the differences between the claims and the actual closest piece of prior art.” (Appeal Br. 11.) Appellants argue that the comparative example of the Specification is closer to the claimed composition than any of Rezvani’s actual compositions because it differs from the claimed composition only in 7 Appeal 2015-007455 Application 12/145,206 the type of surfactant in the amodimethicone emulsion, whereas Rezvani does not describe its compositions that contain amodimethicone as having it in the form of an emulsion. {Id. at 8—9.) Appellants argue that “[t]he Examiner has not pointed to any compositions in the prior art that are closer than the Comparative Composition of present Example 1.” {Id. at 10.) We agree with Appellants that the comparison that the Examiner is requesting would represent a comparison of the claimed invention with itself. That is, Rezvani’s embodiments either contain a nonionic surfactant but no amodimethicone or they contain both amodimethicone and Quatemium 75, which the Examiner does not dispute is a cationic surfactant as specifically excluded in the claims at issue. In addition, Rezvani does not describe the amodimethicone in its compositions, when included, as being in the form of an emulsion. The Specification’s Example 1, by contrast, shows a comparison of otherwise identical compositions comprising amodimethicone emulsions with either the surfactant of claim 1 or a cationic surfactant. (Spec. 11.) Both the Specification and the First Wood Declaration state that the difference in performance based on the type of surfactant was surprising. (Spec. 2, First Wood Decl. 4.) The Examiner has not pointed to evidence that contradicts the statements in the Specification and in the First Wood Declaration. See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“Mere improvement in properties does not always suffice to show unexpected results. In our view, however, when an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should 8 Appeal 2015-007455 Application 12/145,206 suffice to establish unexpected results in the absence of evidence to the contrary.”). The Examiner also concludes that the First Wood Declaration “is not commensurate in scope with the claims because claim 1 is generic to reducing agents, yet only one species of reducing agent was examined. In other words, Appellant failed to show unexpected results over a representative number of species.” (Ans. 18.) Appellants, however, argue that the results are commensurate because the Second Wood Declaration “provides evidence that it is known in the art that ah of the reducing agents disclosed in paragraph [0016] of the present application are operationally equivalent (i.e., reduce the disulfide bonds in hair) and interchangeable when incorporated into a reducing composition, such as, the presently claimed reducing composition.” (Appeal Br. 17.) The Second Wood Declaration states that the reducing agents disclosed in the Specification are known to “have the same reducing effect for hair” and are known in the art to be “operationally equivalent.” (Second Wood Deck 116.) Mr. Wood also states that none of the disclosed reducing agents “would substantially impact and/or affect the experimental evidence collected during the experiment set forth in the previous Declaration” and “one of ordinary skill in the art understands that selection and inclusion of any of the reducing agents disclosed in paragraph [0016] of the present application would have no or substantially little relationship to and/or impact on the experimental data set forth in the [First] Wood Declaration.” (Id.) The Examiner has not cited any evidence that contradicts the Second Wood Declaration. Therefore, the Examiner’s conclusion that the data in the 9 Appeal 2015-007455 Application 12/145,206 First Wood Declaration are not commensurate in scope with the claims is not supported by a preponderance of the evidence. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is commensurate with [the] scope of the claims.”). In summary, we conclude that a preponderance of the evidence does not support the Examiner’s conclusion that claim 1 would have been obvious based on Rezvani, Gruber, Ellis, and Bergstrom. Because all of the claims on appeal depend from claim 1, and all of the rejections rely on the combination of Rezvani, Gruber, Ellis, and Bergstrom, we reverse all of the rejections on appeal. REVERSED 10 Copy with citationCopy as parenthetical citation