ISP INVESTMENTS INC.Download PDFPatent Trials and Appeals BoardMar 17, 20222021001264 (P.T.A.B. Mar. 17, 2022) 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. 14/773,038 09/04/2015 Yan ZHOU 3644USPCT 7729 67749 7590 03/17/2022 Ashland LLC WILLIAM J. DAVIS, ESQ. 1005 U.S. 202/206 Bridgewater, NJ 08807 EXAMINER MATTISON, LORI K ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): ntietcheu@ashland.com schen@ashland.com wdavis@ashland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YAN ZHOU, RAYMOND RIGOLETTO, LINDA C. FOLTIS, XIN QU, and ALLWYN COLACO Appeal 2021-001264 Application 14/773,038 Technology Center 1600 Before DONALD E. ADAMS, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4-7, 15, 18-21, and 34.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as ISP Investments LLC. Appeal Br. 2. 2 Claims 2, 3, and 8-14 have been cancelled. Claims 16, 17, 22-33 have been withdrawn. Appeal Br. 11-17 (Claims App.). Appeal 2021-001264 Application 14/773,038 2 STATEMENT OF THE CASE The Specification states that “consumers have increasing desire to temporally change their hair appearance so as to keep their hair style to the latest . . . fashion or express their . . . personal style,” but that “[t]he temporary setting of hair created by . . . traditional methods lasts not long . . . and disappears when hair becomes wet under high humidity conditions or is washed.” Spec. ¶ 2. According to the Specification, “[t]herefore, there is a need for a composition and methods which can offer benefit of durable non-permanent hair styling and/or wash-resistant retention of shape of hair fibers over multiple shampoo washes and multiple conditioner rinsing.” Id. CLAIMED SUBJECT MATTER The claims are directed to an aqueous hair composition. Claim 1 is illustrative: 1. An aqueous hair care composition capable of providing durable non-permanent hair styling, wash- resistant retention of shape of hair fibers, or both, the composition comprising polyelectrolyte complexes having a gel matrix structure, wherein the polyelectrolyte complex is a complex between: A. 0.01 wt. % to 20 wt. % of an anionic polymer having a molecular weight of about 100,000 Daltons to about 5,000,000 Daltons and being a diacid or half ester of methyl vinyl ether/maleic anhydride (MVE/MA) copolymer; and B. 0.1 wt. % to 20 wt. % of a cationic polymer having a (i) molecular weight range of 80,000 Daltons to 5,000,000 Daltons, (ii) a charge density of less than about 4.0 meq/gram, and (iii) being a polyquaternium-55 (PQ- 55); wherein, the charge ratio of (B):(A) is more than 0.70; Appeal 2021-001264 Application 14/773,038 3 the polyelectrolyte complex has an average particle size of more than about 15 microns and wherein the gel matrix structure is formed by mixing 0.01 wt.% to 20 wt.% of the anionic polymer (A) and 0.1 wt.% to 20 wt.% of cationic polymer (B), wherein A is added to B or B is added to A at room temperature, and wherein said A is pre-neutralized to a pH of about 5 to about 10 before mixing with B. Appeal Br. 11 (Claims App.). REJECTION(S) A. Claims 1, 4-7, 15, 18-21, and 34 are rejected under 35 U.S.C. § 103 as being unpatentable over Rigoletto ’983,3 Rigoletto Reference,4 and Zhou,5 as evidenced by Barnhart,6 entry on “polyquarternium-28” in the Skin Deep® Cosmetics Database,7 and Cao.8 Final Act. 5. B. Claims 1, 4-7, 15, 18-21, and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 3 Rigoletto, Jr. et al., US 7,837,983 B2, issued Nov. 23, 2010 (“Rigoletto ’983”). 4 R. Rigoletto et al., Semi-Permanent Split End Mending with a Polyelectrolyte Complex, 58 J. COSMETIC SCI. 451 (2007) (“Rigoletto Reference”). 5 Y. Zhou et al., Protection of Oxidative Hair Color Fading from Shampoo Washing by Hydrophobically Modified Cationic Polymers, 60 J. COSMETIC SCI. 217 (2009). 6 Barnhart et al., US 9,248,146 B2, issued Feb. 2, 2016 (“Barnhart”). 7 “Polyquaternium-28.” Environmental Working Group, Skin Deep® Cosmetics Database, https://www.ewg.org/skindeep/ingredient/705109/ POLYQUATERNIUM-28/ (last visited Oct. 2, 2016) (“Skin Deep®”). 8 Cao et al., US 8,545,828 B1, issued Oct. 1, 2013. Appeal 2021-001264 Application 14/773,038 4 9-11, 12, and 32-37 of U.S. Patent No. 7,837,983 (’983 patent) in view of Zhou. Final Act. 15. OPINION A. Obviousness over Rigoletto ’983, Rigoletto Reference, and Zhou, as evidenced by Barnhart, Skin Deep®, and Cao (claims 1, 4-7, 15, 18-21, and 34) 1. Issue The Examiner finds that Rigoletto ’983 teaches or suggests a hair care composition meeting all of the limitations of claim 1, except that it does not explicitly teach Polyquaternium-55 (PQ-55) as the cationic polymer of the complex. Final Act. 8. However, the Examiner finds that Rigoletto’983 generally teaches polyelectrolyte complexes (PEC) comprising a cationic polyquaternium compound and also teaches that polyelectrolyte complexes comprising (1) polyvinylmethyl/maleic acid (PVM/MA) copolymer and (2) Polyquaternium-28 (PQ-28) are useful in mending hair. Id. at 7. The Examiner also finds that Zhou teaches that PQ-55 is superior to PQ-28 for hair color protection. Final Act. 9-11, Ans. 4. The Examiner further finds that Zhou teaches that “the mechanism through which PQ-55 works is through the polymer adsorbing around the pores of hair, which leads to the complete sealing of the pores or a reduction in the size of these openings, and the polymer binding to cuticle edges, which provides a protective layer on the cuticle ends.” Ans. 8. Accordingly, the Examiner finds that a skilled artisan would have had reason to substitute PQ-28 in the polyelectrolyte complexes of Rigoletto ’983 with PQ-55, with a reasonable expectation of success, because PQ-28 polymer and PQ-55 polymers interact with hair Appeal 2021-001264 Application 14/773,038 5 through the same mechanisms [i.e. electrostatic associations which seal the hair cuticle],” and in order to “improve the binding of the PEC to damaged hair and improve the substantivity of the composition on hair while providing the additional advantage of better hair color protection.” Final Act. 11, Ans. 4, 8-9. Appellant contends that the cited prior art references, individually or in combination, do not suggest the claimed hair care composition “featuring the specific combination of polyquaternium 55 (B) and a MVE/MA copolymer (A) and exhibiting the charge ratio of (B):(A) being more than 0.7)” and further does not suggest “the aggregated benefits in treating hair derived therefrom.” Appeal Br. 8. Appellant does not separately argue the claims. We therefore focus our analysis on claim 1 as representative. The issue with respect to this rejection is whether a skilled artisan would have had reason to substitute PQ- 28 with PQ-55 in the polyelectrolyte complexes of the compositions of Rigoletto ’983, with a reasonable expectation of success of arriving at the claimed invention. 2. Analysis Unless otherwise noted, we adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art with respect to claim 1 (Final Act. 5-14; Ans. 3-4, 5-14) and agree that claim 1 is obvious over Rigoletto ’983, Rigoletto Reference, and Zhou, as evidenced by Barnhart, entry on “polyquarternium-28” in the Skin Deep® Cosmetics Database, and Cao. Only those arguments timely made by Appellant in the Appeal Brief (no Reply Brief was submitted) have been considered; Appeal 2021-001264 Application 14/773,038 6 arguments not so presented in the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant contends that the cited prior art references, individually or in combination, do not suggest the PEC “recited in Appellant’s claims comprising a combination of polyquaternium-55(B) and an MVE/MA copolymer (A) exhibiting charge ratio of (B): (A) of more than 0.70.” Appeal Br. 5-6, 7.9 In particular, Appellant contends that “the Examiner’s reliance on the PEC of PVM/MA and PQ-28 is insufficient to cure the deficiencies in Rigoletto[10] because Appellant’s claims recite a PEC of PVM/MA and PQ-55 having a charge ratio of (B): (A) more than 0.70.” Id. at 6. We are not persuaded. It is well-established that a reference is prior art for all that it teaches to a skilled artisan, not merely its preferred 9 Appellant points out the combination of its claimed polymers “forms a phase structure containing a gel matrix.” Appeal Br. 5, see also id. at 6. Appellant also asserts that the claimed PEC “has an average particle size of more than about 15 microns” and that the gel matrix structure recited in the claim is formed a certain way, i.e., by mixing 0.01-20 wt.% of MVE/MA and 0.1-20 wt.% of PQ-55, “wherein MVE/MA is added to PQ-55 or PQ-55 is added to MVE/MA at room temperature, and wherein said MVE/MA is pre-neutralized to a pH of about 5 to about 10 before mixing with PQ-55.” Id. at 6; see also id. at 9-10. However, Appellant acknowledges that “[t]he Examiner relies on Rigoletto . . . for (i) particle size; (ii) charge ratio; (iii) pre-neutralization; (iv) gel matrix.” Id. at 6-7. Neither has Appellant provided any cogent argument as to why Rigoletto does not suggest these limitations. Thus, we understand Appellant’s argument to be focused on the limitation, “wherein the polyelectrolyte complex is a complex between . . . a diacid or half ester of methyl vinyl ether/maleic anhydride (MVE/MA) copolymer[] and . . . a polyquaternium-55 (PQ-55).” 10 Appellant refers to Rigoletto ’983 and the Rigoletto Reference together as Rigoletto. Appeal Br. 5. Appeal 2021-001264 Application 14/773,038 7 embodiments. Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). As the Examiner explains, Rigoletto ’983 teaches a hair care composition comprising a PEC between (a) a cationic polyquaternium polymer, and (b) an anionic copolymer containing mono-, di- or tri-acid groups, or salts thereof, in a charge ratio of (a):(b) of 0.82 to 1.80, preferably 0.90 to 1.50. Rigoletto 4:58-64. Thus, although Rigoletto teaches a complex between Gantrez® S-97 (i.e., PVM/MA copolymer) and Conditioneze® NT-20 (i.e., PQ-28) as a preferred embodiment, Rigoletto’s disclosure is broader and encompasses the use of cationic polyquaternium polymer generally in a PEC that meets the charge ratio limitation of claim 1. Rigoletto ’983 4:58-64, 5:24-58, 7:29-32. Furthermore, the Examiner relies on Zhou, a different reference, to disclose the specific use PQ-55 in a hair care composition, and provided articulated reasoning as to why a skilled artisan would have had reason to substitute PQ-28 in Rigoletto’s preferred embodiment with PQ-55, to arrive at the claimed invention. Final Act. 11, Ans. 4, 8-9. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). With respect to the Examiner’s citation to Zhou for the disclosure of PQ-55, Appellant contends only that “PQ-55 . . . is structurally very different than PQ-28.” Id. We are not persuaded. Although PQ-55 and PQ- 28 are different polymers, they are both cationic polyquaternium polymers, i.e., the category of cationic polymers Rigoletto ’983 teaches as useful in the Appeal 2021-001264 Application 14/773,038 8 PECs of its invention. Neither has Appellant provided any persuasive arguments why any differences in the structure between PQ-28 and PQ-55 would obviate the Examiner’s articulated reasoning why a skilled artisan would have had reason to substitute the PQ-28 explicitly disclosed in Rigoletto ’983 with the PQ-55 of Zhou. Appellant contends that a skilled artisan “by combining and applying the teachings of . . . Rigoletto about a hair care composition comprising a microgel based PEC of PVM/MA copolymer and PQ-28 having a particle size of 0.53 to 31.68 µm, and a charge ratio between 0.9 to 1.14 . . . to Zhou’s method of preventing color fading methods using PQ-55 would not have been motivated to develop or arrive at Appellant’s claimed aqueous hair care composition.” Appeal Br. 7. We are not persuaded by this conclusory attorney statement, which is not further supported by reasoned argument, citations to the art, declaration from a skilled artisan, or any other evidence. Appellant contends that the combination of claimed polymers “provides aggregate benefits in treating hair.” Appeal Br. 5, 7-8. Appellant contends that the prior art does not disclose “the aggregated benefits in treating hair deriving from [the claimed] combination.” Id. at 8, 10. We are not persuaded. Appellant has not pointed to evidence showing, or even argued, that the benefits provided by the claimed composition are unexpected. To the extent Appellant’s argument is that the prior art does not disclose “an aqueous hair care composition capable of providing durable non-permanent hair styling, wash-resistant retention of shape of hair fibers, or both,” we are equally unpersuaded. As the predecessor of our reviewing Appeal 2021-001264 Application 14/773,038 9 court has explained, “it is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art.” In re Swinehart, 439 F.2d 210, 212-213 (CCPA 1971). Furthermore, [w]here, 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. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). Appellant has not provided persuasive evidence that the hair composition suggested by the combination of the cited prior art, which is identical or substantially identical to the claimed composition, would not be “capable of providing durable non-permanent hair styling, wash-resistant retention of shape of hair fibers, or both.” Accordingly, we affirm the Examiner’s rejection of claim 1 as obvious over Rigoletto ’983, Rigoletto Reference, and Zhou, as evidenced by Barnhart, the entry on “polyquarternium-28” in the Skin Deep® Cosmetics Database, and Cao. Claims 4-7, 15, 18-21, and 34, which are not separately argued, fall with claim 1. Appeal 2021-001264 Application 14/773,038 10 B. Nonstatutory obviousness-type double patenting rejection over claims 1-5, 9-11, 12, and 32-37 of ’983 patent in view of Zhou (clams 1, 4-7, 15, 18-21, 34) The Examiner rejected claims 1, 4-7, 15, 18-21, and 34 on the ground of nonstatutory obviousness-type double patenting over claims 1-5, 9-11, 12, and 32-37 of the ’983 patent in view of Zhou. Although Appellant includes this rejection in the listing of grounds of rejection to be reviewed on appeal, Appeal Br. 5, Appellant does not offer any substantive arguments against the rejection. Accordingly, we summarily affirm the Examiner’s double patenting rejection. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-7, 15, 18-21, 34 103 Rigoletto ’983, Rigoletto Reference, Zhou, Barnhart, Skin Deep®, Cao 1, 4-7, 15, 18-21, 34 1, 4-7, 15, 18-21, 34 Nonstatutory Double Patenting: U.S. Patent No. 7,837,983, Zhou 1, 4-7, 15, 18-21, 34 Overall Outcome 1, 4-7, 15, 18-21, 34 Appeal 2021-001264 Application 14/773,038 11 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation