L'OREAL

Patent Trials and Appeals Board

Feb 3, 2022

2021002727 (P.T.A.B. Feb. 3, 2022)

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. 14/441,352 05/07/2015 Nicolas Daubresse 4000-559US 5584 61275 7590 02/03/2022 The Marbury Law Group, PLLC 11800 Sunrise Valley Drive 15th Floor Reston, VA 20191 EXAMINER MATTISON, LORI K ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 02/03/2022 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): ptonotices@marburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICOLAS DAUBRESSE and CHRISTELLE MORVAN Appeal 2021-002727 Application 14/441,352 Technology Center 1600 Before ULRIKE W. JENKS, JOHN E. SCHNEIDER, and JAMIE T. WISZ, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 19-36.2 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(a). Appellant identifies the real party in interest as L’OREAL. Appeal Br. 2. 2 Claims 37 and 38 are pending in the application but have been withdrawn from consideration. Final Act. 1. Appeal 2021-002727 Application 14/441,352 2 CLAIMED SUBJECT MATTER The invention relates to a hair straightening composition comprising a dicarbonyl compound. Claim 19, reproduced below, is illustrative of the claimed subject matter: 19. A cosmetic composition comprising: at least one component chosen from dicarbonyl compounds of formula (I), hydrates thereof, or salts thereof: wherein in formula (I): R represents an atom or group chosen from i) hydrogen, ii) carboxyl -C(O)OH, iii) linear or branched C1-C6 alkyl which is optionally substituted, iv) optionally substituted phenyl, v) optionally substituted benzyl, vi) an indolyl group, or vii) an imidazolylmethyl group and tautomers thereof, or compounds represented by the formula below: and tautomers thereof, wherein * represents the part linked to the rest of the dicarbonyl compound; at least one cationic surfactant chosen from optionally polyoxyalkylenated primary, secondary, or tertiary fatty amines, or salts thereof; quaternary ammonium salts chosen from halide, phosphate, acetate, or lactate salts; or mixtures thereof; and at least one non-liquid fatty substance, wherein: the total amount of the at least one component chosen from dicarbonyl compounds of formula (I), hydrates thereof, or salts thereof ranges from about 3% to about 15% by weight, relative to the total weight of the cosmetic composition; Appeal 2021-002727 Application 14/441,352 3 the total amount of the at least one non-liquid fatty substance ranges from about 1 % to about 30% by weight, relative to the total weight of the cosmetic composition; and further wherein the cosmetic composition has a pH of less than or equal to about 4. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Khahil et al. US 4,237,910 Dec. 9, 1980 Galleguillos et al. US 6,410,005 B1 June 25, 2002 Resnick et al. US 2009/0165812 A1 July 2, 2009 De Boni et al. WO 2011/089985 A1 July 28, 2011 Syed WO 2012/105985 A1 Aug. 9, 2012 REJECTION The Examiner has rejected claims 19-36 under 35 U.S.C. § 103(a) as unpatentable over Syed in view of Khalil, Galleguillos, and Resnick. OPINION Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of claims 19-36 would have been obvious to one of ordinary skill in the art at the time the invention was made over Syed combined with Khalil, Galleguillos, and Resnick. The Examiner finds Syed teaches a hair straightening composition comprising “about 64.17% water (i.e. aqueous), cetyl alcohol (i.e. non-liquid Appeal 2021-002727 Application 14/441,352 4 fatty substance; (elected species)), 30% glyoxylic acid (50% aqueous; i.e. 15% hydrated glyoxylic acid (elected species), a dicarbonyl compound of formula I) and behentrimonium methosulfate (i.e. a cationic surfactant)”. Final Act. 5. The Examiner finds Syed teaches that the composition has a pH of about 1.5. Id. The Examiner finds “SYED does not teach the amount of non-liquid fatty substance is present in an amount from about 1% to about 30% by weight of the composition, the cationic surfactant is cetyl trimethylammonium salts present in an amount from about 0.1% to about 15% by weight relative to the total cosmetic composition.” Id. at 7. The Examiner finds Khahil teaches a relaxer composition that includes about 7-25% of emulsifying agents which comprise C12-C18 fatty alcohols and cetyl alcohol. Id. The Examiner finds Galleguillos teaches that both behenyl trimethyl ammonium methosulfate and cetearyl alcohol mixture and cetyl trimethyl ammonium chloride are water-insoluble conditioning agents. Id. The Examiner finds Resnick teaches a hair straightening composition comprising cetrimonium chloride as a conditioner. Id. at 7-8. The Examiner finds cetrimonium chloride to be the same as cetyl trimethyl ammonium chloride, the elected species. Id. The Examiner concludes It would have been prima facie obvious to a person of ordinary skill in the art at the time the invention was made to have modified SYED’s acidic hair straightening composition by adjusting the amount of cetyl alcohol to be between 7-25% of the hair straightening composition as suggested by KHAHIL and substituting the SYED’s behenyl trimethyl ammonium methosulfate and cetearyl alcohol mixture with 2.0 % cetyl Appeal 2021-002727 Application 14/441,352 5 trimethyl ammonium chloride as suggested by RESNICK [yielding a ratio dicarbonyl compound: cationic surfactant ratio = 7.5] because the compositions taught by each of SYED, KHAHIL and RESNICK are hair straightening/relaxer compositions. The skilled artisan would have been motivated to modify SYED’s acidic hair straightening composition by adjusting the amount of cetyl alcohol to be between 7-25% of the hair straightening composition as suggested by KHAHIL and substituting the SYED’s behenyl trimethyl ammonium methosulfate and cetearyl alcohol mixture with 2.0 % cetyl trimethyl ammonium chloride as suggested by RESNICK, with a reasonable expectation of success, because this amount of emulsifying agents, including the fatty alcohol cetyl alcohol, taught as be within the beneficial range for hair relaxers by for inclusion in hair straightening/relaxer compositions while behenyl trimethyl ammonium methosulfate and cetearyl alcohol mixture and cetyl trimethyl ammonium chloride are both functionally equivalent water insoluble conditioning agents used in hair straighteners as suggested by the combined teachings of SYED, GALLEGUILLOS and RESNICK. With regard to the amount of water, cationic surfactant/cetyltrimethylammonium chloride, glyoxylic acid and cetyl alcohol and the ratio of dicarbonyl compound to cationic surfactant/cetyltrimethylammonium chloride, the prior art references teach these parameters having values which either overlap or fall within the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Id. at 8-9. Appellant contends that one skilled in the art would not have been motivated to use the claimed cationic surfactant based on the teachings of the references. Appeal Br. 6. Appellant contends that the behentrimonium methosulfate disclosed in Syed is not a polyoxyalkylenated primary, Appeal 2021-002727 Application 14/441,352 6 secondary, or tertiary fatty amines, or salts thereof; quaternary ammonium salts chosen from halide, phosphate, acetate, or lactate salts; or mixtures thereof as required by claim 19. Id. Appellant contends that one skilled in the art would not have substituted 2.0% cetyl trimethyl ammonium chloride for the 0.2 wt% behenyl trimethyl ammonium methosulfate/cetearyl alcohol in the cited Example 12-AP of Syed. Id at 7. Appellant contends that the composition of Syed is moderately acidic and the composition of Resnick is weakly basic. Id. at 7-8. Appellant contends that the difference in pH would not lead one skilled in the art to make the proposed substitution. Id. at 8. Appellant contends that while Galleguillos lists both behenyl trimethyl ammonium methosulfate and cetyl trimethyl ammonium chloride as water insoluble conditioning agents, there is no information as to how they perform. Id. Appellant contends that there is nothing in Galleguillos to lead one skilled in the art to believe that they are functionally equivalent. Id. Appellant contends that one skilled in the art would not have had a reasonable expectation of success in combining the teachings of the references. Id. Appellant contends that one skilled in the art would have had no motivation to increase the amount of surfactant in Syed to match the level used in Resnick. Appellant contends that the Examiner has failed to show a reasonable expectation of success in combining the references. Analysis We adopt the Examiner’s findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection. We find the Examiner has established a prima facie showing that the subject matter of the claims would have been Appeal 2021-002727 Application 14/441,352 7 obvious over Syed combined with Khalil, Galleguillos, and Resnick to a person of ordinary skill in the art at the time the invention was made. Appellant has not produced evidence showing, or persuasively argued, that the Examiner’s determinations on obviousness are incorrect. Only those arguments made by Appellant in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). We have identified claim 19 as representative; therefore, all claims fall with claim 19. We address Appellants’ arguments below. Appellant contends one skilled in the art would not been motivated to substitute 2.0% cetyl trimethyl ammonium chloride for the 0.2 wt% behenyl trimethyl ammonium methosulfate/cetearyl alcohol in the cited Example 12- AP of Syed. Appeal Br. at 7. Appellant contends that the different pHs of the two systems would not lead one skilled in the art to make the substitution. Id. at 7-8. We have considered Appellant’s argument and are not persuaded that the Examiner’s proposed substitution is erroneous. While some of the formulations of Resnick are slightly basic, Resnick teaches a Hair Fixative formulation with a pH of between 2 to 4. Resnick ¶ 57. The formulation using cetarimonium chloride is a Hair Fixative composition. Id. ¶ 81. Therefore, one skilled in the art would understand that the cetarimonium chloride can be used in an acidic composition such as example 12-AP of Syed. Appellant contends that Galleguillos does not teach that cetyl trimethyl ammonium chloride and behenyl trimethyl ammonium methosulfate/cetearyl alcohol are functional equivalents. Appeal Br. 8. Appeal 2021-002727 Application 14/441,352 8 Appellant contends Galleguillos merely includes both compounds in an extensive list of water insoluble conditioning agents with no additional information about the properties of the compounds. Id. Again, we are not persuaded by Appellant’s arguments. Galleguillos teaches that cetyl trimethyl ammonium chloride and behenyl trimethyl ammonium methosulfate/cetearyl alcohol are water insoluble conditioners that can be used in hair products. Galleguillos col. 15, l. 33-col. 16, l. 9. Syed teaches the use of behenyl trimethyl ammonium methosulfate/cetearyl alcohol in a formaldehyde free acidic hair straightening composition. Syed, 35, Example 12-AP. Resnick teaches the use of cetyl ammonium chloride as a conditioner as well as its use in a formaldehyde free hair fixative formulation. Resnick ¶¶ 68, 81. We find that the combined teachings of the references would have taught one skilled in the art that cetyl trimethyl ammonium chloride and behenyl trimethyl ammonium methosulfate/cetearyl alcohol are functional equivalents and that it would have been obvious to one skilled in the art to substitute one compound for the other. It is obvious to those skilled in the art to substitute one known equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no . . . error in [the] conclusion that it would have been obvious to one skilled in the art to substitute one ARC [alkaline reactive compound] for another.”). Appellant contends that one skilled in the art would not have substituted cetyl trimethyl ammonium chloride for behenyl trimethyl ammonium methosulfate/cetearyl alcohol because the references use the compounds in significantly different amounts. Appeal Br. 8-9. Appellant contends that Resnick uses cetyl ammonium chloride in an amount 10 times Appeal 2021-002727 Application 14/441,352 9 more than the amount of behenyl trimethyl ammonium methosulfate/cetearyl alcohol used in Syed. Id. at 9. We remain unpersuaded by Appellant’s argument. We begin by noting that claim 19 does not recite a specific amount of cationic surfactant. Thus, Appellant is arguing a limitation not reflected in the claims. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In addition, as discussed above, the cited references demonstrate that cetyl trimethyl ammonium chloride and behenyl trimethyl ammonium methosulfate/cetearyl alcohol are functional equivalents. Appellant has offered no persuasive evidence to support its contention that one skilled in the art would have been deterred from using cetyl trimethyl ammonium chloride as a substitute for behenyl trimethyl ammonium methosulfate/cetearyl alcohol because of the alleged need to use more cetyl trimethyl ammonium chloride. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Finally, Appellant contends that the Examiner has not shown that one skilled in the art would have had a reasonable expectation of success. Appeal Br. 9. Appellant contends that the Examiner has only demonstrated that the teachings of the references could be combined. Id. We have considered Appellant’s argument and are not persuaded that the rejection is in error. As the Examiner points out, the references all relate to hair straightening/relaxer compositions. Ans. 10. Syed teaches a hair straightening composition that comprises behenyl trimethyl ammonium methosulfate/cetearyl alcohol. Syed, 34 Example 12-AP. Resnick teaches a hair relaxing composition comprising cetyl trimethyl ammonium chloride. Resnick ¶ 81. Galleguillos teaches that cetyl trimethyl ammonium chloride Appeal 2021-002727 Application 14/441,352 10 and behenyl trimethyl ammonium methosulfate/cetearyl alcohol are functional equivalents. Galleguillos col. 15, l. 33-col. 16, l. 9. Given the teachings of the references we agree with the Examiner that one skilled in the art would have had a reasonable expectation of success in substituting cetyl trimethyl ammonium chloride for behenyl trimethyl ammonium methosulfate/cetearyl alcohol. See Ans. 10. Conclusion Based on the foregoing we conclude that a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of claims 19-36 would have been obvious to one of ordinary skill in the art at the time the invention was made over Syed combined with Khalil, Galleguillos, and Resnick. CONCLUSION The Examiner’s rejection is affirmed. More specifically, the rejection of claims 19-36 under 35 U.S.C. § 103(a) as unpatentable over Syed in view of Khalil, Galleguillos, and Resnick is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 19-36 103(a) Syed, Khahil, Galleguillos, Resnick 19-36 Appeal 2021-002727 Application 14/441,352 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