Sigfredo Gonzalez et al.

Patent Trials and Appeals Board

Sep 13, 2019

12771089 - (D) (P.T.A.B. Sep. 13, 2019)

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.
12/771,089 04/30/2010 Sigfredo Gonzalez 1302-711 (5072030) 1967
52774 7590 09/13/2019
MOMENTIVE PERFORMANCE MATERIALS INC.
c/o Dilworth & Barrese, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
09/13/2019 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 SIGFREDO GONZALEZ, ANNE DUSSAUD, and JOANNE
TULLY
__________

Appeal 2019-001645
Application 12/771,0891
Technology Center 1600
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of treating thermally and/or chemically damaged hair, which have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1, 6, 12, 16–18, and 23–25 are on appeal. Claim 1 is
representative and reads as follows:

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 Momentive
Performance Materials Inc. (Appeal Br. 1.)
Appeal 2019-001645
Application 12/771,089

2
1. A method of treating thermally and/or chemically damaged
hair comprising:
contacting hair which has been thermally and/or
chemically damaged as a result of at least one of bleaching,
dying, hair straightening, blow-drying and hair permanent
treatments, the thermally and/or chemically damaged hair
having a measured maximum width in the hair tip region (Lt) to
the measured maximum width at the root end (Lr) ratio
((Lt)/(Lr)) of greater than about 3.7, with a hair treating
composition comprising an aminosilicone of the general
formula (I):
MDxD’yM (I)
wherein:
M= R1R22SiO1/2
D= R22SiO2/2, and
D’= R2R32SiO2/2, and
where R1 is an alkyl group having 12 to 50 carbon atoms,
R2 is a substituted or un-substituted hydrocarbon group having
1 to about 6 carbon atoms, R3 is 3-aminopropyl group and/or a
N-(2-aminoethyl)-3-aminopropyl group, x has a value of 50 to
about 1,500, and y has a value of 3.5 to about 40, wherein the
hair treating composition is an aqueous composition which is an
oil-in-water emulsion;
not rinsing the hair treating composition from the
chemically and/or thermally damaged hair that has been treated
with the hair treating composition; and,
applying heat for physically smoothing and/or shaping
the treated hair;
the hair following such treatment having lower frizziness,
the lower frizziness is a measured maximum width in the hair
tip region (Lt) to the measured maximum width at the root end
(Lr) ratio ((Lt)/(Lr)) of less than about 3.6.
(Appeal Br. 19.)

Appeal 2019-001645
Application 12/771,089

3
The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 12, 16–18, 24, and 25 under 35 U.S.C. § 103 as
unpatentable over Suenaga.2
Claims 1, 6, 12, 16–18, 23, 24 and 25 under 35 U.S.C. § 103 as
unpatentable over Suenaga and Divine Caroline.3
DISCUSSION
The obviousness rejection over Suenaga alone
The Examiner finds that Suenaga teaches a method of applying a hair
styling product, such as a mousse or a gel, to provide “smoothness (feeling
of a slide)” to hair. (Ans. 3–4.) The Examiner finds that Suenaga teaches
that the treating composition is an emulsion with an aqueous phase (id. at 4)
and that the aminosilicone has the general formula claimed where R1 is an
alkyl group of 16–50 C atoms, R2 of the M, D, and D’ monomers is methyl,
and x is between 10–1,500, R3 is N-(2-aminoethyl)-3-aminopropyl, and y is
between 2–50 “with Y=12 in Working Example 3” (id.at 7–8). According to
the Examiner, one “would immediately envisage R1 being an alkyl group of
16 or 18 carbon atoms” and “X having a value of 1,500.” (Id. at 7.)
Regarding the type of hair that is treated, the Examiner notes that
Appellant’s Specification “explicitly teaches ‘[t]hermally and or chemically

2 Suenaga, JP 2008-143858 A, published June 26, 2008. The Examiner
relies upon an English translation of the JP document (see, e.g., Ans. 3), as
do we.
3 Mark Garrison, How to Get Super Straight Hair, available at
http://www.divinecaroline.com/beauty/hair/hair-care/how-get-super-straight-
hair, Jan. 2004. (“Divine Caroline”)
Appeal 2019-001645
Application 12/771,089

4
damaged hair can comprise hair that has been subjected to at least one of . . .
wetting by water . . . hair shaping, repeated blow drying” and that
“‘[t]hermally and/or chemically damaged hair . . . can have a (Lt)/(Lr) ratio
of greater than about 3.7’.” (Ans. 4.) The Examiner finds that in the
Suenaga embodiment where “2–10 grams of the aminosilicone hair styling
product” was applied to wet hair, not rinsed out, and the hair was dried with
a blow dryer, that the hair so treated was implicitly “chemically damaged”
and necessarily had the claimed Lt/Lr ratio of greater than 3.7 in light of
Appellant’s disclosure. (Id. at 4, 6.) The Examiner further notes that an
evidentiary reference “How much time”4 teaches that “it is routine in the art
for women to blow dry their hair as a poll of 2,000 women indicated” and,
thus, “the hair of the general population of women is chemically damaged by
being wetted with water and thermally damaged by blow drying and hair
shaping.” (Id. at 6–7.) The Examiner also finds that Suenaga “evaluates
hair smoothness after drying and is meant to solve the consumer need for
smoothness, indicating that the hair was frizzy prior to application of the
treatment composition and method.” (Id. at 8.) In light of the foregoing, the
Examiner states that Suenaga’s “treatment population is the same as that
claimed by Appellant.” (Id. at 12.)
Regarding the claim requirement that the hair treated has lower
frizziness with a (Lt)/(Lr) ratio of less than about 3.6, the Examiner reasons
that the hair treated with the 2–10 mg of product that was not washed out

4 Eleanor Harding, How much time, available
at http://www.dailymail.co.uk/femail/article-2250701/How-time-really-
spend-doing-hair-ladies-Answer-Ten-days-year.html, Dec. 2012. (“How
much time”)
Appeal 2019-001645
Application 12/771,089

5
and that was blow dried to physically smooth and shape the treated hair
necessarily meets that limitation because Suenaga “explicit[ly] teach[es] that
his hair cosmetic gives a ‘smooth tactile feeling to hair’, ‘smoothness after
drying’ and ‘feeling of settlement to hair’ which solves the problems of the
latest consumer need for smoothness to hair.” (Id. at 6.)
We disagree with the Examiner’s finding that Suenaga teaches a
method of treating the type of hair claimed to be treated. First, we agree
with Appellant, that its Specification does not teach that any hair that is
wetted by water is chemically damaged, much less to the level that is
required by the claims, i.e., an Lt/Lr ratio of greater than about 3.7. (Reply
Br. 3.) Rather, the Specification states that hair that has been wetted by
water “can” be chemically damaged, not that this is necessarily the case.
(Spec. ¶ 12.)
Second, claim 1 requires that the hair that is contacted “has been
thermally and/or chemically damaged as a result of at least one of bleaching,
dying, hair straightening, blow-drying and hair permanents.” This list does
not include damage as a result of being wetted by water.
As to the damaged hair required by the claim, we note that the
Specification, explains that hair that has been bleached, dyed, or straightened
with a flat iron “can” be thermally and/or chemically damaged, not that it is
necessarily damaged after undergoing such processes. (Spec. ¶ 12.)
Moreover, Appellant’s Specification does not teach that all hair that is
bleached, dyed, or heat treated (either by blow drying or flat iron treatment)
is necessarily chemically or thermally damaged by such treatment, whether
treated once or multiple times, to the extent that they have an Lt/Lr ratio of
greater than 3.7. Rather, the Specification teaches that thermally and/or
Appeal 2019-001645
Application 12/771,089

6
chemically damaged hair “can” have an Lt/Lr ratio of 3.7 or greater, not that
such is necessarily the case when hair is “thermally and/or chemically
damaged.” (Spec. ¶ 16.) Furthermore, we agree with Appellant that
evidence of record establishes that the foregoing would be understood by
one of ordinary skill in the art. Inventor Dussaud submitted two declarations
during prosecution: one submitted in June 2016 and a second declaration
submitted in September 2016. In the September Declaration, inventor
Dussaud explains that in the example of the application, commercially
obtained bleached hair was received, but that despite it being bleached
(which the Specification teaches “can” lead to chemical damage), the Lt/Lr
ratio of the hair was 2.75, which is less than the claimed amount of “greater
than about 3.7.” (Dussaud September Declaration ¶ 5.) It was after the hair
was treated in sodium hydroxide (a harsh alkali treatment), washed with
sodium laureth sulfate, and blow dried that the Lt/Lr ratio was greater than
3.7. Thus, the Declaration provides evidence that just because hair is
bleached does not mean it will have chemical damage such that the Lt/Lr
ratio is greater than 3.7. We find that this evidence also reasonably leads to
the conclusion that one of skill in the art would not understand Appellant’s
Specification to teach or suggest that just because hair is bleached or dyed or
heat treated, it will necessarily be chemically damaged to the extent that it
has an Lt/Lr ratio of greater than 3.7 as required by claim 1.
Furthermore, we also disagree with the Examiner that the fact that
Suenaga “evaluates hair smoothness after drying and is meant to solve the
consumer need for smoothness, indicating that the hair was frizzy prior to
application of the treatment composition and method” (Ans. 8) teaches that
the hair treated with the composition necessarily was thermally or
Appeal 2019-001645
Application 12/771,089

7
chemically damaged, much less that it was thermally or chemically damaged
to the extent that it had an Lt/Lr ratio of greater than 3.7 Nothing in Suenaga
teaches or suggests that the hair prior to treatment was damaged to the extent
claimed. At most, what can be surmised from Suenaga is that the hair tested
was not smooth. There is no connection made by the Examiner with any
evidence that all hair that is not smooth is thermally and/or chemically
damaged to the extent required by claim 1. The relied upon publication
“How much time” does not purport to describe a statistically valid survey of
how women treat their hair. In any event, while it does indicate that some
women spend time blow drying their hair and shaping it, “How much time”
does not establish that the hair so treated is thermally and/or chemically
damaged, much less to the extent required by claim 1. Moreover, it does not
establish that all hair has been styled by blow drying. Indeed, “How much
time” reports that for some people, the effort of blow drying and styling is
“just too much” and they “only brush their hair once, in the morning, and
don’t bother for the rest of the day.” (How much time 2.) Thus, the
Examiner failed to establish a nexus between the evidence and a conclusion
that the hair treated in Suenaga was thermally and/or chemically damaged to
the extent required by claim 1.
Even though it may be the case that damaged hair treated with the
composition taught by Suenaga might result in hair with Lt/Lr of less than
about 3.6, we disagree with the Examiner that there is any evidence in
Suenaga that teaches or suggests the method claimed, namely application of
such a composition to hair that is thermally or chemically damaged in the
way required by the claims. Furthermore, the Examiner has not argued for
or provided evidence of record to establish that one of ordinary skill in the
Appeal 2019-001645
Application 12/771,089

8
art would have found it obvious to have applied the composition of Suenaga
to the type of hair required by the claim. “[T]he examiner bears the initial
burden, on review of the prior art . . . , of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Thus, for the foregoing reasons, we do not sustain the Examiner’s
rejection of the claims as being obvious over Suenaga.

The obviousness rejection over Suenaga and Divine Caroline
The Examiner’s findings regarding the teachings of Suenaga are set
forth above. The Examiner relies on Divine Caroline for the obviousness of
certain dependent claims. (Final Action 10–12; Ans. 10–12.)
The Examiner also believes, however, that Divine Caroline supports
that hair treated with a flat iron can damage hair to the extent that it has an
Lt/Lr ratio greater than 3.7 “which is in line with Appellant’s specification
that hair straightening with an iron results in thermal damage and that this
thermal damage can have a Lt/Lr ratio of greater than 3.7 (Specification ¶ 12
& 16).” (Final Action 17.) While we agree with the Examiner that Divine
Caroline supports that using a flat iron to straighten hair can damage it, it
does not establish that such activity necessarily results in thermally damaged
hair or hair that is damaged to the extent required by claim 1. Thus, Divine
Caroline does not fill the evidentiary gap missing from the Examiner’s
obviousness rejection discussed above. Thus, we do not sustain the
Examiner’s rejection of the claims as being obvious over Suenaga and
Divine Caroline.
SUMMARY
In summary:
Appeal 2019-001645
Application 12/771,089

9
Claims
Rejected
Basis Affirmed Reversed
1, 12, 16–18, 24
and 25
§103 over Suenaga 1, 12, 16–18,
24 and 25
1, 6, 12, 16–18,
23, 24 and 25
§ 103 over Suenaga
and Divine Caroline
1, 6, 12, 16–
18, 23, 24 and
25
Overall Outcome 1, 6, 12, 16–
18, 23, 24 and
25

REVERSED