The Procter & Gamble CompanyDownload PDFPatent Trials and Appeals BoardMay 27, 20202019005461 (P.T.A.B. May. 27, 2020) 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. 14/174,433 02/06/2014 Kristine Suzanne So YU AA907 4492 27752 7590 05/27/2020 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER BERRIOS, JENNIFER A ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 05/27/2020 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): centraldocket.im@pg.com mayer.jk@pg.com pair_pg@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KRISTINE SUZANNE SO YU, MANNIE LEE CLAPP, CHETAN KANTILAL YAGNIK, and MANIVANNAN KANDASAMY ____________ Appeal 2019-005461 Application 14/174,433 Technology Center 1600 ____________ Before DONALD E. ADAMS, FRANCISCO C. PRATS, and ULRIKE W. JENKS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s decision to reject claims 1, 2, and 9–12. 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 “The Procter & Gamble Company of Cincinnati, Ohio” (Appellant’s February 20, 2020 Appeal Brief (Br.) 1). Appeal 2019-005461 Application 14/174,433 2 STATEMENT OF THE CASE Appellant’s disclosure “relates to a method of providing cleanness to hair and/or scalp, for example, providing hair volume and/or providing less oiliness on hair and/or scalp, by applying a hair care composition comprising cationic surfactants, high melting point fatty compounds, metal pyrithione, and metal salts other than metal pyrithiones” (Spec. 1: 4–7). Appellant’s only independent claim, claim 1, is representative and reproduced below: 1. A method of providing cleanness to hair and/or scalp, comprising following steps: (i) after shampooing hair, applying to the hair and/or scalp an effective amount of a hair care composition; and (ii) then rinsing the hair; wherein the hair care composition comprises by weight: (a) from about 0.1% to about 10% of a cationic surfactant system; (b) from about 0.1% to about 20% of a high melting point fatty compound, wherein the high melting point fatty compound is a fatty compound having a melting point of 25° or higher; (c) from about 0.01% to about 5.0% of a metal pyrithione wherein the metal pyrithione is zinc pyrithione; (d) from about 0.05% to about 10% of a metal salt other than metal pyrithiones wherein the metal salt is basic zinc carbonate; and (e) an aqueous carrier wherein the composition further comprises from about 0.01% to about 0.5% of polyquaternium- 6; wherein the polyquaternium-6 has a molecular weight of from about 1,200 g/mol to about 150,000 g/mol; and wherein the weight ratio of polyquaternium-6 to the metal pyrithione is from about 1:5 to about 1:15. (Br. 13.) Appeal 2019-005461 Application 14/174,433 3 Grounds of rejection before this Panel for review:2 Claims 1, 2, and 9–12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sakai,3 Schwartz,4 and Gross.5 Claims 1, 2, and 9–12 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1–3, 6, 8, and 9 of copending Application No. 14/174,389 in view of Schwartz and Sakai. Claims 1, 2, and 9–12 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 6, and 9–15 of copending Application No. 14/174,401 in view of Schwartz and Sakai. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Sakai discloses that “[a]ntidandruff hair conditioning compositions are advantageous in that the composition is applied to the hair after the 2 Application 14/174,415 abandoned March 9, 2020. Thus, the provisional nonstatutory obviousness-type double patenting rejection over claims 1 and 4–9 of this Application in view of Schwartz is moot and will not be discussed further. 3 Sakai et al., US 6,979,439 B1, issued Dec. 27, 2005. 4 Schwartz et al., US 2004/0213751 A1, published Oct. 28, 2004. 5 Gross et al., WO 2010/130513 A2, published Nov. 18, 2010. Examiner relies on Gross et al., US 2012/0058071 A1, published Mar. 8, 2012, as the English language equivalent of WO 2010/130513 A2. Appeal 2019-005461 Application 14/174,433 4 shampoo stage, thus, effective deposition on the scalp can be expected” (Sakai 1:28–31; see Ans.6 4). FF 2. Sakai discloses: [A] hair conditioning composition (hereafter “Hair care composition B”) comprising by weight: (a) from about 0.1% to about 15% of a high melting point fatty compound having a melting point of 25° C. or higher; (b) from about 0.1% to about 10% of a cationic conditioning agent; (c) from about 0.1% to about 10% of a low melting point oil having a melting point of less than 25° C; (d) a safe and effective amount of an antidandruff agent; (e) a preservative system comprising, by weight of the entire composition, from about 0.1% to about 1.0% of benzyl alcohol, from about 0.1% to about 1.0% of phenoxy ethanol, from about 0.05% to about 1.0% of methyl paraben, and from about 0.01% to about 1.0% of propyl paraben; and (f) an aqueous carrier; wherein the hair conditioning composition is substantially free of the group selected from a chelating agent, methylchloroisothiazolinone, and methylisothiazolinone. (Sakai 2:16–36; see also id. Abstract; Ans. 4; Ans. 5 (citing Sakai 23–24: Examples 7–8).) FF 3. Sakai discloses cetyl alcohol, stearyl alcohol, and behenyl alcohol as preferred high melting point fatty compounds (Sakai 4:13–17; see Ans. 4). FF 4. Sakai discloses the use of 0.1% to about 5% zinc pyrithione as the antidandruff agent (Sakai 5:25–33; see Ans. 4). 6 Examiner’s May 8, 2019 Answer. Appeal 2019-005461 Application 14/174,433 5 FF 5. Sakai discloses that hair conditioning composition B of the present invention comprises a cationic conditioning agent. This cationic conditioning agent, together with the high melting point fatty compounds, provide a gel network suitable for providing various conditioning benefits such as slippery and slick feel on wet hair, and such as softness, moisturized feel, and fly-away control on dry hair. (Sakai 6:32–38; see id. at 18:16–17 (Sakai discloses that its composition may “take the form of a rinse-off hair care composition”); Ans. 4 and 7.) FF 6. Sakai’s “cationic conditioning agent is selected from the group consisting of cationic surfactants, cationic polymers, and mixtures thereof,” wherein preferred cationic surfactants include behenyl trimethylammonium chloride, cetyl trimethyl ammonium chloride, ditallow alkyl dimethyl ammonium chloride, dicetyl dimethylammonium chloride, etc. (Sakai 6:48– 50 and 7:24–35; see Ans. 4–5). FF 7. Examiner finds that Sakai does not disclose a composition comprising zinc carbonate (see Ans. 6). FF 8. Schwartz discloses “a composition comprising an effective amount of metal salts of pyrithione and an effective amount of a zinc containing layered material which provides an augmentation factor greater than 1. . . [and] methods for the treatment of dandruff and compositions, which provide improved antidandruff activity” (Schwartz ¶ 2; see id. ¶ 5 (Schwartz discloses that “[z]inc pyrithione is known as an anti-dandruff component in shampoos”); id. ¶ 13 (Schwartz discloses that “zinc pyrithione . . . [is] a well-known anti-microbial material”); id. ¶ 179 (Schwartz discloses that “[z]inc pyrithione . . . is an effective antifungal material”); Ans. 6). Appeal 2019-005461 Application 14/174,433 6 FF 9. Schwartz discloses that “[m]aterials which have little or no independent activity, yet increase the activity of an anti-microbial material, are ‘augmenting’ agents” (Schwartz ¶ 12). FF 10. Schwartz discloses: [T]he term augmentation is intended to mean enhancement of the antifungal activity of a [zinc pyrithione]-containing composition by the augmenting material to an extent sufficient to permit the use of a lower amount of [zinc pyrithione] without reducing the antifungal inhibition provided by the composition, as compared to the antifungal inhibition that is provided by an otherwise-identical [zinc pyrithione]-containing composition that is free of the augmenting material. (Schwartz ¶ 179.) FF 11. Schwartz discloses that zinc-containing layered materials, such as basic zinc carbonate, augment the anti-microbial, antifungal, activity of zinc pyrithione (Schwartz ¶¶ 13, 28, and 179; see Ans. 6). FF 12. Schwartz discloses a composition that includes “from about 0.001 % to about 10% of a zinc-containing layered material” and “from about 0.01% to about 5% of a pyrithione or polyvalent metal salt of a pyrithione” (Schwartz ¶¶ 25 and 39; id. at pgs. 20–21:Example 55; see Ans. 6). FF 13. Examiner finds that the combination of Sakai and Schwartz fails to suggest a composition comprising “polyquaternium-6” (Ans. 7). FF 14. Gross “relates to conditioning and/or cleaning hair-treatment agents based on a special combination of an acetylpyridinium salt with a cationic and/or zwitterionic surfactant, and use of the agent for increasing hair- conditioning properties” (Gross ¶ 2; see Ans. 7). FF 15. Gross discloses that compositions comprising 0.01–10 wt. %, and in particular 0.1 to 3 wt. %, of a cationic polymer, such as polyquaternium-6 (i.e., Merquat®100), increases the deposition of active cosmetic skin- and Appeal 2019-005461 Application 14/174,433 7 hair-care substances, such as anti-dandruff agents (i.e., zinc pyrithione), and provides skin and hair conditioning (see Gross ¶¶ 146, 153, and 166; see also Ans. 7–8; see Ans. 8 (Examiner finds that Appellant’s Specification discloses that “Merquat 100 has a[] Mw of 150,000 g/mol”)). ANALYSIS Based on the combination of Sakai and Schwartz, and Gross, Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious “to modify the teachings of Sakai with those of Schwartz and add 0.1-5% of basic zinc carbonate to the composition of Sakai,” because “Schwartz teaches that basic zinc carbonate augments the antifungal activity of [zinc pyrithione] containing compositions and the combination of [zinc pyrithione] and zinc carbonate can be effectively used to treat dandruff” (Ans. 6; see also id. at 6–7 (Examiner finds that “Schwartz teaches that the use of [zinc pyrithione] and zinc carbonate are well-known by those of skill in the art to be used to formulate antidandruff compositions for hair.”); see also FF 1–12). In addition, based on the combination of Sakai, Schwartz, and Gross, Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious “to modify the teachings of Sakai and Schwartz with those of Gross and add 0.1-3% of polyquaternium-6, such as Merquat 100, to the anti-dandruff composition of Sakai,” because “Gross teaches that said compound is well- known to be a hair and skin conditioning agent and also increases the deposition of active cosmetic hair care and skincare substances” (Ans. 8; see FF 1–15). In this regard, Examiner reasons that a person of ordinary skill in this art “would have [had] a reasonable expectation of success” formulating such a composition because the combination of Sakai and Schwartz suggest Appeal 2019-005461 Application 14/174,433 8 antidandruff compositions comprising “conditioning additives . . . and Gross teaches the polyquaternium-6 can be used in compositions which can further comprise antidandruff agents such as zinc pyrithione” (Ans. 8; see FF 1–15). The amount of each ingredient of the composition suggested by the combination of Sakai, Schwartz, and Gross is the same as, overlaps with, or falls within, the concentration range for each ingredient set forth in Appellant’s claim 1 (see FF 2, 4, 12, and 15; cf. Br. 13). See In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997) (Overlapping ranges support a prima facie case of obviousness); Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (“[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness.”). “[W]here[, as here,] the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Thus, the concentration range for each ingredient set forth in Appellant’s claim 1, is prima facie obvious over the combination of Sakai, Schwartz, and Gross (see FF 1–15; see e.g., Ans. 8 (Examiner reasons, for example, that because Gross discloses a composition comprising 0.1–3% polyquaternium-6, which overlaps with Appellant’s claimed range of about 0.01–0.5%, and Sakai exemplifies a composition comprising 2% zinc pyrithione, the combination of Sakai, Schwartz, and Gross makes obvious a weight ratio of 1:0.66–20 polyquaternium-6 to metal pyrithione, which overlaps Appellant’s claimed ratio)). For the foregoing reasons, we find no error in Examiner’s prima facie case of obviousness. Thus, we are not persuaded by Appellant’s contention that the combination of Sakai, Schwartz, and Gross fails to make obvious Appeal 2019-005461 Application 14/174,433 9 Appellant’s claimed invention (Br. 8; see also id. at 9 (Appellant contends that the combination of Sakai, Schwartz, and Gross fails to make obvious a composition comprising the claimed range of polyquaternium-6)). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner “fail[ed] to state any articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” and, therefore, “Examiner’s rejection is conclusory” (Br. 10; see also id. at 10–11 (Appellant contends that Examiner failed to “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way [Appellant’s] claimed . . . invention does”)). For the same reasons, we are not persuaded by Appellant’s contention that Examiner “selectively pick[ed]-and-[chose] various components from the encyclopedic disclosures found in . . . [Sakai, Schwartz, and Gross,] reassembl[ing] them unerringly to arrive at the present invention;” relied upon impermissible hindsight reconstruction (id. at 10). We recognize Appellant’s contentions regarding unexpected results (Br. 8–9 (citing Iwata Decl.7)). According to Appellant, “Example 55 of Schwartz . . . is chosen as a representative example of the cited prior art” (Br. 8). Stated differently, Appellant contends that Schwartz’s Example 55 is the closest prior art. “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Appellant, however, concedes that the comparative example, 7 Declaration of Toshiyuki Iwata, signed Nov. 29, 2017. Appeal 2019-005461 Application 14/174,433 10 CEx. i, set forth in the Iwata Declaration “is not Example 55 of Schwartz” and “is not an example according to Schwartz” (Br. 8). Thus, Appellant failed to establish unexpected results compared against the closed prior art on this record. In addition, in order to be persuasive of non-obviousness, “[e]vidence of secondary considerations must be reasonably commensurate with the scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). As Examiner explains, Appellant tested a single 1:10 polyquaternium-6 to metal pyrithione ratio (see Ans. 16; cf. Br. 8–9; Iwata Decl. ¶ 3:Table 1). Appellant’s independent claim 1, however, recites a polyquaternium-6 to metal pyrithione ratio of from about 1:5 to about 1:15 (see Br. 13). Thus, we agree with Examiner’s finding that Appellant’s evidence of unexpected results is not reasonably commensurate with the scope of Appellant’s independent claim (see Ans. 16). For the foregoing reasons, we are not persuaded by Appellant’s evidence of unexpected results. CONCLUSION The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Sakai, Schwartz, and Gross is affirmed. Claims 2 and 9–12 are not separately argued and fall with claim 1. Appeal 2019-005461 Application 14/174,433 11 Obviousness-type Double Patenting: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness-type double patenting? ANALYSIS Appellant’s claim 1, reproduced above, is representative. Appellant does not contest: (a) the provisional rejection of claim 1 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1–3, 6, 8, and 9 of copending Application No. 14/174,389 in view of Schwartz and Sakai or (b) the provisional rejection of claim 1 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 6, and 9–15 of copending Application No. 14/174,401 in view of Schwartz and Sakai. Appellant also did not file a terminal disclaimer to moot the obviousness- type double patenting rejections. “If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.” Manual of Patent Examining Procedure § 1205.02 (9th Ed., Rev. 08.2017 (Jan. 2018)). For the foregoing reasons, the provisional obviousness-type double patenting rejections are summarily affirmed. CONCLUSION The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness-type double patenting. The provisional rejection of claim 1 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over Appeal 2019-005461 Application 14/174,433 12 claims 1–3, 6, 8, and 9 of copending Application No. 14/174,389 in view of Schwartz and Sakai is affirmed. Claims 2 and 9–12 are not separately argued and fall with claim 1. The provisional rejection of claim 1 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 6, and 9–15 of copending Application No. 14/174,401 in view of Schwartz and Sakai is affirmed. Claims 2 and 9–12 are not separately argued and fall with claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 9–12 103(a) Sakai, Schwartz, Gross 1, 2, 9–12 1, 2, 9–12 Nonstatutory Double Patenting, copending 14/174,389, Schwartz, Sakai 1, 2, 9–12 1, 2, 9–12 Nonstatutory Double Patenting, copending 14/174,401, Schwartz, Sakai 1, 2, 9–12 Overall Outcome 1, 2, 9–12 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). AFFIRMED Copy with citationCopy as parenthetical citation