Ex Parte Adams et al

Patent Trials and Appeals Board

Mar 19, 2019

14552578 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/552,578 11/25/2014
27752 7590 03/21/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Jacob Robert Adams
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
13171 9361
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/21/2019 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
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB ROBERT ADAMS, JAMIE ANGEL REED,
PHILIP ANDREW SA WIN, RANDY PURNELL WASHING TON,
and ALAN DAVID WILLEY 1
Appeal2018-002382
Application 14/552,578
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a method for shaping fibrous material. Claims 1, 3-5, 7-12, 14--20, and
22-24 are on appeal as rejected under 35 U.S.C. § 103. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as "The Procter & Gamble
Company." Appeal Br. 3.
Appeal2018-002382
Application 14/552,578
STATEMENT OF THE CASE
Independent claim 1 is representative and is reproduced below:
1. A method for shaping fibrous material comprising:
(a) providing a treatment composition, wherein the
treatment composition comprises:
(i) an active agent comprising a non-acid carbonyl
or an equivalent of non-acid carbonyl, wherein said active
agent has a molecular weight below about 1000 g/mol and
is selected from the group consisting of ketones, esters,
aldehydes, amides, acyl halides, acetals, hemiacetals,
ketals, hemiketals, and mixtures thereof; and
(ii) a photocatalyst;
(b) applying the treatment compos1t10n to a fibrous
material to form a treated fibrous material;
( c) mechanically shaping the treated fibrous material
using an implement; and
( d) exposing the treated fibrous material to electro-
magnetic radiation.
Appeal Br. 5. The Examiner identifies that Appellants have elected species,
as follows: "The elected species of A) keratin materials (i.e. fibrous
material); B) 2,3-butanedione (i.e. active material); C) 8-hydroxyquinoline
(i.e. photocatalyst); D) water (i.e. carrier); E) hair straightening appliance
(i.e. implement) and F) preservative (i.e. optional component) .... " Answer
7. We limit our decision on obviousness to consideration of the elected
species.
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Appeal2018-002382
Application 14/552,578
The following rejection is are appealed:
Claims 1, 2-5, 7-12, 14--20, and 22-24 stand rejected under 35 U.S.C.
§ 103 over Baker2 and Hoffkes. 3 Final Action 3.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Arguments made by Appellants in the Appeal Brief and properly presented
in the Reply Brief have been considered in this Decision; arguments not so-
presented in the Brief are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015);
see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.").
As applicable to the rejections on appeal and Appellants' arguments
there-over, "[ t ]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Put
another way, "when a patent claims a structure [or method] already known
in the prior art that is altered by the mere substitution [ or addition] of one
element for [ or to] another known in the field, the combination must do
more than yield a predictable result." Id. "In determining whether the
2 WO 2009/140076 Al (published Nov. 19, 2009) ("Baker").
3 EP 1 900 393 A2 (published Sept. 5, 2006) ("Hoffkes") ( citations are to
English translation).
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Appeal2018-002382
Application 14/552,578
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419. "[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination, not whether there is something in
the prior art as a whole to suggest that the combination is the most desirable
combination available." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
( citation omitted). That the prior art "discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
is especially true because the claimed composition is used for the identical
purpose taught by the prior art." Merck & Co. Inc. v. Biocraft Labs. Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989).
The Examiner determined that the claims would have been obvious
over the Baker-Hoffkes prior art combination. Final Action 3-8 and Answer
3-10 (citing Baker 11, 12, 22, 28-30, 36, 37, 42--44, 47, 49 (see Examples 1,
IA, 2, 2A, 38--40, 50, 50A, 55-58), claims 4, 9; and citing Hoffkes ,r,r 1, 5,
10, 16, 18). The Examiner's position on the relevant disclosures of these
references and how and why they would have presented an obvious
combination to the skilled artisan is expressed by the Examiner as follows:
BAKER teaches the recited method steps for shaping hair (i.e.
fibrous material) by teaching the method steps of providing and
applying a treatment composition to hair comprising
8-hydroxyquinoline photocatalyst, mechanically shaping the hair
on a rods, and exposure of the treated hair to light (i.e.
electromagnetic radiation; Example 55- pg. 49, 11. 1-10).
BAKER explicitly teaches the treatment compositions used in
her method may comprise hydrogen peroxide to render the
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Appeal2018-002382
Application 14/552,578
substrate ( e.g. hair or skin) more amendable to photocatalytic
covalent modification/functionalization and to color and bleach
hair (BAKER-pg. 2211.5-10; pg. 28, 11. 20-25; Examples 36 &
37-pg. 41 & 42; pg. 28, 11. 20-25). In the same field of endeavor,
HOFFKES teaches inclusion of 2,3-butanedione (i.e. active
agent) to activate hydrogen peroxide in compositions for dyeing
(i.e. coloring) and lightening (i.e. bleaching) human hair to
reduce dyeing and bleaching times and reduce exposure to the
compositions (HOFFKES-English Translation -i11, 5, 10 & 16).
HOFFKES explicitly teaches inclusion of the dione is
particularly advantageous in hair coloring and lightening
because it provides increased performance (English translation-
,r 1 O); thereby, the ordinary skilled artisan would have been
motivated to add 2,3-butanedione active agent to BAKER's hair
treatment composition in order to further activate the hydrogen
peroxide so that the treated hair would be more amendable to
photocatalytic covalent modification/functionalization and to
reduce the bleaching time as suggested by the combined
teachings of BAKER and HOFFKES.
Answer 9. We discern no error in the Examiner's determinations. We
address Appellants' arguments below.
Appellants argue that Baker requires removing the photocatalyst
composition (by rinsing) before shaping the fibrous material (e.g., hair),
while Appellants' invention mechanically shapes the fibrous material (hair)
while the photocatalyst composition is still present and photoactivated.
Appeal Br. 2-3. This argument is not persuasive. Even if some
embodiments disclosed by Baker have a rinsing step, Appellants' claims do
not require that rinsing is omitted. Furthermore, Baker discloses
embodiments where hair is soaked in the active agent and photocatalyst
composition, then exposed to a light source, then rinsed and allowed to dry,
and thereafter properties such as curl recovery or increased rigidity (e.g.,
after fixating around rods and drying to shape it, as determined by the
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Appeal2018-002382
Application 14/552,578
Examiner (Final Action 4)) are measured and found to be improved over
control samples using no such composition. See Baker 48-50 (Examples
relating to "Shape Retention" and "Increase[ d] Rigidity"); see also Baker 2
( disclosing that brushing, perming, relaxing, and styling, i.e., shaping, are
"common hair care practices"). Thus, Baker's disclosed compositions
functioned for styling or shaping hair as claimed and reasonably disclose or
suggest the claimed mechanically shaping step.
Appellants argue, on the one hand, that Baker fails to disclose the
photocatalyst and the claimed active agent and, then on the other hand, that
Hoffkes fails to teach compositions comprising the claimed photocatalyst
and active agent. Appeal Br. 3. This is not persuasive. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references ....
[The references] must be read, not in isolation, but for what [they] fairly
teaches in combination with the prior art as a whole." In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Baker was cited by the
Examiner for teaching and suggesting the claimed photocatalyst ( e.g., 8-
hydroxyquinoline and many others), used with an active material (e.g.,
hydroxyl- or carboxyl containing long-chain alkyl moieties, such as 6-
cyano-2-naphthol), to alter the mechanical properties of hair (e.g., curling or
rigidity, i.e., shaping), the use of implements ( e.g., curling rods and LED
brushes), and exposing the composition to light to activate it, as well as
advantageously including hydrogen peroxide. The Examiner further cited
Hoffkes for its teaching and suggesting the claimed, elected species, i.e.,
2,3-butanedione, as a component to complement Baker's use of hydrogen
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Appeal2018-002382
Application 14/552,578
peroxide. The fact that neither reference teaches and suggests the entirety of
the claim is not determinative because the rejection is for obviousness, not
anticipation, and a combination of two publications was cited by the
Examiner to meet all the limitations recited in the claim.
For the reasons above, we are not persuaded that the Examiner erred
in determining obvious and conclude a prima facie case therefor has been
made and not rebutted.
SUMMARY
The obviousness rejection under 35 U.S.C. § 103 is affirmed.
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)(l )(iv).
AFFIRMED
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