Ex Parte Brown et al

Board of Patent Appeals and Interferences

Jan 12, 2012

12131057 (B.P.A.I. Jan. 12, 2012)

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.
12/131,057 05/31/2008 Mark Anthony Brown 8958CR 5090
27752 7590 01/13/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
BOYER, CHARLES I
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
01/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MARK ANTHONY BROWN, THOMAS ALLEN
HUTCHINS, STEVEN HARDY PAGE, and SHASHI JAIN
________________

Appeal 2010-010032
Application 12/131,057
Technology Center 1700
________________

Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 4-10, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for shampooing chemically treated
hair. Claim 1 is illustrative:

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Application 12/131,057

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1. A method of treating damaged hair, wherein the damaged hair is
chemically treated hair, the method comprising the steps of:

a) contacting said chemically treated hair with a shampoo
composition, said shampoo composition comprising:

i. from about 12% to about 20% of an anionic surfactant
selected from ammonium lauryl sulfate, ammonium laureth sulfate,
sodium lauryl sulfate, sodium laureth sulfate and combinations
thereof;

ii. from about 0.025% to about 5% by weight of a synthetic,
non-crosslinked, cationic polymer selected from diallyldimethyl
ammonium chloride, Trimethylammoniopropylmethacrylamide
chloride-N-Acrylamide copolymer,
Trimethylammoniopropylmethacrylamide chloride-N-Behenyl
ethoxymethacrylate copolymer, the cationic polymer having a cationic
charge density of from about 4 meq/gm to about 7 meq/gm, wherein
said synthetic cationic polymer forms lyotropic liquid crystals upon
combination with said anionic surfactant; and

iii. water; and

b) rinsing said composition from said chemically treated hair.[sic ,]

wherein following said method, the surface energy of said chemically
treated hair is reduced, as compared to that measured prior to the method.

The References
Heinz 5,409,628 Apr. 25, 1995
Möhring 5,811,087 Sep. 22, 1998
Gubernick 6,036,965 Mar. 14, 2000
Midha US 2003/0091521 A1 May 15, 2003
Patel US 2003/0130145 A1 Jul. 10, 2003
Geary US 6,849,584 B2 Feb. 1, 2005

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The Rejections
Claims 1 and 4-10 stand rejected as follows: under 35 U.S.C. § 102(e)
over Patel or Midha, and under 35 U.S.C. § 103 over Geary, Heinz,
Gubernick or Möhring.
OPINION
We affirm the rejections.
The Appellants’ claims require treating chemically treated hair. The
Appellants state that “[t]he term ‘chemically treated hair’, as used herein,
shall include color-treated hair, bleached hair, highlighted hair, permed hair,
or hair that has been treated with any combination of such chemical
treatments, i.e., permed and colored hair” (Spec. 3:27-29). The Appellants
do not dispute that each of the applied references discloses a shampoo
composition within the scope of their claims (Br. 7-13). The Appellants’
sole argument is that the references do not disclose applying the shampoo to
chemically treated hair. See id.
Rejection under 35 U.S.C. § 102(e) over Patel
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Patel discloses a cleanser which can be a shampoo (¶ 0001). Patel
teaches that “[s]ome types of hair such as bleached or processed hair require
high level of conditioning” (¶ 0069) and that “[t]he compositions of this
invention may be formulated to accommodate all types of conditioning
requirements.” Id.
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Application 12/131,057

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The Appellants rely upon Perricone v. Medicis Pharm. Corp., 432
F.3d 1368 (Fed. Cir. 2005) wherein the majority stated, regarding a rejection
under 35 U.S.C. § 102(b), that the Pereira reference “teaches a cosmetic
composition for topical application and discloses various ingredients in that
composition, including skin benefit ingredients, emollients, emulsifiers, and
thickeners”, id. at 1376, “does not disclose topical application to skin
sunburn”, id. at 1379, and “is silent about any sunburn prevention or
treatment benefits, not to mention the mechanisms underlying such uses.”
Id. at 1379.
The Appellants argue (Br. 9):
The Perricone Court drew a distinction between the
application of a chemical to skin and the application of the
chemical to skin sunburn in a method claim found not to be
inherently discussed in cited reference.
Similarly, Applicants submit that Patel et al., while
discussing application of shampoo formulations to hair, does
not discuss application of the recited shampoo composition to
chemically treated hair.

Patel’s disclosure that the shampoo can be applied to bleached hair
(¶ 0069) is a disclosure that it can be applied to chemically treated hair as
that term is defined by the Appellants as set forth above.1

1 The Appellants’ reliance upon Perricone is not well taken because the
Appellants have not established that the relative effect of a cosmetic
composition on non-sunburned skin and sunburned skin is indicative of the
relative effect of a shampoo on non-chemically treated hair and chemically
treated air. The Appellants state that “[d]amage due to chemical treatment is
quite common” (Spec. 1:15-16) and that “over 70% of women in the
developed world have colored their hair at least once, and 30% of women
color their hair every 6 weeks” (Spec. 1:16-17). It appears that users of
generally-used shampoos include members of those large populations, and
the Appellants have provided no evidence to the contrary.
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Application 12/131,057

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Rejection under 35 U.S.C. § 102(e) over Midha
Midha discloses “a composition such as a shampoo, conditioner or
styling product that improves hair volume” (¶ 0002). Midha states (¶ 0005):
Other techniques used to increase the appearance of hair
volume including perming, hair straightening, back combing,
and pressing. These processes are all focused on trying to
change the nature of a person’s hair substrate. However, all of
these processes can damage the hair. Other attempts to increase
the diameter of the hair have resulted in insignificant gains or in
severe hair damage. Therefore, a need still exists for a means to
improve hair volume while maintaining good hair feel.

The Appellants state that “for the sake of avoiding duplication,
Applicants submit the same argument for Patel et al. against the rejection
over Midha et al.” (Br. 9).
The Appellants’ argument regarding the rejection over Patel is not
persuasive for the reason given above. Moreover, Midha indicates that the
shampoo can be applied to permed hair (¶ 0005). Permed hair falls within
the Appellants’ definition of “chemically treated hair” set forth above.
Rejections under 35 U.S.C. § 103
For each of the four rejections under 35 U.S.C. § 103 the Appellants
rely upon their argument set forth with respect to the rejection under
35 U.S.C. § 102(e) over Patel (Br. 10-13). That argument is not convincing
for the reason given above. Moreover, the four references applied in the
rejections under 35 U.S.C. § 103 do not limit their shampoos to non-
chemically treated hair (Heinz, col. 1, ll. 9-12; Möhring, col. 1, ll. 5-9;
Gubernick, col. 1, ll. 5-7; Geary, col. 1, ll. 15-17, col. 2, ll. 10-17). Thus, it
appears that it would have been prima facie obvious to one of ordinary skill
in the art to use the shampoos on both non-chemically treated and
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chemically treated hair, and the Appellants have provided no evidence to the
contrary.
DECISION/ORDER
The rejections of claims 1 and 4-10 under 35 U.S.C. § 102(e) over
Patel or Midha and under 35 U.S.C. § 103 over Geary, Heinz, Gubernick or
Möhring are affirmed.
It is ordered that the Examiner’s decision is affirmed.

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

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