Ex Parte Dickinson et al

Board of Patent Appeals and Interferences

Jun 18, 2012

11794020 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KELVIN BRIAN DICKINSON,
ANAND RAMCHANDRA MAHADESHWAR, and
RUBY LOO BICK TAN-WALKER
__________

Appeal 2011-012869
Application 11/794,020
Technology Center 1600
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a water-in-oil emulsion. The Patent Examiner rejected the
claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
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STATEMENT OF THE CASE
“This invention relates to water-in-oil microemulsions for hair
treatment.” (Spec. 1, ll. 5-6.) According to the Specification, “[c]onsumers
oil hair both pre wash and post wash” and “[i]t would be desirable to
incorporate hair benefit agents such as hair conditioning agents into . . . such
oils, in order to improve the shine, feel and manageability of the hair after
application of the product.” (Id. at 1-2.) “However a problem is that such
agents are generally not compatible with the oil and cannot be incorporated
into the oil in a stable manner.” (Id. at 2, ll. 4-6.) “The present inventors
have found that this problem can be solved if a particular type of nonionic
emulsifier is formulated with the oil. The invention provides an oil
microstructure which has enhanced sensory properties and enhanced
compatibility with hair benefit agents such as hair conditioning agents.” (Id.
at ll. 11-16.)
Claims 1-12 are on appeal. Claim 1 is representative and reads as
follows:
1. A water-in-oil microemulsion for hair treatment comprising:
(a) an oil phase comprising:
(i) a first oily component which is one or more glyceride fatty
esters, and
(ii) a second oily component which is one or more hydrocarbon oils
of average carbon chain length less than 20 carbon atoms, and
(b) a hydrophilic phase comprising:
(i) water, wherein level of water in microemulsion does not exceed
10% by wt.,
(ii) a nonionic emulsifier which is an ethoxylated alcohol having an
HLB of at least 6, and
(iii) a hair conditioning agent.

(App. Br. 14, indents added.)
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The Examiner rejected the claims as follows:
 claims 1-8, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over
Barnikol,1 Dickinson,2 and Walton;3 and
 claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Barnikol, Dickinson, Walton, and Lusenti.4

OBVIOUSNESS
The Issues
The Examiner’s position is that Barnikol taught a water-in-oil
microemulsion for hair treatment comprising some but not all components
that Appellants’ microemulsion comprises. (Ans. 5-6.) The Examiner
concluded that it would have been obvious to use Dickinson’s two-oil
composition in place of Barnikol’s single oil to provide enhanced
penetration of conditioning oils, with a less greasy feel, because Dickinson
taught that its oil blend provided superior sensory properties and enhanced
penetration. (Id. at 6.) The Examiner concluded that it would have been
obvious to also add a hair rinse conditioner, “a quaternary ammonium
compound (surfactant) such as cetyltrimethyl ammonium chloride to the
composition of Barnikol/Dickinson in order to add enhanced hair condition
benefits, such as better manageability and improved wet-combability,”

1 Wolfgang Barnikol et al., WO 2003/105797, Dec. 24, 2003. The WO ‘797
publication is in German. The Examiner and Appellants cite to Barnikol’s
US national stage application publication US 2005/0232953 A1 as an
equivalent English translation.
2 Kelvin Brian Dickinson et al., US 2002/0039564 A1, April 4, 2002.
3 Ian B. Walton, US 4,753,793, June 28, 1988.
4 Luciana Lusenti, EP 0 247 552 A2, Dec. 2, 1987.
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because Walton taught that such hair rinse conditioners make hair more
manageable, improve the wet-combability of hair, and leave hair in an
improved condition. (Id. at 7-8.)
Appellants contend first that it would not have been prima facie
obvious to combine Barnikol and Dickinson, and second that there is no
obvious reason to apply Walton’s hair benefit agent to the specific
combination of Barnikol/Dickinson. (App. Br. 12.)
The issues are:
whether the rejection established that it would have been prima facie
obvious to combine the Barnikol and Dickson teachings; and if so,
whether the rejection established that there would have been an
obvious reason to apply Walton’s hair benefit agent to the composition
suggested by Barnikol and Dickinson.

Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the prior art. (Ans. 4-11.)

Principles of Law
In determining whether the 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. One
of the ways in which a patent's subject matter can be proved obvious
is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
patent's claims.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
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That the [prior art] patent 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. See In re Corkill, 771 F.2d
1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985) (obviousness
rejection of claims affirmed in light of prior art teaching that
“hydrated zeolites will work” in detergent formulations, even though
“the inventors selected the zeolites of the claims from among
‘thousands' of compounds”); In re Susi, 440 F.2d 442, 445, 169 USPQ
423, 425, 58 CCPA 1074 (1971) (obviousness rejection affirmed
where the disclosure of the prior art was “huge, but it undeniably
include[d] at least some of the compounds recited in appellant's
generic claims and it is of a class of chemicals to be used for the same
purpose as appellant's additives”).

Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989).

Analysis
First, we conclude that the evidence supports the Examiner’s
determination that using Dickinson’s two oils would have been an obvious
improvement to Barnikol’s microemulsion. The rejection established that
Dickinson suggested plain advantages: the expectation of superior sensory
properties and enhanced penetration.
Appellants have argued that combining the Barnikol and Dickinson
teachings could not have been obvious because Barnikol did not recognize
the problem of incompatibility between hair benefit agents and high levels of
oil. (App. Br. 9.) The Examiner responded that “prior art need not be
combined for the specific purpose or motivation as desired by the appellant,
furthermore the appellant is arguing limitations (i.e. stability) which are not
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recited by the instant claims.” (Ans. 9.) We agree with the Examiner. See
KSR, 550 U.S. at 419-20. On this record, sensory feel and penetration were
known problems with oils like those used by Barnikol. A solution to those
problems was disclosed by Dickinson.
Appellants have also argued that “there is no more motivation to use
the specific blend of oils disclosed in Dickinson in the Barnikol reference
than to use them in anyone of thousands upon thousands of references
relating to oils used in hair compositions.” (App. Br. 10.) The fact that
thousands of compositions may have been obvious over these references
does not make the composition Appellants claim any less obvious. See, e.g,
Merck, 874 F.2d at 807.
We conclude that the rejection also established that there would have
been an obvious reason to apply Walton’s hair benefit agent to the
composition suggested by Barnikol and Dickinson. The Examiner found
that Walton taught that conditioners make hair more manageable, improve
the wet-combability of hair, and leave hair in an improved condition. (Ans.
7.) The evidence supports this finding.
Appellants have argued that “under KSR there is no obvious reason to
take hair benefit agent of Walton and apply to specific combination of
Barnikol/Dickinson.” (App. Br. 12.) We disagree. The proper question to
ask is whether a person of ordinary skill in the art, facing the wide range of
needs created by developments in the field of endeavor, would have seen a
benefit to combining the prior art teachings. KSR, 550 U.S. at 424; see also
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (the desirability of the
combination may arise from nature of the problem, teachings of references,
or the ordinary knowledge of those skilled in the art). The rejection
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provided objective evidence that Walton showed the benefit of using hair
conditioning agents of the kind Appellants’ composition comprises.
Appellants have also argued, concerning Walton’s conditioning
agents, that “absent the understanding of the problem and which solution
applicants have, one of ordinary skill would be disinclined to use such
benefit agents in highly oily compositions.” (App. Br. 12.) The Examiner
responded that “Walton does not discredit or criticize the use of said agent in
composition that have a low water content.” (Ans. 11.) We agree with the
Examiner’s response, and note that in addition, Appellants have not
identified any teaching by Barnikol or Dickinson, or other evidence, that
would support the argument that a person of ordinary skill in the art would
have been disinclined to use Walton’s conditioning agent in the composition
suggested by Barnikol/Dickinson. A warning against use of an element,
rather than omission of mention of the element, is required to find teaching
away. Para-Ordnance Manufacturing v. SGS Importers International Inc.,
73 F.3d 1085, 1090 (Fed Cir. 1995). “Attorney’s argument in a brief cannot
take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
As Appellants rely on the same contentions to address the rejection of
claims 9 and 10 (id. at 13), we do not discuss that rejection separately.
Claims 2-12 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 1-8, 11, and 12 under 35 U.S.C.
§ 103 over Barnikol, Dickinson, and Walton.
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We affirm the rejection of claims 9 and 10 under 35 U.S.C. § 103 over
Barnikol, Dickinson, Walton, and Lusenti.
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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