Ex Parte Flohr

Patent Trial and Appeal Board

Apr 28, 2017

13353985 (P.T.A.B. Apr. 28, 2017)

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.
13/353,985 01/19/2012 Andreas FLOHR CM3606MQ 7458
27752 7590 05/02/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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 ANDREAS FLOHR
Appeal 2016-004897
Application 13/353,9851
Technology Center 1600
Before FRANCISCO C. PRATS, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method for
increasing the density and elasticity of hair using an applied formulation.
The Examiner entered final rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant identifies the Real Party in Interest as The Procter & Gamble
Company of Cincinnati, Ohio. App. Br. 1.
Appeal 2016-004897
Application 13/353,985
STATEMENT OF THE CASE
Background
The Specification discloses:
compositions and methods for chemically modifying the internal
region of the hair shaft, more preferably for forming polymer in
the internal region of the hair shaft. Without being bound by
theory, it is believed that polymer on the external surface of the
hair shaft would be more easily washed off whereas polymer
inside the hair shaft, for example, underneath the cuticle, would
be better protected and hence be substantially more durable.
Spec. 8:31-9:3.
The Claims
Claims 1—3, 6—17, and 21 are on appeal.* 2 Claim 1 is illustrative and
reads as follows:
1. A method for increasing the density of the hair by
chemically modifying the internal region of a hair shaft,
wherein the method comprises:
(i) applying an oxidising formulation to the hair; wherein
the oxidizing formulation comprises an oxidising agent and a
cosmetically acceptable carrier, wherein the oxidizing agent is
selected from the group consisting of: peroxides, persulfates,
and mixtures thereof;
(ii) de-wetting the hair; and
(iii) applying from about 1% to about 15% of a monomer
composition to the hair, wherein the monomer is selected from
the group consisting of an acrylic acid, acylic [sic] acid salts,
acrylic acid derivatives and mixtures thereof; and wherein the
monomer composition has a pH of from about 2.5 to about 6;
2 Claims 19 and 20 were withdrawn by Appellant following the Examiner’s
Final Action (mailed April 23, 2015). See Advisory Action mailed October
2, 2015.
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Application 13/353,985
and wherein the monomers penetrate into the internal region of
the hair shaft;
(iv) polymerizing the monomers within the internal
region of the hair shaft; and
(v) increasing the density of the hair shaft.
App. Br. 11 (Claims App’x.).
The only other independent claim, claim 21, contains the identical
limitations but claims “a method for increasing elasticity of the hair,” rather
than increasing the density as in claim 1. Id. at 14.
The Issues
The following rejections are before us to review:
Claims 1—3, 6—16, and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Carballada3 and Bugaut.4
Claim 17 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Carballada, Bugaut, and Togerson.5
3 US 2010/0028279 Al, published Feb. 4, 2010 (“Carballada”).
4 US 3,961,879, issued June 8, 1976 (“Bugaut”).
5 US 2009/0283106 Al, published Nov. 19, 2009 (“Torgerson”).
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Application 13/353,985
Appellant does not substantively argue claim 17 separately6; thus, we
address both rejections together and find it necessary to consider only
Carballada and Bugaut.7
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. See also FF1—8 (below). We conclude that the Examiner has
established a prima facie case that the claims would have been obvious over
Carballada and Bugaut. Appellant has not produced evidence showing, or
persuasively argued, that the Examiner’s conclusions are incorrect. Only
those arguments made by Appellant in the Brief have been considered in this
Decision. Arguments not presented in the Brief are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015). The findings of fact set forth below are provided
only to highlight certain evidence of record.
6 Appellant asserts that “[a]s stated above [with respect to claims 1—3, 6—16,
and 18] Appellant submits that the Office Action fails to point to any
disclosure in Carballada, Bugaut, and Torgerson that would motivate or
make obvious to one skilled in the art to arrive at the method of chemically
modifying the internal region of a hair shaft involving the oxidizing
composition and the steps as set out in amended Claims 1 and 21, to result in
an increase in the density of the hair shaft or an increase in elasticity of the
hair shaft.” Br. 9. Such an argument is not sufficient as a separate argument
for patentability of these claims. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (noting that separately arguing a claim requires “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”)
7 The Board may rely upon fewer than all the references cited by the
Examiner. See In re May, 574 F.2d 1082, 1090 (CCPA 1978).
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Application 13/353,985
FINDINGS OF FACT
FF1. Carballada teaches:
A method for preventing color loss from dyed hair
comprising the steps of dyeing hair and applying to hair a
composition comprising from about 0.1 % to about 20% of at
least one ethylenic monomer selected from the group consisting
of sulfopropylacrylate, methyl 2-acetamidoacrylate and
mixtures thereof, and a dermatologically acceptable carrier.
Carballada 1 6. “‘Sulfoalkyl(meth)acrylate compound,’ as used herein, is
understood to include derivatives, salts and/or isomers of
sulfoalkyl(meth)acrylate.” Id. 140. “‘Monomer,’ as used herein, means a
discrete, nonpolymerized chemical moiety capable of undergoing
polymerization in the presence of an initiator.” Id. 118.
FF2. Carballada teaches that in addition to the ethylenic monomer
and carrier, the composition can comprise
from about 0.1 % to about 20% of a crosslinker selected from
the group consisting of 1,4-bisacryloylpiperazine,
methylenebisacrylamide, ethylenebisacrylamide,
divinylbenzene, poly-ethyleneglycol di(meth)acrylate, ethylene
glycol di(meth)acrylate, 1,3-butanediol di(meth)acrylate, 1,4-
butanediol di(meth)acrylate, neopentyl glycol di(meth)acrylate,
Bis[2-(methacryloyloxy) ethyl] phosphate, N,N'-
bis(acryloyl)cystamine, N,N-Diallylacryalmide, triallyl
cyanurate, 3-(Acryloyloxy)-2-hydroxypropyl methacrylate and
mixtures thereof.
Id. 19.
FF3. Carballada teaches that polymerization of the composition
occurs inside the hair fibers:
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color lock compositions form a polymer inside the hair fiber
which slows the loss of the color molecule(s) resulting from: i)
filling up the channels in the hair cuticle, thus blocking the path
for diffusion of the color molecules to the hair surface, and ii)
by stably affixing to the color molecule(s) thus slowing the rate
of diffusion or the color molecules to the fiber surface.
Id. 137.
FF4. Carballada teaches
[t]he color lock composition may have a pH of about 7.0 and
below, alternatively of from about 3.0 to about 7.0, and
alternatively of from about 5.0 to about 6.0. In all
embodiments, “about,” when used in reference to pH, is
understood to mean+0.5 pH unit.
Id. 139.
FF5. Carballada teaches that the composition can be applied to “wet
hair or dry hair” and that the steps of adding the composition can comprise
“applying to hair a color lock composition and an initiator” or that “the color
lock composition comprising the monomer, and the second composition
comprising the initiator are mixed prior to application to the hair, and
applied to the hair as a single composition.” Id. Tflf 55, 56.
FF6. Bugaut discloses:
A dye composition for keratinic fibers comprising in
combination
a. at least one oxidation base comprising a
paraphenylenediamine, present in the form of a free base,
or in the form of an acid addition salt thereof and
b. at least one coupler of the formula:
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OH
wherein Y represents a member selected from the group
consisting of -NHCOCH3 and -NHCONH2; and X represents a
member selected from the group consisting of fluorine,
chlorine, and bromine, or the acid addition salt of the
compound of formula (I).
Bugaut Abstract. The composition can also include water. Id. at 4:26—68.
FF7. Bugaut teaches that in compositions
wherein compound (I) is used as a coupler with a great number
of paraphenylenediamines used as the oxidation base
advantageously provide green or blue-green colorations, which
are stable to light. The attainment of these colorations, stable to
light, in oxidation dyes for keratinic fibers and living human
hair provides a long sought after advantage which avoids the
redness of hair after dyeing and which eliminates the red of
chestnut red hair.
Id. at 1:40—58.
FF8. Bugaut discloses that “[t]he oxidizing agent employed most
often is H2O2 although other oxidizing agents such as urea peroxide and
persalts, for example, alkaline persulfates and perborates can also be used.
Id. at 3:22-26.
DISCUSSION
We select claim 1 as representative of the claims subject to both
grounds of rejection under 35 U.S.C. § 103. 37 C.F.R. § 41.37(c)(iv).
Appellant’s arguments do not persuade us that a preponderance of the
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evidence fails to support the Examiner’s prima facie case as to claim 1. We
address Appellant’s arguments below.
Appellant argues that the compositions of Carballada are
particularly useful in preventing color loss from hair which has
been previously treated with either an oxidative ... or
preformed . . . hair dye. . . . [while] the presently claimed
method is directed to application of an oxidizing formulation to
hair prior to the application of a monomer composition for
chemically modifying the internal region of the hair in order to
style it (e.g. to increase the density or elasticity of the hair
shaft). . . . Appellant submits that application of an oxidative
dye does not implicitly equate to application of the oxidizing
composition of the presently claimed invention.
Br. 4. Rather, Appellant argues, “one skilled in the relevant art would
appreciate that the primary role of the oxidizing agent (hydrogen peroxide)
in the hair dye is to oxidize the dye precursor, rather than treating hair for
styling purposes” and that the Examiner has not cited “any teaching or
suggestion that would lead to the understanding that the ‘oxidative hair dye’
disclosed can be the oxidizing composition.” Id. at 5. According to
Appellant, the skilled artisan “would appreciate that the primary role of the
oxidizing agent (hydrogen peroxide) in the hair dye is to oxidize the dye
precursor, rather than treating hair for styling purposes.” Id.
In response, the Examiner responds that “[t]he claims do not require
the oxidizing agent to react with the hair or exclude the presence of dyes or
dye precursors from the oxidizing formulation”, and that the use intended by
Appellant is inconsequential because Appellant has not demonstrated a
“structural difference between the claimed invention and the prior art
[sufficient to] patentably distinguish the claimed invention from the prior art.
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If the prior art structure is capable of performing the intended use, then it
meets the claim.” Ans. 3.
The Examiner has the better position. “In the patent claim context,
the term ‘comprising’ is well understood to mean ‘including but not limited
to’.” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir.
2007). The method step at issue, “applying an oxidizing formulation to the
hair, wherein the oxidizing formulation comprises an oxidizing agent and a
cosmetically acceptable carrier, wherein the oxidizing agent is selected from
the group consisting of: peroxides, persulfates, and mixtures thereof,”
requires application of an oxidizing agent that is either a peroxide, persulfate
or mixture of the two, with a cosmetically acceptable carrier. Claim 1.
Because Appellant’s claim recites that the composition “comprises” the
recited components, others are not excluded, including hair dye. Id.
Accordingly, Bugaut’s composition containing hair dye can be considered
for its ability to function as an oxidizing agent as recited in claim 1.
Furthermore, the claimed method does not recite that the composition
“treat[s] hair for styling purposes.” Br. 5. Rather, the method requires that
an oxidizing formulation that comprises an oxidizing agent that is a
peroxide, persulfate or a mixture thereof, with a cosmetically acceptable
carrier be applied to the hair, that the hair is de-wetted; that 1—15% of a
monomer composition with pH of 2.5—6 be applied to the hair; and that the
monomers penetrate the internal region of the hair shaft, where they
polymerize. Claim 1.
Carballada teaches a method for applying an oxidizing composition to
hair in which the oxidizing agent, an ethylenic monomer of about 0.1 % to
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about 20% of the composition, is sulfoalkyl(meth)acrylate or its derivative,
and that the composition further includes a dermatologically acceptable
carrier. FF1. Carballada teaches that the composition has a pH of between
3.0 and 7.0, and can be applied to dry hair (e.g., “de-wetted” hair). FF4,
FF5. Carballada teaches that ethylenic monomers are polymerized by an
initiator to “form a polymer inside the hair fiber.” FF2, FF3. Recognizing
that Carballada does not disclose the step of applying an oxidizing
formulation to the hair, the Examiner looked to analogous references and
cited Bugaut, which discloses stable dye compositions for hair that include
an oxidation agent such as hydrogen peroxide and a cosmetically acceptable
carrier (water). FF6—8. Thus, the Examiner determined that, in view of
Carballada and Bugaut, the skilled artisan would have found it obvious at the
time of the invention to “select the oxidizing formulation of Bugaut et al. for
use in the method of modifying hair taught by Carballada ... for retaining
color in dyed hair” and that the skilled artisan “would have been motivated
to select an appropriate dye” for use in the method. Ans. 4—5.
We agree with the Examiner that the skilled artisan, having read
Carballada and Bugaut, would have found it obvious at the time of the
invention to employ the oxidizing formulation of Bugaut with the method of
Carballada, and to select a dye of choice for use in the process. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the question is whether
a patent claiming the combination of elements of prior art is obvious,” the
answer depends on “whether the improvement is more than the predictable
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Application 13/353,985
use of prior art elements according to their established functions.” KSR, 550
U.S. at 417. The Examiner’s proposed combination combines elements of
the prior art (monomer, peroxide, water, and dye) and combines them in a
manner in which they are predicted to act as claimed in claim 1. For this
reason, we are unpersuaded by Appellant’s argument that the Examiner
“fails to describe how one of skill in the art would look two references
disclosing hair dye and/or retention of hair dye and make modifications to
the disclosures to arrive at a method which modifies the internal hair shaft to
increase density and/or elasticity of the hair shaft” or that the Examiner’s
suggestion that the skilled artisan would have been motivated to select an
appropriate dye “is not sufficient” Br. 5—6. Appellant provides no
persuasive reasoning or evidence why the combination would not be
expected to function as proposed, or evidence of secondary considerations
that would argue against a conclusion of obviousness. To the extent that
Appellant argues the alleged increased density and/or elasticity of the
claimed combination is an improvement over the prior art, we note “[m]ere
recognition of latent properties in the prior art does not render nonobvious
an otherwise known invention.” In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991). For this same reason, we are not persuaded by
Appellant’s argument that the Examiner “fails to identify where in the cited
references the element of ‘increasing the hair shaft density, or increasing the
hair shaft elasticity’ is disclosed.” Br. 7.
We agree with the Examiner that Bugaut’s teaching that the
composition has improved stability to light as a means to prevent fading of
hair dye would have motivated the skilled artisan to employ Bugaut’s
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composition in the manner taught by Carballada. Ans. 4—5. That the
motivation differs from Appellant’s is of no consequence as it is well
established that prior art references need not disclose an express motivation
to combine the teachings that is identical to that stated by a patent applicant
in order to motivate the combination. See In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996) (“[T]he motivation in the prior art to combine the references
does not have to be identical to that of the applicant to establish
obviousness.”).
Moreover, Appellant has not explained why the skilled artisan could
not have selected from the wide range of hair dyes available at the time of
the invention for successful use in the proposed combination, particularly as
Bugaut teaches the advantages of the composition in “elimina[ting] the red
of chesnut red hair.” Bugaut at 1:40-48.
Appellant has presented no persuasive evidence, only attorney
argument that combining the reference would not have reasonably been
expected to be successful. Appellant’s arguments without more are
insufficient to rebut the Examiner’s prima facie case. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (“[Attorney argument [is] not the kind of
factual evidence that is required to rebut a prima facie case of obviousness”).
For the above reasons, we find the preponderance of evidence of
record does not support Appellant’s contentions that the Examiner’s
determination that claim 1 would have been obvious over Carballada and
Bugaut is incorrect. Therefore, we affirm the rejection. Claims 2, 3, 6—16,
and 21 have not been argued separately and therefore fall with claim 1. 37
C.F.R. § 41.37(c)(l)(iv). We affirm the rejection of claim 17 under 35
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U.S.C. § 103 for the same reasons stated with respect to the rejection of
claims 1—3, 6—16, and 21.
SUMMARY
We affirm the rejection of claims 1—3, 6—16, and 21 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Carballada and Bugaut.
We affirm the rejection of claim 17 under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Carballada, Bugaut, and Togerson.
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
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