Ex Parte Fujinuma et al

Patent Trial and Appeal Board

Oct 2, 2018

12532934 (P.T.A.B. Oct. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/532,934 09/24/2009 Hiroyuki Fujinuma
22428 7590 10/04/2018
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
106343-0102 1998
EXAMINER
KALACH, BRIANNE E
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
10/04/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYUKI FUJINUMA, KAZUHIRO OKADA,
TOMOHITO KOSHIKA, and MITSUHIKO YAMAMOTO
Appeal2016-007396
Application 12/532,934 1
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-14, and 16-19. We have jurisdiction under 35 U.S.C. § 6(b ). A hearing
was held on September 26, 2018.
We reverse.
1 The real party in interest is Kao Corporation. Appeal Br. 2.
Appeal2016-007396
Application 12/532,934
CLAIMED SUBJECT MATTER
The claims are directed to a hair dyeing or bleaching method. Claim
1, reproduced below, is the sole independent claim and is illustrative of the
claimed subject matter:
1. A method for hair dyeing or bleaching using a two-part hair
dye or bleach composition which is applied on hair comprising:
providing a solution comprising a first agent containing an
alkaline agent and a second agent containing hydrogen peroxide
in a container body of a squeeze container;
mixing the solution to obtain a mixed solution by moving
the container body in a cycle of moving the container body from
a roughly upright state to a state between an inverted state and a
sideways state, and then once again returning to a roughly
upright state such that the mixing does not produce a foam in the
container body of the squeeze container, and the mixing of the
solution is carried out by moving the container body in the cycle
1 to 15 times at a speed of 1 to 20 times per 10 seconds;
inserting a squeeze foamer at a top end of the container
body of the squeeze container, the squeeze foamer comprising an
air induct path, a gas-liquid mixing chamber, a foam
homogenizing means and a discharge outlet;
squeezing the squeeze container to mix air in the container
body with the mixed solution in the gas-liquid mixing chamber
of the squeeze foamer to cause the mixed solution to foam;
discharging a foam of the mixed solution from the
discharge outlet of the squeeze foamer via the foam
homogenizing means, wherein
at least one of the first or second agents contains a foaming
agent, and the mixed solution has a viscosity (25 °C) of from
1 mPa· s to 100 mPa· s, and
the mixed solution does not reach the air induct path of the
squeeze foamer.
2
Appeal2016-007396
Application 12/532,934
REFERENCES
The Examiner's evidence relied upon to reject the claims on appeal is:
Bucaria
Schmitt
Wayne
Fujinuma
Kao
us 3,823,231
us 5,888,484
US 2004/0079383 Al
US 2004/0213752 Al
JP 07-215352 A
REJECTIONS 2
July 9, 1974
Mar. 30, 1999
Apr. 29, 2004
Oct. 28, 2004
Aug. 15, 1995
Claims 1, 4--14, and 16-19 are rejected underpre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Fujinuma, Kao, Wayne, and Schmitt.
Claim 3 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Fujinuma, Kao, Wayne, Schmitt, and Bucaria.
OPINION
The Examiner finds that Fujinuma's method of dying hair teaches
most of the features of claim 1. Final Act. 4--5. However, the Examiner
determines that, though Fujinuma teaches mixing a solution, it does not
teach mixing the solution in the manner required by the claim. Id. at 5. The
Examiner turns to Wayne for disclosure of the claimed method of mixing the
solution. Id. at 6 (citing Wayne ,r 100). Wayne teaches "inverting the
dispenser 40 several times" in order to mix a multi-part solution hair dye.
Wayne ,r 100. The Examiner determines that this disclosure "encompass[ es
2 The rejection under 35 U.S.C. § 112, first paragraph (see Final Act. 3) was
withdrawn in the Examiner's Interview Summary dated April 10, 2015. The
Examiner's inclusion of this rejection in the Answer without discussion (see
Ans. 2) appears to have been a typographical error.
3
Appeal2016-007396
Application 12/532,934
a cycle of] 'moving the container body from a roughly upright state to a
state between an inverted state and a sideways state, and then once again
returning to a roughly upright state,[']" as required by claim 1. Final Act. 7.
The Examiner further determines that it would have been obvious to use this
mixing cycle in Fujinuma "in order to more effectively blend the contents of
the container." Id.
The method of claim 1 also requires that the mixing cycle be done a
particular number of times and at a particular rate: "the mixing of the
solution is carried out by moving the container body in the cycle 1 to 15
times at a speed of 1 to 20 times per 10 seconds." Concerning this
limitation, the Examiner finds that "Schmitt et al. teaches blending hair dye
components ( which implies at least once) by shaking for 10 seconds ( ...
where if one mixing step is done within the 10 seconds provided, then the
claimed rate is met)." Final Act. 7. The Examiner determines that "[i]t
would have been obvious ... to modify the blending method of modified
Fujinuma et al. to be the step of blending for 10 seconds, as taught by
Schmitt et al. in order to provide optimal blending for the components." Id.
Appellants correctly argue that Schmitt "does not describe or suggest
specific mixing speeds." Appeal Br. 8. 3 The Examiner's finding that
Schmitt implies shaking once within 10 seconds is not supported by
Schmitt's disclosure. Schmitt teaches shaking for 20 seconds in one
3 Appellants also offer the declaration of Dr. Takashi Itou concerning the
vigorous shaking in many conventional mixing methods. Dec. of Dr.
Takashi Itou dated December 16, 2013. The Examiner does not address this
declaratory evidence in the 2015-02-27 Final Action or the Answer. At the
same time, it is not clear that Dr. Itou' s December 16, 2013 declaration is
directed to the mixing of two-part hair bleach or dyes with a foaming agent,
such as that taught in Fujinuma.
4
Appeal2016-007396
Application 12/532,934
embodiment and for 10 to 15 seconds in another. Schmitt 4:37--41, 5:49--51
( cited at Final Act. 7). The Examiner does not identify where Schmitt
suggests a rate of shaking or that shaking for 10-20 seconds actually means
shaking only once, instead of shaking for the entire 10-20 seconds. Further,
the Examiner provides no reason why one of skill in the art would mix a hair
dye or bleach "1 to 15 times at a speed of 1 to 20 times per 10 seconds" as
claimed. Thus, the Examiner has not shown how all of the features of claim
1 are taught or suggested by the prior art. For this reason we do not sustain
the rejection of claim 1 or its dependent claims.
DECISION
The Examiner's rejections of claims 1, 3-14, and 16-19 are reversed.
REVERSED
5