Ex Parte Hoffmann et al

Patent Trial and Appeal Board

Oct 25, 2016

12182795 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/182,795 07/30/2008
27387 7590 10/25/2016
LONDA, BRUCE S,
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD A VE, 8TH FLOOR
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Martin Hoffmann
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.
101216-109 4423
EXAMINER
PALLAY,MICHAELB
ART UNIT PAPER NUMBER
1617
MAILDATE DELIVERY MODE
10/25/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN HOFFMANN and CLAUDIA ARBTER
Appeal2014-004146
Application 12/182, 795 1
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
aqueous composition for conditioning keratin fibers. The Examiner rejected
the claims on appeal as obvious under 35 U.S.C. § 103(a).
We affirm.
1 The real party in interest is Kao Germany GmbH. Reel/frame
030186/0381; see also App. Br. 2.
Appeal2014-004146
Application 12/182,795
STATEMENT OF THE CASE
Claims 1-3, 5-7, 9-11, 15, 18, and 20 are on appeal. 2 Claim 1, the
only independent claims on appeal, reads as follows:
1. An aqueous composition for conditioning keratin
fibres comprising at least one cationic polymer with
multiple cationic sites and with multiple ester groups in its
molecule, at least one cationic cellulose derivative and at
least one cationic silicone compound selected from the
group consisting of Quatemium-80 and quatemized graft
polymers of organopolysiloxane and polyethyloxazoline,
wherein the weight ratio of cationic polymer to cationic
cellulose derivative is 0.1: 1 to 2: 1.
As the result of a restriction requirement, Appellants elected the
following species without traverse: "cationic cellulose derivative
polyquatemium-67, cationic silicone compound quatemium-80, cationizable
silicone compound amodimethicone, fatty alcohol cetylstearyl alcohol, and
emulsifier behentriumonium chloride." Ans. 2.
We limit discussion and consideration to the elected species, and take
no position respecting the patentability of the broader generic claims,
including the remaining, non-elected species. See Ex parte Ohsaka, 2
USPQ2d 1461 (Bd. Pat. App. Int. 1987).
The claims stand rejected as follows:
Claims 1-3, 5-7, 9-11, 18, and 20 under 35 U.S.C. § 103(a) as
2 Appellants identify claims 8, 13, 14, and 19 as also on appeal. App. Br. 1.
These claims were withdrawn from consideration under 37 C.F.R. 1.142(b)
as being drawn to nonelected inventions and species. Final Act. 2.
Accordingly, we do not consider these claims to be part of this appeal.
2
Appeal2014-004146
Application 12/182,795
, , 1 1 ,1 1 • ,• ,..~ ,• 1. 1 ,1 T TTr'lr-T"iT""'ti.T"""1T"'l>.T T"""1"'1[T"T'llK unpatentao1e over me comomanon or 1naungamJ ana me LU~lKbYLbJVm
Brochure. 4
Claims 1-3, 5-7, 9-11, 15, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Brautigam, the LUSTREPLEXâ„¢
Brochure, and Lighten. 5
REJECTION OF CLAMS 1-3, 5-7, 9-11, 18, AND 20 OVER
BRAUTIGAM AND THE LUSTREPLEXâ„¢ BROCHURE
The Examiner found that Brautigam discloses conditioning
compositions comprising cationic conditioning agents. Final Act. 4.
Among the suitable cationic agents disclosed are quatemium 80 (the elected
cationic silicone compound) and polyquatemium 10. Id. The Examiner
further found that Brautigam teaches that cationic conditioning agents could
be used "alone or in combination with each other." Id. The Examiner
determined, however, that Brautigam "does not specifically disclose
polyquatemium-67 [the elected cationic cellulose derivative] and
polyquatemium-70 [a cationic polymer with multiple cationic sites and with
multiple ester groups]." Id. at 5.
The Examiner found that the LUSTREPLEXâ„¢ Brochure taught the
"addition of polyquatemium-7 0 and di propylene glycol to 'any shampoo
system to create lustrous, healthy-looking hair by controlling the onset of
frizz, retaining its natural shine and conditioning the hair."' Id. The
LUSTREPLEXâ„¢ Brochure also discloses that "LUSTREPLEX (i.e.,
3 Brautigam et al., US Patent Publication No. 2005/0152863 Al, published
July 14, 2005 ("Brautigam").
4 LUSTREPLEXâ„¢ Brochure, Croda Inc., dated Nov. 7, 2005
("LUSTREPLEXâ„¢ Brochure").
5 Lighten, US Patent No. 5,007,531, issued Apr. 16, 1991 ("Lighten").
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Appeal2014-004146
Application 12/182,795
polyquaternimn-70 and dipropylene glycol) (1 %), polyquaternimn-67
(0.5%), and polyquaternimn-10 (0.2%)[)] are all anionic compatible
quaternaries on the market for use as conditioners in shampoo formulations."
Id. at 5---6.
The Examiner concluded that it would have been obvious to "add the
polyquaternium-70 and polyquaternium-67 of 'LUSTREPLEX' to the
composition of Brautigam et al., or to add such polyquaternium-70 to the
composition of Brautigam et al. and substitute such polyquaternium-67 for
the polyquaternium-10 of the composition of Brautigam." Ans. 3. The
Examiner concluded that it would have been obvious to do so because it is
obvious to combine compositions that are taught to be useful for the same
purpose and because Brautigam "specifically teaches that cationic
conditioning agents are used in combination with each other." Final Act. 7.
Appellants contend that the person of ordinary skill would not be
motivated to combine a cationic polymer, cationic cellulose derivative and a
cationic silicone compound into a single composition because, "after reading
the cited prior art, a skilled artisan would be discouraged from combining all
three cationic compounds." App. Br. 6.
We agree with the Examiner that it would have been obvious to add
polyquaternium 67 and 70 to the composition of Brautigam because
Brautigam specifically teaches the addition of cationic polymers (including
polyquaternium 10) as conditioning agents, see Brautigam i-fi-1 66 and 67, and
because the LUSTREPLEXâ„¢ Brochure teaches that polyquaternium 10, 67
and 70 (as well as Guar HTC) are all "anionic compatible quaternaries on
4
Appeal2014-004146
Application 12/182,795
,1 1 '°'°' 1•,• • 1 ,.. 1 ,• {:. TTTr'lr-T"iT""'ti.T"""1T"'l>.TT"""1"'1[T'T'llK tne mar Ker as conamoners m snampoo rormmanons. ~ Lu~ l KbY Lb JV m
Brochure 5. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("It is
prima facie obvious to combine two compositions each of which is taught by
the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose."); see also KSR
Int'! Co. v. Teleflex Inc., 550 U.S. at 417 (2007) ("[W]hen a patent 'simply
arranges old elements with each performing the same function it had been
known to perform' and yields no more than one would expect from such an
arrangement, the combination is obvious.").
Appellants argue that the LUSTREPLEXâ„¢ Brochure teaches away
from the claimed combination because it teaches "the detrimental effects of
PQ-10 and PQ-67." Reply Br. 3. As evidence, Appellants assert that the
LUSTREPLEXâ„¢ Brochure's teaches that:
• Polyquatemium 67 "displays the same amount of dulling as a
control sample that did not contain any cationic polymer;"
• Polyquatemium 67 "showed no difference in humidity
resistance than the control, which suggests that PQ-67 is
completely worthless when it comes to humidity resistance."
• Polyquatemium 67 "did not help to maintain the shine of the
hair" and
'
• Polyquatemium 67 "exhibited noticeable build-up."
6 Appellants do not dispute that it would have been obvious to add
polyquatemium 70 to the composition of Brautigam. App. Br. 6 ("[T]he
prior art would lead the skilled artisan to combining only a cationic polymer
(Polyquatemium-70) with a cationic silicone.").
5
Appeal2014-004146
Application 12/182,795
~ 1 T""lt. ,.... Al 7 Kep1y tlr. j---4.'
We disagree with Appellants that the effects of polyquatemimn 67 are
"detrimental" at least with respect to dulling, shine, and humidity resistance.
With respect to dulling, the LUSTREPLEXâ„¢ Brochure teaches that
polyquatemium 67 "displays about the same amount of dulling as the control
shampoo." LUSTREPLEXâ„¢ Brochure 9. With respect to humidity
resistance, the LUSTREPLEXâ„¢ Brochure teaches polyquatemium 67
"showed no visual difference from the control." Id. at 7. And with respect
to shine retention, the LUSTREPLEXâ„¢ Brochure teaches that
polyquatemium 67 may not have "help[ ed] maintain the shine of the hair,"
but its 84% shine retention exceeded the control's 80% shine retention. Id.
at 8. Thus, for dulling, shine, and humidity resistance, polyquatemium 67
exhibited no detrimental effects as compared to the control.
The LUSTREPLEXâ„¢ Brochure does teach that polyquatemium 67
displays a "build-up tendency." It states:
The images on the right are the virgin hair tresses treated
with 3 cycles of conditioning active shampoo followed
Least Moat
Ehlild·up LUSTREPLEX>Guar HTl>Polyquatemlum-67> Polyquateri1.1rn-10 Bulld·UP
7 Appellants also cite to evidence regarding the "detrimental effects" of
polyquatemium 10. We need not address the LUSTREPLEXâ„¢ Brochure's
teachings regarding the effects of polyquatemium 10 here because the
Examiner did not propose to add polyquatemium 10 to the composition of
Brautigam. Rather, the Examiner asserted that it would have been obvious
to "add the polyquatemium-70 and polyquatemium-67 of LUSTERPLEX to
the composition of Brautigam et al., or to add such polyquatemium-70 to the
composition of Brautigham et al. and substitute such polyquatemium-67 for
the polyquatemium-lOofthe composition of Brautigam." Ans. 3. Either of
these alternatives would satisfy all of the limitations of claim 1 even if
polyquatemium 10 - which is disclosed in Brautigam - were omitted.
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Appeal2014-004146
Application 12/182,795
by 3 wash cycles with the control shampoo. The images
show LUSTREPLEX is almost completely washed from
the hair fiber indicating it will not build up .... The other
active shampoos display a build-up tendency.
Id. at 14. Notwithstanding this teaching, we find that the person of ordinary
skill in the art would not have been discouraged from using polyquaternium
67. That polyquaternium 67 may be somewhat inferior to polyquaternium
70 with respect to some properties does not render the use of
polyquaternium 67 nonobvious. See In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (finding the use of epoxy obvious even though the art taught
"deficiencies of epoxy-impregnated material," noting ''[a] known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use").
This is particularly tnie given that the LUSTREPLEXâ„¢ Brochure also
teaches that polyquaternium 67 provides benefits. See e.g., id. at 10
(teaching that poiyquaternium 67 reduces the combing force required to
detangle unbleached hair by 30%, an amount comparable to the 29% force
reduction provided by polyquaternium 70).
Appellants argue that the LUSTREPLEXâ„¢ Brochure does not teach a
single composition comprising both polyquaternium 67 and polyquaternium
70. App. Br. 6. Appellants assert "LUSTREPLEX substitutes
Polyquaternium-70 with Polyquaternium-67, suggesting to the skilled artisan
that the polymers cannot or should not be used in the same composition."
Id. at 7. We disagree.
The LUSTREPLEXâ„¢ Brochure provides comparative testing
information for four separate compositions comprising four different anionic
compatible quaternaries. That the four anionic compatible quaternaries were
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Appeal2014-004146
Application 12/182,795
tested separately does not mean that they cannot be combined and used
together. Brautigam expressly teaches that multiple cationic conditioning
agents can be combined. See Brautigam i-f 71 ("Cationic conditioning agents
are used alone or in combination with each other."); see also id. i-f 69 ("It is
also possible to use mixtures of various cationic polymers."). Moreover,
Appellants do not point to any specific teaching in the LUSTREPLEXâ„¢
Brochure that the four anionic compatible quaternaries cannot be used
together. The LUSTREPLEXâ„¢ Brochure's silence with respect to
combinations of quaternaries should not be taken as teaching away from
such combinations. See DyStar Textilfarben GmbH & Co. Deutsch/and KG
v. CH Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) ("[M]ere failure
to discuss immediate use of his leuco indigo solution for dyeing is not the
same thing as Brochet stating in his article that ... his leuco indigo solution
may only be concentrated in paste form. We will not read into a reference a
teaching away from a process where no such language exists.").
Accordingly, we affirm the Examiner's rejection of claim 1 as
unpatentable over the combination of Brautigam and the LUSTREPLEXâ„¢
Brochure. Because they were not argued separately, claims 2, 5-7, 9-11,
18, and 20 fall with claim 1.
REJECTION OF CLAMS 1, 2, 5-7, 9-11, 15, 18, AND 20 OVER
BRAUTIGAM, LUSTREPLEXâ„¢ BROCHURE, AND LIGHTEN
Appellants challenge the Examiner's rejection of claims 1, 2, 5-7, 9-
11, 15, 18, and 20 over Brautigam, the LUSTREPLEXâ„¢ BROCHURE and
Lighten using the same arguments discussed above. App. Br. 9. We affirm
the Examiner's rejection of claims 1, 2, 5-7, 9-11, 15, 18, and 20 for the
reasons discussed above.
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Appeal2014-004146
Application 12/182,795
REJECTIONS OF CLAHvI 3 OVER BRAUTIGAivI AND LUSTREPLEXTM
BROCHURE ALONE OR WITH LIGHTEN
The Appeal brief includes a separate section addressing the
Examiner's rejection of claim 3 over the combination of Brautigam and the
LUSTREPLEXâ„¢ Brochure. It also includes a separate section addressing
the Examiner's rejection of claim 3 over the combination of Brautigam, the
LUSTREPLEXâ„¢ Brochure, and Lighten. Both of these sections, however,
simply incorporate the arguments discussed above. App. Br. 9. We do not
find these arguments persuasive for the reasons already discussed.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
rejections of claims 1-3, 5-7, 9-11, 15, 18, and 20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED
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