Ex Parte Nguyen et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10259741 (B.P.A.I. Sep. 15, 2010)

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.
10/259,741 09/30/2002 Nghi Van Nguyen 05725.0898-00 6036
22852 7590 09/16/2010
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BOYER, CHARLES I
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/16/2010 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 NGHI VAN NGUYEN,
HITENDRA MATHUR, and
DAVID W. CANNELL
__________

Appeal 2009-007333
Application 10/259,741
Technology Center 1700
___________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007333
Application 10/259,741

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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1-21 and 24-58, all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a composition for
conditioning at least one keratinous fiber comprising a silicone compound
and an amine compound wherein the silicone compound and the amine
compound are present in a combined amount effective to condition at least
one keratinous fiber. The Appellants disclose that a “keratinous fiber” may
be a human keratinous fiber chosen from, for example, hair, eyelashes, and
eyebrows. Spec., para. [0029]. The Appellants disclose that “conditioning”
means imparting combability, manageability, moisture-retentivity, luster,
shine, and softness to at least one keratinous fiber. Spec., para. [0021].
Claim 1, reproduced below, is illustrative:
1. A composition for conditioning at least one keratinous
fiber comprising:

(a) at least one silicone compound comprising at least
one phosphate group; and

(b) at least one amine compound comprising greater
than three amino groups,

wherein said greater than three amino groups are
identical or different; and

further wherein said at least one silicone compound and
said at least one amine compound are present in a combined
amount effective to condition the at least one keratinous fiber;

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provided that the at least one amine compound
comprising greater than three amino groups is not chosen from
proteins or protein derivatives.

Revised Appeal Brief dated June 9, 2008 (“App. Br.”), Claims Appendix.
The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 29, 30, 33, 36, and 39 are rejected under 35 U.S.C.
§ 112, first paragraph, based on the enablement requirement.
(2) Claims 1-18, 24-38, and 40-58 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Chaudhuri (US 6,165,450, issued December 26,
2000)
(3) Claims 1-21, 24-26, 28-30, 33, and 36 are rejected under
35 U.S.C. § 103(a) as unpatentable over Collin (US 6,482,400 B1, issued
November 19, 2002).
The Appellants argue the patentability of the claims in each ground of
rejection as a group. Therefore, for purposes of this appeal, the claims in
each ground of rejection stand or fall with the patentability of claim 1 for
purposes of this appeal. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
B. ISSUES
(1) Did the Examiner reversibly err in concluding that the
Specification does not enable “at least one amine compound comprising
greater than three amino groups” as recited in claim 1?
(2) Did the Examiner reversibly err in finding that the composition
described in Chaudhuri Example 6 anticipates the composition recited in
claim 1?
(3) Did the Examiner reversibly err in concluding that the
composition recited in claim 1 would have been obvious to one of ordinary
skill in the art in view of the teachings in Collin?
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C. ANALYSIS
1. Issue (1)
Claim 1 recites “[a] composition for conditioning at least one
keratinous fiber comprising . . . at least one amine compound comprising
greater than three amino groups . . . .” App. Br., Claims Appendix.
The Examiner contends that the Specification does not enable the
recited amine compound because “there are potentially an infinite number of
compounds containing greater than three amino groups, yet only a very few
compounds are found in the present specification.” Examiner’s Answer
dated September 5, 2008 (“Ans.”), at 3; see also Ans. 6-7.
Enablement, under 35 U.S.C. § 112, first paragraph, requires that a
specification teach those of ordinary skill in the art how to make and use the
claimed invention without “undue experimentation.” In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988). Factors to be considered in determining whether
a disclosure would require undue experimentation include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.

Id.
The Appellants argue that the Specification discloses representative
examples of the claimed amine compounds and provides a reasonable
amount of guidance for experimentation. In particular, the Appellants argue
that the Specification discloses “a simple wet combability test to determine
the synergistic effects of a composition comprising at least one silicone
compound and at least one amine compound.” App. Br. 15. Thus, the
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Appellants contend that one of ordinary skill in the art would be able to
determine, without undue experimentation, whether an amine compound
comprising greater than three amino groups is within the scope of the
claimed invention. App. Br. 15-16; Reply Brief dated November 5, 2008, at
4.
The Appellants’ arguments are not persuasive of reversible error.
First, claim 1 does not require a synergistic effect. Claim 1 merely recites
that the silicon compound and the amine compound “are present in a
combined amount effective to condition the at least one keratinous fiber.”
App. Br., Claims Appendix (emphasis added).
The Appellants define “conditioning” as “imparting to at least one
keratinous fiber at least one property chosen from combability,
manageability, moisture-retentivity, luster, shine, and softness.” Spec., para.
[0021]. The Appellants do not disclose how properties other than
combability are measured and do not identify acceptable values, including
lower limits, for each of these properties.
Based on the record before us, we agree with the Examiner that undue
experimentation would be required to ascertain which amine compounds
comprising greater than three amino groups are encompassed by claim 1.
Therefore, we will affirm the Examiner’s rejection under § 112, first
paragraph, based on enablement.
2. Issue (2)
The Examiner found that Chaudhuri Example 6 discloses a sprayable
sunscreen composition within the scope of claim 1. The composition
includes 2% chitosan and 2.5% dimethicone copolyol phosphate (Pecosil
PS-100). Ans. 4; Chaudhuri 7:14-49.
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The Appellants argue that this example does not anticipate claim 1
because “[t]he Examiner has failed to point to any evidence that Chaudhuri
teaches or suggests a conditioning composition as recited in claim 1.” App.
Br. 18.
The Examiner found that Chaudhuri Example 6 describes a
composition comprising the same amine and silicone compounds disclosed
by the Appellants in amounts said to condition at least one keratinous fiber.
See Spec., paras. [0072], [0076], [0068], [0069]. Nonetheless, the
Appellants argue that the amounts of the amine compound and the silicone
compound in the composition of Chaudhuri are not “in a combined amount
effective to condition” the hair as recited in claim 1. App. Br. 18. The
Appellants rely on a Declaration of Dr. Nghi Nguyen dated May 27, 2005,
for support. App. Br. 18-19.
According to the Nguyen Declaration, a composition comprising 2.0%
chitosan and 2.5% Dimethicone PEG-8 Phosphate2 (i.e., Compound 3)
“made the hair more difficult to comb by 1093.00%” and thus, did not
improve the wet combability properties of the hair. Nguyen Declaration 4,
para. 5.
The Examiner indicates that “a sunscreen will likely not do as well on
appellants’ ‘wet combability’ test as a hair conditioner for the scalp.” Ans.
8. However, the Examiner explains that the claims are not limited to scalp
hair conditioners. Thus, the Examiner maintains that the results of the
Appellants’ combability testing are not sufficient to overcome the rejection.
Ans. 8.

2 The silicone compound in Chaudhuri Example 6 is dimethicone copolyol
phosphate (Pecosil PS-100).
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The Examiner’s position is supported by the record. According to the
Specification, “keratinous fiber” is not limited to scalp hair and combability
is only one of several properties used to measure the state of “conditioning.”
Spec., paras. [0021], [0029]. Other properties include manageability,
moisture-retentivity, luster, shine, and softness. Spec., para. [0021].
On this record, the Appellants have failed to direct us to any evidence
establishing that the amine compound and the silicone compound described
in Chaudhuri Example 6 are not present in a combined amount effective to
impart any of these additional properties on at least one keratinous fiber.
Therefore, the Examiner’s § 102(b) rejection will be affirmed.
3. Issue (3)
Collin discloses a cosmetic composition for coating and cosmetically
treating keratin fibers comprising at least one cationic polymer, at least one
anionic polymer, and an aqueous polyurethane dispersion. Collin 1:4-15,
39-47. Collin discloses that the composition may also include
polyoxyalkylenated silicone, such as dimethicone copolyol. Collin 18:5-8,
47-48.
The Examiner directs our attention to Collin Example 1 which
describes a mascara composition comprising 0.1 g cationic polymer (i.e.,
hydroxyethylcellulose crosslinked with epichlorohydrin quaternized with
trimethylamine) and 0.2 g dimethicone copolyol. Ans. 5; Collin 24:1-25.
The Examiner found that Collin discloses that suitable cationic
polymers include polyethyleneimines and suitable polyoxyalkylenated
silicones include dimethicone copolyol derivatives, such as dimethicone
copolyol phosphate. Ans. 5; Collin 16:7-12, 19:21-29. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
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to use a polyethyleneimine in place of the cationic polymer in Example 1
and dimethicone copolyol phosphate in place of dimethicone copolyol in
Example 1. Ans. 5.
The Appellants do not direct us to any error in the Examiner’s
conclusion that the teachings of Collin would have suggested a composition
comprising the claimed amine and silicone compounds. Instead, the
Appellants argue that the Examiner has failed to point to any reason why one
of ordinary skill in the art would have modified Collin Example 1 so that the
silicone compound and the amine compound “are present in a combined
amount effective to condition the at least one keratinous fiber." App. Br. 24.
The Appellants’ argument is not persuasive of reversible error. The
Examiner relied on Collin Example 1 as showing representative amounts of
the disclosed amine and silicone compounds. These amounts are within the
ranges disclosed by the Appellants as sufficient to condition at least one
keratinous fiber. See Spec., para. [0069] (silicone compound is present in an
amount ranging from 0.01% to 50% by weight), para. [0076] (amine
compound is present in an amount ranging from 0.01% to 30% by weight).
Thus, the preponderance of the evidence establishes that Collin suggests a
composition comprising an amine compound and a silicone compound in a
combined amount effective to condition at least one keratinous fiber as
recited in claim 1. The Appellants have failed to direct us to any evidence to
the contrary.
For the reasons set forth above, the Examiner’s § 103(a) rejection will
be affirmed.
D. DECISION
The decision of the Examiner is affirmed.
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Application 10/259,741

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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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FINNEGAN, HENDERSON,
FARABROW, GARRETT & DUNNER, LLP
901 NEW YORK AVE., NW
WASHINGTON, DC 20001-4413