Ex Parte Nguyen et al

Patent Trial and Appeal Board

Mar 28, 2016

11583419 (P.T.A.B. Mar. 28, 2016)

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.
11/583,419 10/19/2006 Nghi Van Nguyen 14591-00047-US 3143
30678 7590 03/29/2016
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DC OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
03/29/2016 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 NGHI VAN NGUYEN,
SAWA HASHIMOTO, and DAVID W. CANNELL
____________

Appeal 2013-004483
Application 11/583,419
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1–4, 6, 7, 10,
15–18, 20–23, 25, 26, 29, 34–37, 39, and 40 (Br. 2).2 Examiner entered
rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The claims are directed to a composition comprising: (a) at least one
fatty quarternary amine compound; (b) at least one nonionic surfactant

1 Appellants identify the Real Party in Interest as “L’OREAL” (Br. 2).
2 Claims 9, 11, 28, and 30 stand withdrawn from consideration (Br. 2).
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having an HLB of at least 8; (c) an alkyl ether carboxylic acid; and (d) at
least one water-insoluble material selected from the group consisting of
silicones, natural oils, synthetic oils, and hydrocarbons; wherein the
composition is clear and a method of using the foregoing composition to
treat a keratinous substrate (see Appellants’ independent claims 1, 20, and
40). Independent claims 1, 20, and 40 are representative and reproduced in
the Claims Appendix of Appellants’ Brief.
Claims 1, 6–8, 15–20, 25–27, and 34–40 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Cannell3 and
Restle.4
Claims 10 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cannell, Restle, and Grimm.5
Claims 2–4 and 21–23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cannell, Restle, and Janchipraponvej.6
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Cannell
relates to compositions and delivery systems based on a
combination of organic phospholipids capable of forming
bilayers in aqueous solution; amphoteric surfactants; and
nonionic surfactants, wherein the combination of these
ingredients allows water-insoluble ingredients, particularly

3 Cannell et al., US 2001/0006654 A1, published July 5, 2001.
4 Restle et al., US 2002/0006389 A1, published Jan. 17, 2002.
5 Grimm et al., US 2002/0034480 A1, published Mar. 21, 2002.
6 Janchipraponvej, US 4,954,335, issued Sept. 4, 1990.
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waxes or water-insoluble polymers, resins, or latexes, to be
incorporated into aqueous solutions.
(Cannell ¶ 1; see id. at 8: claim 1; see Ans. 3.)
FF 2. Cannell discloses compositions containing “lecithin (L), an
amphoteric surfactant (A), and a nonionic surfactant (N), referred to as the
‘LAN’,” which “[w]hen used as an ingredient in further formulations, the
LAN is compatible and generally gives clear solutions with anionic
surfactants such as alkyl sulfates and ethoxylated alkyl sulfates. Other
anionic surfactants such as sulfosuccinates may also be used” (Cannell
¶¶ 32–33; see Ans. 3).
FF 3. “The aqueous phase of [Cannell’s] inventive delivery system can
contain additional ingredients such as anionic surfactants” and cationic
polymers such as stearalkonium chloride (Cannell ¶¶ 56 and 69; see id. at 8:
claim 2; see Ans. 3 and 6).
FF 4. Cannell’s “compositions and delivery systems can be used in hair
styling products such as . . . shampoos” (Cannell ¶ 18; see Ans. 3).
FF 5. Examiner finds that Cannell fails to disclose a composition
comprising “alkyl ether carboxylic acids” (Ans. 3).
FF 6. Restle relates to compositions “intended simultaneously for cleaning
and for conditioning keratinous substances, such as the hair,” i.e.,
“shampoos for washing and conditioning the hair” (Restle ¶¶ 1 and 91; see
Ans. 3).
FF 7. Restle’s composition “comprises one or more anionic surfactants and
one or more amphoteric surfactants” (Restle ¶ 15; see generally Ans. 3).
FF 8. Restle discloses the use of “weakly anionic surfactants, such as . . .
polyoxyalkylenated (C6-C24)alkyl ether carboxylic acids” (Restle ¶ 18).
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FF 9. Cannell discloses that “[b]ecause of their non-polar portions,
phospholipids typically are water-insoluble and incompatible with many
water soluble anionic compounds, such as anionic surfactants. While they
can be solubilized in water at low levels by a range of surfactants, this is
often not easily accomplished” (Cannell ¶ 3).
FF 10. Cannell discloses:
In addition to solubilizing lipophilic ingredients such as oils,
vitamins, and ceramides in aqueous systems, it would be
desirable to solubilize other water-insoluble ingredients, such as
waxes or unneutralized or partially neutralized polymers, resins,
or latexes, in aqueous delivery systems. U.S. Pat. No.
5,391,368 to Gerstein teaches solubilization of a hair-styling
polymer in a composition comprising an anionic surfactant and
an amphoteric surfactant. According to Gerstein, it is the
amphoteric surfactant which dissolves the water-insoluble
styling polymer because the polymer is not soluble in the
anionic surfactant alone.
(Cannell ¶ 7.)
FF 11. Janchipraponvej “relates to a clear hair-treating composition and to a
method of treating hair that unexpectedly imparts improved conditioning
properties to hair” (Janchipraponvej 1: 7–10).
FF 12. Janchipraponvej discloses that “it is well-known that anionic
surfactants are suitable for hair shampooing, and that cationic compounds,
like cationic surfactants and cationic polymers, are useful as hair
conditioners” (Janchipraponvej 2: 49–53; id. at 1: 53–56 (“hair shampoos
generally are formulated with highly effective synthetic surfactants, like
anionic surfactants, that primarily clean as opposed to condition[] the
hair”)).
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FF 13. Janchipraponvej discloses stearalkonium chloride and
behentrimonium chloride as exemplary “oil-soluble quaternary ammonium
compounds” (Janchipraponvej 9: 50 – 10: 7; Ans. 7).
FF 14. Examiner finds that the combination of Cannell and Restle fails to
suggest oleth-10 carboxylic acid and relies on Grimm to make up for this
deficiency in the combination of Cannell and Restle (see Ans. 5).
ANALYSIS
The combination of Cannell and Restle:
Based on the combination of Cannell and Restle, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious to incorporate alkyl ether carboxylic acid as suggested by
Restle into Cannell’s composition (see Ans. 4). For the reasons set forth by
Examiner, we find no error in Examiner’s conclusion that Appellants’ claim
1 is prima facie obvious in view of the combination of Cannell and Restle
(Ans. 2–4).
We recognize, but are not persuaded by, Appellants’ comments with
regard to the rejection over the combination of Cannell, Restle, and
Janchipraponvej (Br. 17). To the extent that Appellants’ comments with
regard to the rejection over the combination of Cannell, Restle, and
Janchipraponvej relate to this rejection, which is based on the combination
of Cannell and Restle, we are not persuaded for the reasons set forth below.

The combination of Cannell, Restle, and Janchipraponvej:
Based on the combination of Cannell, Restle, and Janchipraponvej,
Examiner concludes that, at the time Appellants’ invention was made, it
would have been prima facie obvious to incorporate alkyl ether carboxylic
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acid as suggested by Restle into Cannell’s composition (see Ans. 4) and to
replace the stearalkonium chloride in the composition suggested by Cannell
and Restle with behentrimonium chloride as suggested by Janchipraponvej
(Ans. 7).

Claim 27:
Cannell suggests clear aqueous shampoo compositions comprising
anionic surfactants and Restle suggests shampoo’s comprising weakly
anionic surfactants such as polyoxyalkylenated (C6-C24)alkyl ether
carboxylic acids the alkyl ether carboxylic acids (FF 1–4 and 6–8).
Therefore, we are not persuaded by Appellants’ contention that the
combination of Cannell and Restle “teaches away from using alkyl ether
carboxylic acid (component (d)) in clear, aqueous compositions” (Br. 7).
We recognize, but are not persuaded by Appellants’ contention that
“Cannell teaches that water-insoluble components are ‘incompatible with
many water soluble anionic compounds, such as anionic surfactants’” and
the incorporation of “even small amounts of anionic surfactants requires ‘a
range of surfactants’ and is often ‘not easily accomplished’” (Br. 8, citing
Cannell ¶ 3). Notwithstanding Appellants’ contention to the contrary
Cannell discloses that “[b]ecause of their non-polar portions, phospholipids
typically are water-insoluble and incompatible with many water soluble
anionic compounds, such as anionic surfactants. While [phospholipids] can
be solubilized in water at low levels by a range of surfactants, this is often

7 We recognize Appellants’ contention that “The Claims do Not Stand or
Fall Together” (Br. 16) (emphasis omitted). Appellants, however, do not
provide separates arguments for a claim or group of claims that fall under
this ground of rejection. Therefore, the claims stand or fall together.
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not easily accomplished” (FF 9). Furthermore, Examiner finds that there is
motivation to combine Cannel with Restle because they both teach hair
treatment formulations comprising an anionic surfactant (Ans. 4; FF 2 and
7). Appellants failed to establish the incompatibility of anionic surfactants
with the water insoluble components of Cannel with evidence. In sum,
Appellants fail to establish a nexus between phospholipids and (1)
Appellants’ claimed invention or (2) the composition suggested by the
combination of Cannell and Restle. In addition, to the extent that such a
nexus exists, Appellants fails to establish that composition suggested by the
combination of Cannell and Restle does not overcome Appellants’ asserted
deficiency.
Appellants’ claimed invention does not: (a) require styling polymers
or (b) exclude amphoteric surfactants (see Appellants’ claim 1). Therefore,
we are not are not persuaded by Appellants’ contention that Cannell suggests
that “an amphoteric surfactant [may be] needed to dissolve water-insoluble
styling polymers because the water-insoluble styling polymers were ‘not
soluble in the anionic surfactant alone’” (Br. 8; see FF 10).
“The aqueous phase of [Cannell’s] inventive delivery system can
contain additional ingredients such as anionic surfactants” (FF 3).
Therefore, we are not persuaded by Appellants’ contention that Cannell’s
composition cannot comprise an alkyl ether carboxylic acid because Cannell
did not exemplify, or otherwise list, an alkyl ether carboxylic acid as an
anionic surfactant (Br. 8–9).
Janchipraponvej discloses that “it is well-known that anionic
surfactants are suitable for hair shampooing” (FF 12). Therefore, we
recognize, but are not persuaded by Appellants’ contention that
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Janchipraponvej discloses that anionic surfactants “leave the hair in a
cosmetically-unsatisfactory condition” simply because the hair may need a
conditioning treatment (see Br. 9; cf. FF 11–12).
Cannell discloses a composition comprising stearalkonium chloride
(FF 3). Janchipraponvej exemplifies art recognized oil-soluble quarternary
ammonium compounds such as stearalkonium chloride and behentrimonium
chloride (FF 13). Therefore, we are not persuaded by Appellants’ contention
that a person of ordinary skill in this art would not have found it prima facie
obvious to substitute behentrimonium chloride for stearalkonium chloride in
the composition suggested by the combination of Cannell, Restle, and
Janchipraponvej (Br. 12–13). Merck & Co. v. Biocraft Laboratories, Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“Disclos[ure of] a multitude of effective
combinations does not render any particular formulation less obvious.”).
In sum, for the foregoing reasons, we are not persuaded by
Appellants’ contention that the combination of Cannell, Restle, and
Janchipraponvej teaches away from Appellants’ claimed invention or that
Examiner’s conclusion of obviousness is based in hindsight (see Br. 9–13).

Unexpected Results:
Cannell suggests a clear solution comprising anionic surfactants and
an oil-soluble quaternary ammonium compound, such as stearalkonium
chloride (FF 1–3 and 13). Therefore, we are not persuaded by Appellants’
contention that “applicants surprisingly discovered that a homogenous and
clear composition is obtained by combining the claimed components” (Br.
14). To the contrary, absent evidence to the contrary, a person of ordinary
skill in this art would have reasonably expected clear compositions
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comprising anionic surfactants and an oil-soluble quaternary ammonium
compound as suggested by the combination of Cannell, Restle, and
Janchipraponvej.
We recognize, Appellants’ Examples and the Table reproduced on
page 15 of Appellants’ Brief, which corresponds to the Table in paragraph
63 of Appellants’ Specification (see Br. 15; cf. Spec. ¶ 63). Appellants’
Table identifies one specific composition, composition A, which is “[c]lear”
(Br. 15 (emphasis removed)). Composition A consists of: 59% Water, 3.1%
behentrimonium chloride, 26.4% PPG-5 Ceteth-10, 7.4% Laureth-11
Carboxylic Acid, and 4.2% olive oil (id.). Appellants fail to establish an
evidentiary basis on this record to support a conclusion that composition A
is commensurate in scope with the breath of Appellants’ claim 2.

The combination of Cannell, Restle, and Grimm:
Based on the combination of Cannell, Restle, and Grimm, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious to incorporate oleth-10 carboxylic acid, as
suggested by Grimm, into the hair treatment formulation suggested by the
combination of Cannell and Restle (Ans. 5).
For the reasons set forth by Examiner, we find no error in Examiner’s
conclusion that Appellants’ claim 10 is prima facie obvious in view of the
combination of Cannell, Restle, and Grimm (Ans. 4–6). For the foregoing
reasons, we recognize, but are not persuaded by, Appellants’ comments with
regard to the rejection over the combination of Cannell, Restle, and Grimm
(Br. 18).
CONCLUSION OF LAW
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The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1, under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cannell and Restle is affirmed. Claims 6–8, 15–20,
25–27, and 34–40 are not separately argued and fall with claim 1.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cannell, Restle, and Grimm is affirmed. Claim 29
is not separately argued and falls with claim 10.
The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cannell, Restle, and Janchipraponvej is affirmed.
Claims 3, 4, and 21–23 are not separately argued and all with claim 2.

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