Ex Parte Nguyen et al

Patent Trial and Appeal Board

Oct 23, 2018

12864294 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/864,294 09/20/2010
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
10/25/2018
FIRST NAMED INVENTOR
Nghi Van Nguyen
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.
085137-544613 3689
EXAMINER
VENKAT,JYOTHSNAA
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NGHI VAN NGUYEN, KATHERINE NATALIE BARGER,
CYNTHIA CHONG ESPINO, and DAVID W. CANNELL
Appeal2017-004043
Application 12/864,294
Technology Center 1600
Before TONI R. SCHEINER, DEMETRA J. MILLS, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-004043
Application 12/864,294
STATEMENT OF CASE
The following claim is representative for purposes of this decision with
respect to the elected species, monoethanolamine.
1. A process for straightening or relaxing hair comprising:
(a) providing a hair straightening/relaxing composition containing:
(i) from about O .1 to about 10% by weight of at least one
non-hydroxide base selected from the group consisting of
monoethanolamine, arginine, and lysine, and mixtures thereof;
(ii) from about 1 % to about 15% by weight of at least one protein
denaturant selected from the group consisting of urea, urea
derivatives and/or salts, guanidine salts chosen from guanidine
hydrochloride and aminoguanidine hydrochloride, and
mixtures thereof;
(iii) remainder, to 100% by weight, a cosmetically acceptable
medium, all weights based on the weight of the hair
straightening/relaxing composition;
(b) contacting the hair with the hair straightening/relaxing composition
to form treated hair;
(c) optionally, rinsing the hair straightening/relaxing composition
from the treated hair;
(d) optionally, contacting the treated hair with a non-volatile oil; and
c e) smoothing the treated hair using a combination of heat and means
for physically smoothing hair.
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Appeal2017-004043
Application 12/864,294
Cited References
Mibbon '770
Malle '017
Raddison '3 3 7
Grounds of Rejection1
JP 2004/0266770
US 2005/0136017 Al
us 2006/0127337
Jan.29,2004
June 23, 2005
June 15, 2006
1. Claims 1-3, 7, 14--16, 20, 22-24, 26, and 29 are rejected under 35
U.S.C. I03(a) as being unpatentable over the combination Raddison,
Mibbon, and Malle. 2
2. Claims 17, 19, and 21 are rejected under 35 U.S.C. I03(a) as being
unpatentable over the combination of Raddison, Mibbon, and Malle.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
4--15. The following facts are highlighted.
1 An obviousness-type double patenting rejection set forth in the final
rejection was withdrawn in the Advisory Action dated June 29, 2015, upon
the filing of a terminal disclaimer by Appellants.
2 The heading of rejection 1 states, in both the final rejection and Answer,
that rejection 1 is over Raddison in view ofMibbon. However, the body of
each of the rejection 1 statements also cites Malle. We treat this discrepancy
as a typographical error on the part of the Examiner and include Malle in
rejection 1. Malle was present in rejection 1 in both the final rejection and
the Answer. We also find that Appellants had a full and fair opportunity to
address the relevance of Malle in rejection 2.
3
Appeal2017-004043
Application 12/864,294
1. Table 1 of the Specification is reproduced below.
l/\ntE I
: th:tj)l_g~ti~,.m,:i> .• < ••• > ... < .. ·>··•• .. •••·····••< . < ••• > ... <>····•·t%$tF > < 1 : ·. _ ... _.· .•:_ .. · .... ·_·. __ . · .... ·. _ ... . ·_ ... _ •. :_ . . _ .• :_ .. · .... _ .. · .. ·. _.· · .. . ·_ ... _ •. :_ .. · ... :_.,· ....•. _ .. · ... : :_.·_·.·. : J
I·::::: .;:;:;:::i;}i;;~·ri;•:i;•; ;:i; /;;:,~;1:t· · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · · f · .;:~::;. · · · · · · · · · · · · · · ·1
i l (t \'U~ .. '\ -l I~}. w .. rn.t3idini:~ hv.:.hi.~·~1:kff:idt: 1 6~)_·;: !
: -- - : :
:,, .................................................................................................................................................................................................................................................................. --t
!_ l '\_ML\------------------------------------------------------------------------------------__! 96 _______________ __!
i !()'} l'!'Ctl i J.5.1 i
: ........................................................................................................ : ........................ ]
[. ?·?;'.·: .?·'.~~::::~ .... ~ .. :1_ ?''.;~:. ~--: ~-~·~~- ................................................................ I.::~~?~? ................ !
MEA is an abbreviation for monoethanolamine.
Table 1 shows the hair straightening efficiency was
significantly greater when using the process consisting of the
inventive compositions and application of heat compared to the
process consisting of compositions that contain only the
non-hydroxide base and application of heat. Spec. 13.
2. Table 2 of the Specification is reproduced below.
· 1 i\BL,1:: :~
V+•·· r i . < ... 'ft~!JiiA~Nt~n<: <... >a.•• < <•••>••·> l
i BW,t' ! Pro,t,tn J),,,,1.;m1ri:,m. i qsr i
t· 1Ht..i : ..-n.4 :
I 5'.'l Ar~iniri,'. I I q,,.;. Gue:1ikfar~· MCl r 'iiU :
: ~ \
Table 2 shows the hair straightening efficiency was significantly greater
when using the process consisting of the inventive compositions and
application of heat compared to the process consisting of compositions that
contain only the non-hydroxide base and application of heat. Spec. 13.
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Appeal2017-004043
Application 12/864,294
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
Appellants can rebut a presumption of obviousness based on a
claimed invention that falls within a prior art range by showing "( 1) [ t ]hat
the prior art taught away from the claimed invention ... or (2) that there are
new and unexpected results relative to the prior art." Iron Grip Barbell Co.,
Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
"[W]hen an inventor tries to distinguish his claims from the prior art
by introducing evidence of unexpected 'synergistic' properties, the evidence
should at least demonstrate 'an effect greater than the sum of the several
effects taken separately."' Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 808 (Fed. Cir. 1989) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976)).
As the Federal Circuit explained in In re Huai-Hung Kao:
Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims. See In re Tiffin, 5 8
CCPA 1420, 448 F.2d 791, 792 (1971); In re Hiniker, 150 F.3d 1362,
1369 (Fed. Cir.1998). This does not mean that an applicant is
required to test every embodiment within the scope of his or her
claims. If an applicant demonstrates that an embodiment has an
unexpected result and provides an adequate basis to support the
conclusion that other embodiments falling within the claim will
behave in the same manner, this will generally establish that the
evidence is commensurate with scope of the claims. See In re
Greenfield, 571F.2d1185, 1189 (CCPA 1978) (concluding that
evidence of secondary considerations was not commensurate with the
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Appeal2017-004043
Application 12/864,294
scope of the claims where that evidence related to a single compound
and there was no adequate basis to conclude that other compounds
included within the scope of the claims would exhibit the same
behavior); In re Cescon, 474 F.2d 1331, 1334 (CCPA 1973)
( concluding that, although not every compound within the scope of
the claims was tested, the evidence of secondary considerations was
sufficient where evidence showed a correlation and there was no
factual basis to expect the compounds to behave differently in
different environments).
In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
When the examiner has required the applicant to elect single chemical
species for examination, the issue on appeal is the patentability of the single
elected species. It is appropriate to limit discussion to that single issue 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 (BP AI 1987).
ANALYSIS
Obviousness Rejections 1 and 2
We limit our discussion to the elected species of monoetholamine
(MEA), 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 (BP AI 1987). Obviousness rejections 1 and 2 as
set forth in the grounds of rejection present similar issues, and therefore we
decide these rejections together.
With respect to each of the obviousness rejections, Appellants rely on
secondary considerations, specifically, evidence of synergistic results. FF 1,
2; App. Br. 6-7, 10.
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Appeal2017-004043
Application 12/864,294
For various reasons set forth on pages 11-13 of the Answer, the
Examiner was not persuaded that the data in Tables 1 and 2 of the
Specification were commensurate in scope with the pending claims. We
cannot sustain the Examiner's conclusion, as it lacks adequate support in
view of the record before us. The Examiner must indicate, in the first
instance, why she believes that the single data point of synergism (1 % MEA)
would not have been expected throughout the claimed range of 0.1 to about
10% by weight of at least one non-hydroxide base of monoethanolamine.
The Examiner speculates that synergistic data using higher amounts of MEA
(5% or 15% MEA) recited in the scope of the claim might be different (Ans.
11-13). However, the Examiner does not provide a scientific reason or
other evidence as to why one of ordinary skill in the art would not believe
that the synergistic data presented for 1 % monoethanolamine in combination
with at least one protein denaturant would not have been expected
throughout the full range of MEA amounts recited in the claims. The data of
Table 2, shows that the combination of alternative non-hydroxide bases in
higher percentages within the scope of the claims in combination with
varying amounts of protein denaturant, also produces synergistic
straightening results.
We are persuaded by Appellants' evidence of synergism. Tables 1
and 2 of the Specification provide evidence of significantly higher
straightening values, and show significant synergistic straightening effects
when compared to the additive straightening effects of each of the
components alone. For example, 1 % MEA provides a 10.6% straightening
effect (SE) and 1 % guanidine hydrochloride provides a 36.6% SE. FPL
The additive effect of these two components is 46. 8% SE. FF 1. However,
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Appeal2017-004043
Application 12/864,294
the actual straightening result of the combination of components is 69.2%
SE, evidencing synergism between the two components. FF 1. The
obviousness rejections are reversed.
CONCLUSION OF LAW
The obviousness rejections 1 and 2 are reversed.
REVERSED
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