Ex Parte Rollat et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10023330 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ISABELLE ROLLAT, HENRI SAMAIN,
BEATRICE PERRON and SERGE RESTLE
____________

Appeal 2009-0105511
Application 10/023,330
Technology Center 1600
____________

Decided: April 29, 2010
____________

Before CAROL A. SPIEGEL, DONALD E. ADAMS and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 167, 168, 171,
172, 174, 175, 177, 178, 180, 181, 185-191, 193-203, 205-208, 210-216,
218-228, 230-240, 242-245, 247-253, 255-258, 260-266, 268-278, 280-290,
292-302, 304-307, and 309-311. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Oral Hearing held April 21, 2010.
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STATEMENT OF THE CASE
The claims are directed to a reshapable hair styling composition.
Claim 167 is illustrative:
167. A reshapable hair styling composition comprising:
(1) at least one (meth)acrylic copolymer present in an amount ranging
from about 0.01 to about 15 weight percent of the total weight of the
composition, wherein said at least one (meth)acrylic copolymer comprises:
(a) from about 10 to about 90 weight percent of units derived
from at least one monomer chosen from n-butyl acrylate monomers,
(b) from about 2 to about 50 weight percent of units derived
from at least one monomer chosen from 2-hydroxy ethyl
(meth)acrylate monomers, and
(c) up to about 80 weight percent of units derived from at least
one monomer chosen from 2-ethyl hexyl acrylate monomers, and
(2) at least one surfactant present in an amount ranging from about 5
to about 30 weight percent of the total weight of the composition,
wherein said composition provides a reshapable effect and is a
shampoo.

The Examiner relies on the following evidence:
Torgerson US 5,019,377 May 28, 1991
Yang et al. US 6,013,722 Jan. 11, 2000

The rejection presented by the Examiner follows:
Claims 167, 168, 171, 172, 174, 175, 177, 178, 180, 181, 185-191,
193-203, 205-208, 210-216, 218-228, 230-240, 242-245, 247-253, 255-258,
260-266, 268-278, 280-290, 292-302, 304-307, and 309-311 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of Torgerson
and Yang.
We reverse.

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ISSUE

Did the Examiner err in concluding that it would have been prima
facie obvious to a person of ordinary skill in the art at the time Appellants’
invention was made to modify Torgerson’s composition by substituting
Yang’s adhesive copolymer comprising n-butyl acrylate/2-hydroxy ethyl
(meth)acrylate/2-ethyl hexyl acrylate monomers for Torgerson’s adhesive
copolymer?

FINDINGS OF FACT
FF 1. An object of Torgerson’s “invention is to provide low glass
transition temperature adhesive copolymers useful for providing temporary
set style hold to hair” for use “in hair-care products to provide hair styling
hold, e.g., hair sprays, mousses, shampoos, and conditioners” (Torgerson,
col. 2, ll. 27-29 and col. 1, ll. 13-15; see also Ans. 3).
FF 2. The low glass transition temperature adhesive copolymers of
Torgerson’s invention have “the general structure: (Hx)m-(Ly)n . . . with at
least one H monomer component being selected from acrylate amides or
methacrylate amides [and] . . . at least one L monomer component being
selected from acrylate ester or methacrylate esters” (Torgerson, col. 3, ll. 22-
34; Ans. 4).
FF 3. Torgerson’s preferred acrylate esters and methacrylate esters
“include butylacrylate, n-butylmethacrylate, 2-ethylhexylacrylate, or the
mixture thereof” (Ans. 4; see also Torgerson, col. 4, ll. 33-38).
FF 4. Torgerson teaches that
Since the copolymers of the present invention have two or more
component monomers, one or more of the component
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monomers will be such that it forms a homopolymer having a
glass transition temperature above the temperature desired for
the copolymer to be synthesized (i.e., the H monomer
components); and one or more of the other component
monomers will be such that it forms a homopolymer having a
glass transition temperature below the desired glass transition
temperature (i.e., the L monomer components). Combining
these monomer components randomly in various weight ratios
gives copolymers which have single glass transition
temperatures between the higher and lower glass transition
temperatures for the homopolymers of the monomers utilized.

(Torgerson, col. 3, l. 61 - col. 4, l. 8.)

FF 5. The Examiner finds that Torgerson fails to teach Appellants’
(meth)acrylic copolymer, which comprises at least one monomer chosen
from n-butyl acrylate monomers, at least one monomer chosen from 2-
hydroxy ethyl (meth)acrylate monomers, and at least one monomer chosen
from 2-ethyl hexyl acrylate monomers (id.; Claim, 167).
FF 6. Yang teaches acrylic emulsion pressure sensitive adhesive
compositions for use in decorative, light management or optical articles
(Yang, Abstract).
FF 7. Yang’s “water-resistant emulsion pressure sensitive adhesive”
comprises “(a) 50-90% by weight . . . n-butyl acrylate, (b) 10-50% . . . by
weight 2-hydroxy ethyl acrylate, or 2-hydroxy ethyl methacrylate, hydroxy
propyl acrylate monomer, or mixtures thereof, (c) optionally, co-
polymerizable monomers and (d) optionally, a multifunctional cross-linking
agent” (Yang, col. 3, ll. 13-20; see also Ans. 4-5).
FF 8. Yang teaches that “[t]he optional co-polymerizable monomers
include (i) 0-50% by weight alkylacrylate monomer or (ii) 0-5% by weight
polar monomers or (iii) 0-50% by weight ethylenically unsaturated free
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radically polymerizable monomers. Alkylacrylate monomers may include[,
inter alia,] 2-ethyl hexyl acrylate” (Yang, col. 3, ll. 25-31).

PRINCIPLES OF LAW
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art. . . . [I]t can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

ANALYSIS
Appellants’ claimed composition comprises, inter alia, at least one
(meth)acrylic copolymer that comprises:
(a) at least one monomer chosen from n-butyl acrylate monomers,
(b) at least one monomer chosen from 2-hydroxy ethyl (meth)acrylate
monomers, and
(c) at least one monomer chosen from 2-ethyl hexyl acrylate
monomers,
An object of Torgerson’s “invention is to provide low glass transition
temperature adhesive copolymers useful for providing temporary set style
hold to hair” (FF 1). The low glass transition temperature adhesive
copolymers of Torgerson’s invention have “the general structure: (Hx)m-
(Ly)n”, wherein at least one H monomer component is selected from acrylate
amides or methacrylate amides and at least one L component is preferably
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selected from a group which includes “butylacrylate, n-butylmethacrylate, 2-
ethylhexylacrylate, or the mixture thereof” (FF 2-3 (emphasis added)).
Torgerson teaches that the H and L monomeric components will have
glass transition temperatures above and below the desired glass transition
temperature and by randomly combining the H and L monomeric
components in various weight ratios copolymers which have single glass
transition temperatures between the higher and lower glass transition
temperatures for the homopolymers of the monomers utilized will be
obtained (FF 4).
Torgerson does not teach an adhesive copolymer that comprises n-
butyl acrylate monomers, 2-ethyl hexyl acrylate monomers and at least one
monomer chosen from 2-hydroxy ethyl (meth)acrylate monomers as required
by Appellants’ claimed invention (FF 5).
The Examiner relies on Yang to teach a water-resistant emulsion
pressure sensitive adhesive that comprises, inter alia, (a) n-butyl acrylate,
(b) 2-hydroxy ethyl acrylate, or 2-hydroxy ethyl methacrylate, hydroxyl
propyl acrylate monomer, or mixtures thereof, and (c) optionally, co-
polymerizable monomers, which may include 2-ethyl hexyl acrylate (FF 7-
8).
Based on the combined teachings of Torgerson and Yang the
Examiner concludes that it would have been prima facie obvious to a person
of ordinary skill in the art at the time the invention was made to modify
Torgerson’s composition “by substituting [Torgerson’s] adhesive polymer
with . . . [Yang’s] adhesive copolymer comprising n-butyl acrylate/2-
hydroxy ethyl (meth)acrylate/2-ethyl hexyl acrylate monomers” (Ans. 5).
We are not persuaded.
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Appellants contend that Torgerson “teaches the use in hair styling
hold compositions of low glass transition temperature adhesive copolymers
of the general chemical structure (Hx)m-(Ly)n with at least one H monomer
being selected from acrylate amides or methacrylate amides” (Reply Br. 3;
FF 4). Appellants contend that Yang fails to teach acrylate amide or
methacrylate amide monomers (Reply Br. 3). Therefore, Appellants contend
that
To make the substitution proposed by the Examiner, i.e.,
substituting the copolymer of Yang, which is not formed from
any (meth)acrylate amide monomers, for the polymer of
Torgerson, which requires the presence of (meth)acrylate amide
monomers in its structure, goes against the explicit teachings of
Torgerson. As such, one of ordinary skill in the art would not
have been lead to make the substitution proposed by the
Examiner.

(Reply Br. 3-4.) We agree.
We are not persuaded by the Examiner’s contention “that the
expectation of success does not hinge on the use of amide monomer because
Yang already teaches the set of monomers which makes effective adhesive
copolymers” (Ans. 7). The Examiner appears to have lost sight of the fact
that one objective of Torgerson’s invention is to provide low glass transition
temperature adhesive copolymers (FF 1). Torgerson achieves this objective
by utilizing a copolymer composed of at least one acrylate amide or
methacrylate amide (i.e., the H monomer component) and at least one
acrylate ester or methacrylate ester (i.e., the L monomer component) (FF 2
and 4). The Examiner does not dispute that Yang fails to teach a copolymer
comprising an acrylate amide or methacrylate amide component. The
Examiner has not provided an evidentiary basis to support the conclusion
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that a person of ordinary skill in this art would have found it prima facie
obvious at the time Appellants’ invention was made to replace Torgerson’s
adhesive polymer, for use in hair-care products, with Yang’s adhesive
copolymer, for use in decorative, light management or optical articles, to
obtain a low glass transition temperature adhesive copolymer, which is one
objective of Torgerson’s invention (FF 1 and 6; see also Reply Br. 3-6).

CONCLUSION OF LAW
The Examiner erred in concluding that it would have been prima facie
obvious to a person of ordinary skill in the art at the time Appellants’
invention was made to modify Torgerson’s composition by substituting
Yang’s adhesive copolymer comprising n-butyl acrylate/2-hydroxy ethyl
(meth)acrylate/2-ethyl hexyl acrylate monomers for Torgerson’s adhesive
copolymer.
The rejection of claims 167, 168, 171, 172, 174, 175, 177, 178, 180,
181, 185-191, 193-203, 205-208, 210-216, 218-228, 230-240, 242-245, 247-
253, 255-258, 260-266, 268-278, 280-290, 292-302, 304-307, and 309-311
under 35 U.S.C. § 103(a) as unpatentable over the combination of Torgerson
and Yang is reversed.

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REVERSED

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