Ex Parte Simonet

Board of Patent Appeals and Interferences

May 31, 2012

11017868 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FREDERIC SIMONET
__________

Appeal 2010-012117
Application 11/017,868
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1-16, 20, and 21.
1
We have jurisdiction
under 35 U.S.C. § 6(b).

1
Claims 17-19 are also pending, but stand withdrawn from consideration
(Ans. 2; see also App. Br. 2 ).
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STATEMENT OF THE CASE
The Specification teaches that it is common to introduce into
detergent compositions conditioners to improve the cosmetic properties of
the composition, especially for those compositions intended to be applied to
sensitized hair (Spec. 2). The Specification teaches that highly charged
cationic polymers are often used for their particularly high conditioning
power, but have the drawback of forming a complex with anionic
compounds and precipitating (id.). The Specification teaches that it “is thus
difficult to maintain a homogeneous nature and good working qualities such
as abundant lather or viscosity that is acceptable and adjustable by addition
of an intermediary compound to a composition comprising such cationic
polymers and a washing base” (id.).
Thus, according to the Specification:
The Applicant has found, surprisingly, that homogeneous
detergent compositions comprising an appreciable amount of
highly charged cationic polymers can be obtained by using at
least one anionic surfactant and at least one particular
amphoteric surfactant in an anionic surfactant(s)/amphoteric
surfactant(s) weight ratio of less than or equal to 1, a minimum
amount of at least one particular water-soluble salt and a total
amount of surfactants of less than or equal to 18% by weight
relative to the total weight of the composition.
(Id. at 2-3.)
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. A detergent composition, comprising:
at least one anionic surfactant;
at least one amphoteric surfactant;
at least one cationic polymer with a cationic charge density of greater
than 5 meq/g;
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at least one mineral or organic water-soluble salt; and
a cosmetically acceptable aqueous medium;
wherein:
the at least one amphoteric surfactant is selected from the group
consisting of (C8-C24)alkylamido(C3-C8)alkylbetaines, sulfobetaines, (C8-
C24 )alkylamido(C6-C8)alkylsulfobetaines, (C8-C24)alkyl
amphomonoacetates, (C8-C24)alkyl amphodiacetates, (C8-C24 )alkyl
amphomonopropionates, (C8-C24 )alkyl amphodipropionates and
phosphobetaines;
the at least one anionic surfactant and the at least one amphoteric
surfactant are present in a weight ratio of less than or equal to 1;
the at least one mineral or organic water-soluble salt is present in an
amount of at least 1 % by weight, relative to a total weight of the
composition;
an anion of the at least one organic water-soluble salt comprises from 1
to 7 carbon atoms; and
a total amount of surfactants in the composition is less than or equal to
18% by weight relative to the total weight of the composition.

The following ground of rejection is before us for review:
Claims 1-16, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by Restle.
2
As Appellant does not argue the claims
separately, we focus our analysis on claim 1, and claims 2-16, 20, and 21
stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
We affirm.

ANALYSIS
We agree with the findings and conclusion of the Examiner (Ans. 4-
5), and therefore adopt them as our own.

2
Restle et al., US 6,338,842 B1, issued Jan. 15, 2002.
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In summary, the Examiner finds that Invention C of Example 3 of
Restle teaches all of the components of claim 1, including the use of a
cationic polymer, but does not teach the use of a cationic polymer that has a
charge density of greater than 5 meq/g (Ans. 4).
The Examiner finds however, that Restle teaches that preferred
cationic polymers include Merquat 550 (used in Invention C of Example 3),
and Merquat 100, which has a charge density of 6.2 meq/g (id. (citing
Restle, col. 10, ll. 26-32 and Example 2 of Restle)).
The Examiner thus concludes that it would have been obvious to use
Merquat 100, which has a charge density greater than 5 meq/g, as the
cationic polymer of Invention C of Example 3, as Restle teaches that the
polymers are both preferred and functionally equivalent, also teaches that
both polymers provide disentangling properties to the composition (Ans. 5
(citing Restle, col. 2, ll. 4-26, and Examples 2 and 3 of Restle)).
Appellant argues that Restle “describes various cationic polymers
without discrimination,” and thus there is nothing in the patent “that would
lead one of ordinary skill in the art to assemble a composition including the
particular cationic polymer recited in claim 1 to achieve significantly
improved cosmetic properties, such as combability of hair treated with such
a composition” (App. Br. 5).
Appellant‟s arguments are not convincing. As noted by the Examiner,
Restle teaches:
Among all the cationic polymers that can be used in the context
of the invention, it is preferred to use cyclopolymers, in
particular, homopolymers of a diallyidimethylammonium salt
and copolymers of a diallyldimethyethylammonium salt and
copolymers of a diallyldimethylammonium salt and of
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acrylamide, in particular, the chlorides, sold under the names
“Merquat 100”, “Merquat 550” and “Merquat S” by the
company Calgon . . . .
(Restle, col. 10, ll. 26-32.)
Restle also provides three Examples. In Example 1 (id. at col. 12), the
cationic polymer used was Merquat 100. In Example 2 (id. at col. 13), again
the cationic polymer used was Merquat 100. Example 3 used another
preferred cationic polymer, Merquat 550.
In addition, for the inventive shampoo prepared in Example 2, “[a]ll
the experts indicated that the hair treated with composition A according to
the invention disentangled more easily, was softer, and smoother than the
hair treated with composition B” (id. at col. 14, ll. 4-7). For the inventive
shampoo prepared in Example 3, “90% of the experts indicated that the hair
treated with composition A according to the invention disentangled more
easily, was softer and smoother than the hair treated with composition B”
(id. at col. 14, ll. 50-53), with the same result reported for composition C (id.
at col. 14, ll. 53-57).
Thus, we conclude that the Examiner has set forth a very strong prima
facie case that it would have been obvious to use Merquat 100, which has a
charge density of 6.2 meq/g, and thus meets the limitation of the claim of
using at least one cationic polymer with a cationic charge density of greater
than 5 meq/g, for the Merquat 550 as the cationic polymer in Composition C
of Example 3 of Restle. Although Restle provides a long laundry list of
different cationic polymers that may be used (see Restle, col. 5, l. 4-col. 10,
l. 67), Restle teaches that Merquat 100 and Merquat 550 are particularly
preferred. Moreover, those are the only two cationic polymers used in the
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Examples, with Merquat 100 being used in two Examples, and Merquat 500
being used in one Example. In the Example using Merquat 100, Example 2,
all of the experts agreed that the hair treated with the inventive composition
disentangled more easily, was softer, and smoother than the hair treated with
the comparative composition, whereas in Example 3 using Merquat 550 only
90% of the experts agreed that the hair treated with the inventive
composition disentangled more easily, was softer, and smoother than the
hair treated with the comparative composition. Thus, the ordinary artisan
would have immediately understood from the teachings of Restle that
Merquat 100 could be substituted for Merquat 550 in Composition C of
Example 3.
Appellant argues further that the Examiner asserts that the cationic
polymers are functionally equivalent (App. Br. 5). Appellant asserts,
however, citing the Declaration of Frédêric Simonet dated January 15, 2009
(Simonet Declaration), that not all of the cationic polymers are functionally
equivalent as “using a cationic polymer having a charge density of less than
5 meq/g in [the] composition provides inferior results than using a cationic
polymer having a charge density of less than 5 meq/g in an otherwise
identical composition according to claim 1” (id.). Appellant further asserts
that the results “using cationic polymers having a cationic charge density
greater than 5 meq/g are unexpected” (id. at 6).
The Simonet Declaration compared two compositions, one of which
included a cationic polymer having a charge density greater than 5 meq/g,
and the other included a cationic polymer having a charge density less than 5
meq/g (Simonet Declaration, ¶ 6). The inventive composition had a
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decrease in the maximum combing force of 58.3%, while the comparative
composition had a decrease in the maximum combing force of 34.5% (id. at
¶ 15). The Declarant stated:
Based on my education and experience, these results are
unexpected given that it was not known that the use of a
cationic polymer with a particular cationic charge density as
claimed would significantly improve the combing of the hair.

(Id. at ¶16.)
The burden of demonstrating unexpected results rests on the party
asserting them, and “it is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080, 173
USPQ 14, 16 (CCPA 1972). “Mere improvement in properties does not
always suffice to show unexpected results.” In re Soni, 54 F.3d 746, 751
(Fed. Cir. 1995). Moreover, it has been long held that “even though
applicant‟s modification results in great improvement and utility over the
prior art, it may still not be patentable if the modification was within the
capabilities of one skilled in the art, unless the claimed ranges „produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.” In re Huang, 100 F.3d 135, 139, 40
USPQ2d 1685, 1688 (Fed. Cir. 1996) (quoting In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (1955), and citing In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990)).
We conclude that Appellant has not presented evidence of unexpected
results, that when weighed with the evidence of obviousness, sufficient to
support a conclusion of nonobviousness. In re Hedges, 783 F.2d 1038, 1039
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(Fed. Cir. 1986) (“If a prima facie case is made in the first instance, and if
the applicant comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the matter
are to be reweighed”). First, the unexpected results appear to be a difference
in degree, rather than a difference in kind required by the case law. As
discussed above, the modification was well within the capabilities of one
skilled in the art. Moreover, the Specification acknowledges cationic
polymers were known to be conditioning to the hair (Spec. 2). Restle taught
that when shampoo compositions containing Merquat 100 were used, all the
experts agreed that the hair treated with the inventive composition
disentangled more easily, was softer, and smoother than the hair treated with
the comparative composition (Restle, col. 13, Example 2), whereas in
Example 3, which used Merquat 550, only 90% of the experts agreed that
the hair treated with the inventive composition disentangled more easily,
was softer, and smoother than the hair treated with the comparative
composition (id. at col. 14, Example 3). Thus, the ordinary artisan, reading
Restle, would expect Merquat 100 to provide better conditioning results,
such as better combability of the hair, than Merquat 550.
Second, as also discussed above, the ordinary artisan would have
understood from a reading of the Restle patent that Merquat 100 could be
used in composition 3 of Example 3 instead of the Merquat 550, and would
have understood that such a composition was well within the scope of the
teachings of the Restle patent. In that regard, Appellant‟s purported
unexpected results are only a recognition of the latent properties of a
composition clearly suggested by Restle. However, “[m]ere recognition of
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latent properties in the prior art does not render nonobvious an otherwise
known invention.” In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir.
1991).
Finally, as noted by the Examiner (Ans. 10), the Declaration only
tested one cationic polymer in the Declaration, while the claims are drawn to
any cationic polymer with a charge density greater than 5 meq/g. Thus,
Appellant‟s unexpected results are not commensurate in scope with the
breadth of the claim. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983). Appellant asserts that one need also consider the results presented in
the Specification (Reply Br. 3 (citing Spec. 16, ll. 5-23). The Specification
teaches that when the compositions of the invention were used as shampoos,
the gave the hair a high level of disentangling. Restle, in Examples 2 and 3,
also taught that the hair treated with the inventive compositions disentangled
more easily. Given that type of subjective result, one cannot compare the
results presented in the Specification to those of Restle to determine if they
are in fact unexpected.

SUMMARY
The rejection of claim 1 under 35 U.S.C. § 103(a) as being rendered
obvious by Restle is affirmed. As Appellant does not argue the claims
separately, we also affirm the rejection as to claims 2-16, 20, and 21.

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Application 11/017,868

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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

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