Henkel AG & Co. KGaA

Patent Trials and Appeals Board

Oct 30, 2020

15547067 - (D) (P.T.A.B. Oct. 30, 2020)

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.
15/547,067 07/28/2017 Udo Erkens PT033079 (083.0347US) 1623
29906 7590 10/30/2020
LKGLOBAL
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
EXAMINER
CONIGLIO, AUDREA JUNE BUCKLEY
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
docketingteam@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte UDO ERKENS and BURKHARD MUELLER
____________

Appeal 2020-002169
Application 15/547,067
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to an agent for lightening keratin fibers. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Henkel AG & Company, KGaA as
the real party in interest. Appeal Br. 3. Herein, we refer to the Final Office
Action mailed August 8, 2019 (“Final Act.”); Appellant’s Appeal Brief filed
September 16, 2019 (“Appeal Br.”); Examiner’s Answer mailed December
17, 2019 (“Ans.”); and Appellant’s Reply Brief filed January 23, 2020
(“Reply Br.”).
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STATEMENT OF THE CASE
“The present disclosure relates to agents for oxidative color change in
the field of cosmetics, which are particularly designed for lightening keratin
fibers, particularly human hair.” Spec. ¶ 2. According to the Specification,
“the use of certain copolymers” as described in the present disclosure
“improve[s] the properties of bleaching agents, in particular resistance to oil
separation” as well as “[m]iscibility with dye-containing formulations.” Id.
¶¶ 15–16.
Claims 1–8, 12, 14, 15, and 18–20 are on appeal and can be found in
the Claims Appendix of the Appeal Brief. Claim 1 is illustrative of the
claims on appeal and reads as follows:
1. An agent for lightening keratin fibers, comprising – relative
to the weight thereof –
a) at least one ethyl cellulose,
b) at least one oil component,
c) at least one peroxydisulphate from the group of sodium
peroxydisulphate and/or potassium peroxydisulphate and/or
ammonium peroxydisulphate; and
d) at least one fatty alcohol from the group arachyl alcohol
(eicosan-1-ol), gadoleyl alcohol ((9Z)-eicos-9-ene-l-ol),
arachidonic alcohol ((5Z,8Z, 11Z, l4Z)-eicosa-5,8,11,14-
tetraenel-ol), heneicosyl alcohol (heneicosane-1-ol), behenyl
alcohol (docosane-1-ol), erucyl alcohol ((13Z)-docos-13 -
ene-1-ol) and brassidyl alcohol ((13E)-docosene-l-ol).
Appeal Br. 11.
The following rejections are before us for review:
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I. Claims 1, 4, 6–8, 15, 18, and 19 under 35 U.S.C. § 103 as
obvious over Braun,2 Hoeffkes,3 and Yoshida4;
II. Claims 2, 3, 12, 14, and 20 under 35 U.S.C. § 103 as
obvious over Braun, Hoeffkes, Yoshida, and Ethocel5;
and
III. Claim 5 under 35 U.S.C. § 103 as obvious over Braun,
Hoeffkes, Yoshida, and Narasimhan.6
Final Act. 5–8.
All three rejections are premised on the same underlying combination
of Braun, Hoeffkes, and Yoshida. Moreover, Appellant relies on the same
arguments for independent claim 20 and the dependent claims that it does
for claim 1. Appeal Br. 9–10. Accordingly, we analyze the rejections
together, selecting claim 1 to be representative of the claims on appeal. See
37 C.F.R. § 41.37 (c)(1)(iv).
The issue is whether the preponderance of the evidence supports
Examiner’s conclusion that claim 1 is obvious over the cited prior art.
Findings of Fact
FF1. Braun teaches “[h]air bleach” compositions comprising an
“organic lipophilic compound,” a “thickener,” and an “inorganic persalt.”
Braun, Abstr., claim 1.

2 EP 1034777 A1, published Feb. 2, 2000 (English translation) (“Braun”).
3 US 2003/0012751 A1, published Jan. 16, 2003 (“Hoeffkes”).
4 US 7,166,136 B2, issued Jan. 23, 2007 (“Yoshida”).
5 Dow Cellulosics, Ethocel: Ethylcellulose Polymers Technical Handbook,
2005 (“Ethocel”).
6 US 6,703,004 B2, issued Mar. 9, 2004 (“Narasimhan”).
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FF2. Braun teaches that the thickener in its hair bleach compositions
may be a cellulose polymer such as an “ethylcellulose[].” Braun 3/13.
FF3. Braun teaches that the organic lipophilic compound in its hair
bleach compositions may be, inter alia, a vegetable oil, silicone oil or
“hydrophobic fatty acid ester such as” isopropyl palmitate. Braun 3/13.
Appellant’s Specification describes the same oils and fatty acid esters as
preferred examples of the “oil component” in Appellant’s claim 1. See Spec.
¶¶ 24–30.
FF4. Braun teaches that the inorganic persalt in its hair bleach
compositions may be “alkaline earth metal peroxides and inorganic
persulfates such as ammonium persulfate and alkali metal persulfates such as
sodium persulfate or potassium persulfate.” Braun 3/13, claim 8.
FF5. Hoeffkes describes compositions “for blonding human hair.”
Hoeffkes ¶ 2. Hoeffkes teaches that such compositions contain a “standard
peroxo compound” such “ammonium peroxydisulfate, potassium
peroxydisulfate, or sodium peroxydisulfate.” Id. ¶ 11. In addition, Hoeffkes
teaches that such compositions may further include “thickeners, such as . . .
cellulose derivatives, for example methyl cellulose” (id. ¶ 41), “fatty
alcohols” (id. ¶ 50), and “oils and liquid waxes as care components” (id.
¶ 55).
FF6. Yoshida teaches hair dye compositions comprising a “long-
chain acyl sulfonic acid salt anionic surfactant” and an “aliphatic alcohol”
such as “behenyl alcohol.” Yoshida Abstr.; 3: 1–3, 3:55–59. Yoshida
teaches that a hair dye composition comprising these components “provides a
smooth sensation upon use that has not yet been obtained from a
conventional hair dye composition, and which exhibits excellent stability (in
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particular, viscosity stability) and excellent dyeability.” Id. at 4:23–27; see
also 1:7–10 (teaching the composition “exhibits excellent stability and
dyeability, which provides excellent sensation upon use (smoothness), and
which can be easily rinsed off after use thereof”).
Analysis
Examiner finds Braun teaches hair bleach compositions comprising
elements a)–c) of claim 1. Examiner determines that Yoshida teaches hair
dye compositions comprising fatty alcohols such as behenyl alcohol.
Examiner concludes it would have been obvious to one of ordinary skill in
the art to include behenyl alcohol in addition to the other recited elements in
order “to achieve a desirable balance of smoothness in the hair after rinsing
and viscosity of the product at taught by Yoshida.” Final Act. 6. Examiner
further determines that Hoeffkes “teaches similar formulations” for hair
bleaching compositions “combining analogous components which may
include cellulosic agents, oil components, and fatty alcohol components,
thereby establishing a reasonable expectation of success from the
combination of” Braun and Yoshida, as articulated above. Id.
After considering the record and the arguments in the Appeal Brief,
we adopt Examiner’s findings of fact and reasoning regarding the scope and
content of the prior art (Final Act. 4–8; FF1–FF6) and agree that the agent
for lightening keratin fibers recited in claim 1 would have been obvious over
Braun, Hoeffkes, and Yoshida. We address Appellant’s arguments below.
Appellant argues “there is no motivation to combine Braun, Hoeffkes
and Yoshida.” Appeal Br. 7–9. According to Appellant, the fatty alcohols
recited in claim 1 “are present in the [claimed] bleaching agents as
volumizers,” whereas
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the motivation to use the aliphatic alcohols of Yoshida is
to form a gel with long-chain sulfonic acid salt anionic
surfactants to form a highly stable gel that allows a high
amount of hair dye aid to be added so that higher
dyeability can be achieved. Braun and Hoeffkes do not
utilize long-chain sulfonic acid salt anionic surfactants.
Thus, one of skill in the art would not be motivated to
combine Yoshida with Bran and/or Hoeffkes. Moreover,
as a fundamental matter, unlike Yoshida' s invention,
which is a hair dye, Braun, Hoeffkes, and Appellant's
inventions are not hair dyes but rather are bleaching
agents.
Id. at 7–8. Appellant contends “one of skill in the art would not look to a
reference teaching how to make a gel for a hair dye for instructions on how
to make the lightening agents of the instant application.” Id. at 8.
Appellant’s argument is unpersuasive for several reasons. First, as
Examiner correctly observes (see Ans. 4), the fact that Yoshida teaches the
addition of behenyl alcohol for a different purpose than Appellant’s
Specification does not overcome the rejection. See In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references
be combined for the reasons contemplated by the inventor.”). Here,
Examiner has articulated a sufficient rationale for why it would have been
obvious to add behenyl alcohol to Braun’s hair bleach compositions, i.e., “to
achieve a desirable balance of hair smoothing effects” (Ans. 4), and that
rationale is supported by the record (see FF6).
Second, Appellant’s argument that Yoshida teaches it is the
combination of a long-chain sulfonic acid salt anionic surfactant and behenyl
alcohol to form a gel, as opposed to the use of an aliphatic alcohol alone,
that provides beneficial effects (see Appeal Br. 8) is unavailing because
Appellant’s claims do not exclude the combination of those ingredients to
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form a gel. Claim 1 is a “comprising” claim and, therefore, does not exclude
other ingredients, such as the anionic surfactants taught in Yoshida, in
addition to those recited therein. Thus, even if the teachings in Yoshida
were interpreted to require both an anionic surfactant and an aliphatic
alcohol to achieve the beneficial effects described therein, the addition of
both ingredients to Braun’s hair bleach composition would continue to read
on claim 1.7
Finally, we disagree with Appellant’s assertion that one of ordinary
skill in the art would not consider the teachings in Yoshida because they
relate to hair dye as opposed to hair bleach. See Appeal Br. 8. The benefits
Yoshida describes, e.g., “excellent sensation upon use (smoothness)” and
easy rinse off after use, are applicable to both dyes and bleaches. FF6.
Moreover, Appellant’s Specification explains that “[o]ften hair is not only to
be lightened, but dyed at the same time. Bleaching pastes should therefore
be readily miscible with mousse-like dyes. These colorants often contain
direct dyes, so homogenous mixing is essential for a uniform dyeing and
lightening result.” Spec. ¶ 8. Thus, Appellant’s argument that a skilled
artisan would not consider teachings regarding hair dye ingredients to be
relevant to those in hair bleach is undermined by Appellant’s own statements
in the Specification.
For these reasons, we conclude that the preponderance of the evidence
supports Examiner’s rejection of claim 1. We determine that Examiner’s

7 We further note that Hoeffkes describes anionic surfactants, including
anionic surfactants similar to those taught in Yoshida, as ingredients in hair
bleach compositions. See Hoeffkes ¶ 29.
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rejections of the other claims are supported by a preponderance of the
evidence for the same reasons as claim 1. Thus, we affirm.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 6–8,
15, 18, 19
103 Braun, Hoeffkes,
Yoshida
1, 4, 6–8,
15, 18, 19

2, 3, 12, 14,
20
103 Braun, Hoeffkes,
Yoshida, Ethocel
2, 3, 12, 14,
20

5 103 Braun, Hoeffkes,
Yoshida, Narasimhan
5
Overall
Outcome
1–8, 12, 14,
15, 18–20

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED