Michael Molenda et al.

Patent Trials and Appeals Board

Aug 9, 2019

15398235 - (D) (P.T.A.B. Aug. 9, 2019)

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.
15/398,235 01/04/2017 Michael MOLENDA 101216-148/270 3258
27387 7590 08/09/2019
LONDA, BRUCE S.
NORRIS MCLAUGHLIN, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
ALLEY, GENEVIEVE S
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
08/09/2019 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 MICHAEL MOLENDA,
IIKA TIETJEN, and EIJI TERADA
(APPLICANT: KAO GERMANY GMBH)
____________

Appeal 2019-0018691
Application 15/398,2352
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This Appeal3 under 35 U.S.C. § 134(a) involves claims 1, 3, 4, 7, 8, 10–12
and 15–17 (App. Br. 2). Examiner entered a rejection under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 Appellants identify “KAO GERMANY GMBH” as the real party in
interest (App. Br. 2).
2 This Application is a continuation of Application 13/062,017, now
abandoned.
3 This Appeal is related to Appeal 2015-002786 (Application 13/062,017).
Decision affirming the rejection under 35 U.S.C. § 103(a) over the
combination of Goddinger (Goddinger et al., US 2006/0251602 Al,
published Nov. 9, 2006) and Terada (Terada, US 2007/0031365 Al,
published Feb. 8, 2007) entered November 4, 2016.
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STATEMENT OF THE CASE
Appellants’ disclosure relates “to an aqueous cleansing composition
for keratin fibres, especially human hair, comprising at least one amino acid
surfactant, at least one alkyl glyceryl ether and at least one fatty alcohol”
(Spec.4 1). Appellants’ claims 1, 16, and 17 are representative and
reproduced below:
1. An aqueous cleansing composition adapted to treat keratin
fibres of human hair comprising:
at least one amino acid surfactant selected from the group
consisting of sodium cocoyl glutamate, sodium lauroyl
glutamate and mixtures thereof and present at a concentration
of 0.5 to 7.5% by weight;
at least one glyceryl ether selected from the group
consisting of glyceryl decyl ether, glyceryl ethylhexyl ether,
glyceryl heptyl ether and mixtures thereof and present at a
concentration of 0.5 to 5% by weight; and
at least one fatty alcohol selected from the group
consisting of decyl alcohol, lauryl alcohol, myristyl alcohol and
mixtures thereof and present at a concentration of 0.5 to 2.5%
by weight, all concentration values are calculated based on the
total composition.
(App. Br. 20.)
16. An aqueous cleansing composition adapted to treat keratin
fibres of human hair comprising:
at least one amino acid surfactant selected from the group
consisting of sodium cocoyl glutamate, sodium lauroyl
glutamate and mixtures thereof and present at a concentration
of about 0.5 to about 4.0% by weight;
at least one glyceryl ether selected from the group
consisting of glyceryl decyl ether, glyceryl ethylhexyl ether and

4 Appellants’ January 4, 2017 Specification.
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glyceryl heptyl ether and mixtures thereof and present at a
concentration of about 0.5 to about 1.5% by weight; and
at least one fatty alcohol selected from the group
consisting of decyl alcohol, lauryl alcohol, myristyl alcohol and
mixtures thereof and present at a concentration of about 0.5 to
about 1% by weight, all concentration values are calculated
based on the total composition.
(Id. at 21–22.)
17. An aqueous cleansing composition adapted to treat keratin
fibres of human hair comprising:
sodium lauroyl glutamate present at a concentration of
about 0.5 to about 4.0% by weight;
glyceryl ethylhexyl ether present at a concentration of
about 0.5 to 5% by weight; and
myristyl alcohol at a concentration of about 0.5 to 2.5%
by weight, all concentration values are calculated based on the
total composition.
(Id. at 22.)

Grounds of rejection before this Panel for review:
Claims 1, 3, 4, 7, 8, 10–12 and 15–17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Goddinger and Terada (see
footnote 3 for citations).

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

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ANALYSIS
Appellants do not dispute Examiner’s findings that Goddinger and
Terada collectively disclose hair-cleaning compositions comprising an
amino acid surfactant, glyceryl ether, and fatty alcohol as in Appellants’
independent claims 1, 16, and 17. Appellants also do not dispute
Examiner’s rationale for combining the glyceryl ether from Terada in a
composition of Goddinger.
Appellants contend, however, that the evidence of record establishes
that their claimed invention exhibits “unexpected and surprisingly
synergistic results” (see App. Br. 6 (emphasis omitted)). In this regard,
Appellants contend that
[t]he comparative data presented in pages 24 and 25 of [their]
. . . [S]pecification . . . shows that a formulation, in accordance
with the features of independent claims 1, 16, and 17, exhibited
and achieved the highest, and far superior, foam speed, foam
stability and creamiest foam when directly compared with
formulations according to the prior art. A surprising and
unexpected synergistic effect was exhibited and achieved in that
the sum of the effects of the individual components is less than
the effect observed in combination. This surprising and
unexpected synergistic effect was not expected to be achievable
by [Appellants’ claimed composition] . . . in view of the
teaching of the references of the record, and could not have
been predicted based on either the teachings of Goddinger and
Terada or the knowledge of the skilled artisan at the time of the
presently claimed composition.
(Id.)
In support of their contentions, Appellants direct attention to Example
1 of their Specification and the Molenda Declaration5 (see App. Br. 6–12;

5 Declaration of Michael Molenda, signed June 27, 2017 (Molenda Decl.).
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see also Spec. 24–25; Molenda Decl. ¶ 5). For clarity, Table I of
Appellants’ Amended Specification6 is reproduced below:

(Amended Spec. 2: Table I.) Appellants contend that “Comparative
Compositions A, B, C, and D were formulated according to the prior art”
and “Inventive Composition E was formulated according to the claimed
features of [Appellants’] independent claims 1, 16 and 17” (App. Br. 7; see
Ans.7 3 (Appellants’ “inventive composition is depicted by Composition
E”); see also Reply Br. 2). In this regard, Appellants explain that
Comparative Composition A fails to contain any of the . . .
claimed components. Comparative Composition B comprises
an amino acid surfactant[, Sodium lauroyl glutamate,] that reads
on the presently claimed at least one amino acid surfactant of
claims 1, 16 and 17, but excludes both a fatty alcohol and a
glyceryl ether. Comparative Composition C comprises a
glyceryl ether[, Ethylhexyl glycerin,] that reads on the presently
claimed at least one glyceryl ether, but excludes both an amino
acid surfactant and a glyceryl ether. Comparative Composition
D comprises a fatty alcohol[, Myristyl alcohol,] that reads on

6 Appellants’ June 13, 2017 Amended Specification.
7 Examiner’s October 29, 2018 Answer.
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the presently claimed at least one fatty alcohol, but excludes a
glyceryl ether and an amino acid surfactant.
(App. Br. 7.) Appellants direct attention to “additional comparative testing
including additional Comparative Compositions F and G,” reproduced
below:

(Molenda Decl. ¶ 5: Table A.) Appellants contend that Comparative
Composition F corresponds to Goddinger’s disclosed composition, which is
the closest prior art relied upon by Examiner (see App. Br. 13; see also Ans.
3 (“the closest prior art (Goddinger et al.) is represented by Comparative
Composition F”)).
The results of foam speed, foam stability, and foam creaminess for
each of Appellants’ compositions A–G are reproduced below:

(Amended Spec. 2: Table II.)
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(Molenda Decl. ¶ 5: Table B.)
Appellants contend that their results establish that “Inventive
Composition E according to the features recited in independent claims 1, 16
and 17 exhibits and achieves far superior results [and an identifiable
unexpected synergy] for each of foam speed, foam stability and foam
creaminess when direct[ly] compared to Comparative Compositions A-D,”
“F and G” (App. Br. 9; see also id. at 11–12, Molenda Decl. ¶ 5 (“Inventive
Composition E . . . surprisingly and unexpectedly achieves superior foam
speed, stability and creaminess when directly compared to Comparative
Composition F”)). In support of this contention Appellants explain:
[W]ith respect to foam speed, from the table [I], Comparative
Composition B shows the effect of the amino acid surfactant,
sodium lauroyl glutamate, to be 360 - 310 (value of control
Composition A)= 50/2 = 25 ( divided by 2 because example E
comprises only half of the glutamate). Additionally,
Comparative Composition C shows the effect of the glyceryl
ether, ethyl hexyl glycerine, to be 380 - 310 = 70/2 = 35
(divided by 2 because example E comprises only half of the
glycerine); and Comparative Composition D shows the effect of
the fatty alcohol, sodium lauroyl glutamate, to be 320 - 310 =
10 (not divided by 2 because example E comprises the same
amount of fatty alcohol).
Thus, the expected foam speed for Inventive
Composition E is 25+35+ 10=70. In other words, Inventive
Composition E is expected to have the value of 380 (310
(control value) + 70). However, the value is 440 achieved by
Inventive Composition E is significantly higher than the
expected value of 380; therefore, the combined effect of the
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three presently claimed ingredients at the presently claimed
concentration values is synergistic in terms of foam speed.
Similarly, with respect to foam stability, the expected
value based on the comparative date from Comparative
Compositions A-D is 16.25, but the actual foam stability value
exhibited by Inventive Example E is 14.
With respect to foam creaminess, the ten (10) volunteers
assigned Inventive Composition E a value of 9, while assigning
zero or no value for Comparative Compositions A, B and D and
a value of 1 for Comparative Composition C.
(App. Br. 9–10.) Similarly,
with respect to foam speed, the expected value based on the
comparative date from Comparative Compositions F and G is
420, but the actual foam speed value exhibited by Inventive
Example E is 440. Further, with respect to foam stability, the
expected value based on the comparative date from
Comparative Compositions F and G is 17, but the actual foam
stability value exhibited by Inventive Example E is 14.
With respect to foam creaminess, the ten (10) volunteers
assigned Inventive Composition E a value of 9, while assigning
only a value of 5 for Comparative Composition F and a value of
6 for Comparative Composition G.
(App. Br. 12.)
Based on the foregoing analysis, Appellants contend that
the comparative data set forth for working Example 1 on pages
24 and 25 of the present specification and the additional
comparative data set forth in the Declaration clearly shows that
inclusion of the above-mentioned three presently claimed
components (i.e., at least one amino acid surfactant, at least one
glyceryl ether and at least one fatty alcohol) at concentrations
recited in independent claims 1, 16 and 17, unexpectedly and
surprisingly achieves unexpected synergistic results for foam
speed, foam stability and foam creaminess characteristics when
directly compared to Comparative Compositions A-D, F and G

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which either include one presently claimed component or two
presently claimed components present in combinations.
(Id.)
Appellants further contend:
There was, and still is, no indication in the prior art that
the presently claimed composition according to the features of
independent claims 1, 16 and 17 would achieve these
surprisingly unexpected synergistic foam speed, stability and
creaminess characteristics exhibited by the Inventive
Composition E in accordance with the features of claims 1, 16
and 17. Furthermore, there is no reason, and no way, for a
skilled artisan to have predicted that the inclusion of the above-
mentioned three presently claimed components recited in
claims 1, 16 and 17 would achieve the unexpected synergistic
results when directly compared to Comparative Compositions
A-D, F and G.
(Id. at 12–13; see Reply Br. 2–4.) We agree.
Examiner finds that Goddinger does not disclose a composition
comprising a glyceryl ether and relies on Terada to disclose:
water-based shampoos comprising a non-ionic surfactant such
as monoalkyl glyceryl ethers, wherein the alkyl is preferably a
linear or branched alkyl group having 4 to 10 carbon atoms
(e.g., n-decyl, 2-ethylhexyl or n-heptyl) ([0042-0044]) . . .[,]
that these nonionic surfactants (e.g., the monoalkyl glyceryl
ethers) are preferably used in aqueous shampoo solutions for
good foamability and adequate liquid properties ([0046]) and
furthermore, wherein the content of the nonionic surfactant in
the water-based shampoo is preferably from 0.1 to 15% by
mass, more preferably from 0.5 to 8% by mass and still more
preferably from 1 to 6% by mass in view of good foaming
effect (these ranges overlap the claimed ranges) ([0047]).
(Final Act. 5–6.) Based on this finding Examiner concludes that
[a] person of ordinary skill would have been motivated to
[combine Goddinger and Terada] . . . because Terada teaches
that the aqueous shampoo solution containing fatty amide
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propyl betaine surfactants (such component was also taught in
the composition of Goddinger et al.) and/or monoalkyl glyceryl
ethers produce good foamability and adequate liquid properties
([0046]).
(Id. at 6–7.) “Examiner acknowledges that there appears to be some
difference in foam speed and stability . . . between inventive composition E
and comparative composition F . . .; however, Terada teaches that the
component missing in comparative composition F is advantageously used in
aqueous shampoos, for example, for good foamability and, therefore, it is
expected that the tested foam values increased with the addition of
ethylhexyl glycerin” (Ans. 7). We are not persuaded. On this record,
Examiner fails to explain why a person of ordinary skill in this art would
have reasonably expected that a composition suggested by the combination
of Goddinger and Terada would have resulted in having the foam speed,
stability, and creaminess characteristics of Appellants’ claimed invention.
Stated differently, although there may have been, as Examiner asserts, an
“expectation of producing desirable foamability characteristics in a shampoo
composition as described by Terada,” Examiner failed to establish an
evidentiary basis on this record to support a conclusion that a person of
ordinary skill in this art would have reasonably expected to obtain the results
obtained by Appellants based on the combined disclosures of Goddinger and
Terada.
Examiner also failed to provide an evidentiary basis on this record to
support a finding that Appellants used the wrong calculations and analysis to
establish unexpected results or that Appellants should have, instead, used the
so-called “Colby analysis” and/or “Flint’s analysis tests” (see Ans. 6
(“mixtures identified as synergistic (by the Colby analysis) may not be
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statistically different from the ingredients used alone; Flint’s analysis tests is
required to determine if the combination of ingredients is statistically
different than the ingredients alone”); see generally Ans. 4–9; cf. Reply Br. 4
(“Regarding the Examiner’s concerns with respect to the statistical analysis
and evaluation of the experimental data, Appellant[s] submit[] that the
Examiner should first find a good reason as to why not to acknowledge the
effects presented in Table II of the present [S]pecification and Table B of the
Declaration”)).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1, 3, 4, 7, 8,
10–12 and 15–17 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Goddinger and Terada is reversed.

REVERSED