Nohbo, LLC

Patent Trials and Appeals Board

Sep 24, 2020

16149543 - (D) (P.T.A.B. Sep. 24, 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.
16/149,543 10/02/2018 Benjamin Gabriel STERN 1927-005DIV2 1862
22208 7590 09/24/2020
THE MARBURY LAW GROUP, PLLC
11800 SUNRISE VALLEY DRIVE
15TH FLOOR
RESTON, VA 20191
EXAMINER
ALLEY, GENEVIEVE S
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
ptonotices@marburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BENJAMIN GABRIEL STERN, ROBERT HUTTON RAY,
JAMES J. RAMIREZ, and MATTHEW GERNSTEIN
__________

Appeal 2020-001175
Application 16/149,543
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, MICHAEL A. VALEK, and
JAMIE T. WISZ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a
method of using a hygiene product pod comprising about 40 wt% to about
70 wt% of butylene glycol and surfactant. The Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as Nohbo, LLC
(see Appeal Br. 2).
2 We have considered the Specification of Oct. 2, 2018 (“Spec.”); Final
Office Action of Feb. 26, 2019 (“Final Action”); Appeal Brief of July 1,
2019 (“Appeal Br.”); Examiner’s Answer of Sept. 19, 2019 (“Ans.”); and
Reply Brief of Nov. 18, 2019 (“Reply Br.”).
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Statement of the Case
Background
“Hygiene products, such as shampoo, bodywash, shaving cream, and
conditioner are usually . . . provided in small bottles for use in the hospitality
and/or travel industries” (Spec. ¶¶ 3–4). “However, the small bottles of
shampoo/conditioner/shaving cream generally found in the hospitality
industry have a high packaging to product ratio, which contributes to higher
costs and excessive amounts of waste” (id. ¶ 4). The Specification teaches
“a single-use hygiene product pod having a water-soluble envelope and a
hygiene product sealed in the envelope, in which the hygiene product
includes a carrier comprising butylene glycol in an amount ranging from
about 40 wt% to about 70 wt%” (id. ¶ 7).
The Claims
Claims 1–7 are on appeal. Claim 1 is an independent claim, is
representative and reads as follows:
1. A method of using a hygiene product pod comprising a
water-soluble envelope and a hygiene product sealed in the
envelope and comprising an active agent and a carrier
comprising butylene glycol in an amount ranging from about 40
wt% to about 70 wt%, based on the total weight of the hygiene
product, the method comprising:
applying water to the pod to dissolve the envelope and
release the hygiene product;
applying the hygiene product to at least one body part of a
user; and
rinsing the hygiene product from the body part.

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The Rejections
A. The Examiner rejected claims 1–5 and 7 under U.S.C. § 103(a) as
obvious over Labeque,3 Wiesche,4 and Jeong5 (Final Act. 3–7).
B. The Examiner rejected claims 1–7 under U.S.C. § 103(a) as obvious
over Labeque and Jeong (Final Act. 7–10).

A. 35 U.S.C. § 103(a) over Labeque, Wiesche, and Jeong
The Examiner finds Wiesche teaches a “hair treatment composition
containing, based on their weight, (a) 0.01-40 wt% of 3-methyl-1,3-
butanediol (aka isopentyldiol) and (b) 0.1-40 wt% alkylpolyglycoside(s)
(surfactants)” (Final Act. 5). The Examiner finds “3-methyl-1,3-butanediol
has nourishing and moisturizing properties, and in combination with
surfactant(s), leads to improved softness and suppleness of the hair” (id. at
5).
The Examiner finds Jeong teaches “a bubble type waterless shampoo
composition. Jeong teaches that butylene glycol have functions of providing
skin stimulus release and scalp moisturizing” (Final Act. 5). The Examiner
finds it obvious to combine the teachings of Wiesche and Jeong and “to
substitute equivalents, each of which is taught by the prior art to be useful
for the same purpose (3-methyl-1,3- butanediol and 1,3-butanediol for the
purpose of providing moisturization to the hair/scalp)” (id. at 7).

3 Labeque et al., US 2017/0298216 A1, published Oct. 19, 2017
(“Labeque”).
4 Schulze Zur Wiesche et al., WO 2012/055584 A2, published May 3, 2012
(“Wiesche”).
5 Jeong, S., US 2016/0143833 A1, published May 26, 2016 (“Jeong”).
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The Examiner further combines the teachings of Wiesche and Jeong
with those of Labeque and finds Labeque teaches a “pouch [that] comprises
a household care composition which includes a shampoo or body wash”
(Final Act. 4). The Examiner finds that Labeque “implicitly teach[es] that
such composition would be applied to hair/scalp and/or body of a user
followed by a rinsing step” (id.). The Examiner finds that Labeque teaches
“the process of contacting the water-soluble pouch with water, which allows
at least some of the film of the pouch to dissolve and dilutes the composition
contained within it” (id.).
The Examiner finds it obvious to use the obvious shampoo of
Wiesche and Jeong in the pods of Labeque “for the purpose of providing
moisturization to the hair/scalp via a shampoo” (Final Act. 7).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Labeque, Wiesche, and Jeong render the claims
obvious?
(ii) If so, has Appellant provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness?
Findings of Fact
1. Wiesche teaches: “Hair cleaning products which have increased
hair care effect and particularly improve softness, suppleness and shine of
the hair contain, based on their weight, 0.01 to 40% of weight of 3-methyl-
1,3-butanediol and 0.1 to 40% by weight of alkyl polyglycoside(s)”
(Wiesche, code [57]).
2. Wiesche teaches “3-methyl-1,3-butanediol . . . which is also
referred to as isopentyldiol, has nourishing and moisturizing properties and,
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in combination with surfactant (s), leads to improved softness and
suppleness of the hair” (Wiesche translation 1).
3. Jeong teaches a “bubble type waterless shampoo composition
further includes any one or more of . . . 3 to 5 wt% of butylenes glycol
having functions of providing skin stimulus release and scalp moisturizing”
(Jeong ¶ 18).
4. The structure of 3-methyl-1,3-butanediol is shown below:
1
2
3
4
HO
OH
3-methyl-1,3 butanediol
5. The structure of 1,3 butanediol (a type of butylene glycol) is
shown below:
OH
HO 4
3
2
1
1,3 butanediol
6. Labeque teaches “pouches that include a water-soluble film and
a composition at least partially enclosed by the water-soluble film in at least
one compartment, where the water-soluble film includes a polyvinyl alcohol
(PVOH) resin blend” (Labeque ¶ 1).
7. Labeque teaches pouches may contain “shampoos, body
washes, other personal care compositions” (Labeque ¶ 36).
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8. Labeque teaches “detergent compositions can comprise from
about 1 % to 80% by weight of a surfactant. Surfactant is particularly
preferred as a component of the first composition” (Labeque ¶ 132).
9. Labeque teaches that the solvent system can include “mixtures
of organic solvents with water” where the organic solvent includes “1,3
butanediol” (Labeque ¶ 139).
10. Labeque teaches that the solvent system may be “at least about
1 % to about 50%” by weight of the composition but contain “about 5% to
about 12%, by weight of the composition, of water” (Labeque ¶ 139).
11. Labeque teaches that “glycerol may be present in an amount
less than about 15%, preferably less than about 10%, of the total
composition by weight” (Labeque ¶ 139).
12. Labeque teaches the
choice of solvent type and level is used to control final pouch
quality, including phase stability of the liquid ingredients, the
tightness/floppiness of the pouch, pouch strength and to control
the diffusion of chemistry through the film. Without wishing to
be bound by theory it is believed that preferred solvent systems
(as described above) ensure a good balance of film
plasticization. If the system contains too much water and
glycerol, then the pouches become too floppy, and at too low a
level, the pouches can become too brittle.
(Labeque ¶ 140).
13. Labeque teaches that a pouch “provides for accurate dosing
while eliminating the need for the consumer to measure the composition.
The pouch may also reduce mess that would be associated with dispensing a
similar composition from a vessel” (Labeque ¶ 2).
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Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
Prima facie obviousness can be rebutted by presenting evidence of
secondary considerations and when such evidence is submitted, all of the
evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472–
1473 (Fed. Cir. 1984). Secondary considerations include: long-felt but
unsolved needs, failure of others, unexpected results, commercial success,
copying, licensing, and praise. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998).
Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 3–7; FF 1–12) and agree that Labeque, Wiesche, and Jeong render
claim 1 obvious. We address Appellant’s arguments below.
Obviousness
Appellant contends
contrary to the assertion of the Examiner, Labeque’s teaching
that the composition may include up to about 98% [by weight]
of the solvent system fails to teach or suggest that the
composition includes an organic solvent (e.g., glycol such as
butylene glycol) concentration of greater than 15% [by weight].
[In fact, Labeque specifically limits water and glycol content] to
less than about 20 wt%.
(Appeal Br. 6).
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We find this argument unpersuasive as the Examiner also finds that it
would have been obvious to fill the Labeque pouch, taught by Labeque for
use with shampoos (FF 7), with the obvious shampoo composition of
Wiesche and Jeong (FF 1–3; see Ans. 4–5). Wiesche teaches a range of
glycol that overlaps that recited by claim 1, specifically teaching “0.01 to
40% of weight of 3-methyl-1,3-butanediol” (FF 1). In “cases involving
overlapping ranges, [courts] have consistently held that even a slight overlap
in range establishes a prima facie case of obviousness.” In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003).
Therefore, the shampoo composition would have been obvious over
Wiesche and Jeong, and it would further have been obvious to incorporate
this obvious composition into the shampoo containing pouch of Labeque
because Labeque teaches that the use of a pouch “provides for accurate
dosing while eliminating the need for the consumer to measure the
composition. The pouch may also reduce mess that would be associated
with dispensing a similar composition from a vessel” (FF 13). To the extent
that Labeque is argued separately, this argument does not address the totality
of the art in combination.6 Prior art “must be read, not in isolation, but for

6 While we agree with Appellant that Labeque prefers glycol concentrations
less than 15% (FF 11) and does not specifically disclose solvent systems
with 40 to 70% butylene glycol, Labeque does teach the use of 1,3
butanediol (FF 9) in a solvent system that may be up to 50% of the weight of
the composition and comprise as little as 5% water by weight (FF 10). That
would result in a shampoo solvent system 45% weight of an organic solvent
like 1,3 butanediol and 5% by weight of water, well within the scope of
claims 1 and 11. We do not, however, rely upon this reasoning because it
was not articulated by the Examiner in the rejection.
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what it fairly teaches in combination with the prior art as a whole.” In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant contends that “Wiesche fails to disclose any other diols that
may be included in the composition” (Appeal Br. 7). Appellant contends
“butylene glycol may refer to one of four different stable butanediol
structural isomers, namely, 1,2-butanediol, 1,3-butanediol, 1,4-butanediol, or
2,3-butanediol. In other words, butylene glycol is not a methylated diol,
such as isopentyldiol” (id. at 7). Appellant also contends “the cited art
teaches that isopentyldiol and butylene glycol perform different functions,
namely treating the skin or treating the hair and operating as a solvent” (id.
at 9). Appellant contends “that the cited art cannot reasonably be interpreted
to teach or suggest that isopentyldiol is functionally equivalent to other diol
compounds such as butylene glycol” (id. at 10).
We are not persuaded. As Appellant acknowledges, butylene glycol
may refer to 1,3 butanediol (FF 5) disclosed by Jeong as a useful
moisturizing agent in shampoo (FF 3) while Wiesche teaches isopentyldiol
(also known as 3-methyl-1,3-butanediol) as a useful moisturizing agent in
shampoo (FF 2, 4). These compounds differ by a single methyl group and
are therefore reasonably understood as homologs (see FF 4–5). “A
homologous series is a family of chemically related compounds, the
composition of which varies from member to member by CH2.” In re
Henze, 181 F.2d 196, 200 (CCPA 1950). Thus, the Examiner reasonably
finds that it would have been obvious to substitute one known homologous7

7 “[I]f an examiner considers that he has found prior art close enough to the
claimed invention to give one skilled in the relevant chemical art the
motivation to make close relatives (homologs, analogs, isomers, etc.) of the
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moisturizing agent for another, using the amounts desired by Wiesche.
Wrigley found a “strong case of obviousness” based on a claim that “recites
a combination of elements that were all known in the prior art, and all that
was required to obtain that combination was to substitute one well-known . .
. agent for another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
F.3d 1356, 1364 (Fed. Cir. 2012).
Moreover, that Labeque teaches an additional function of 1,3
butanediol, i.e., as a solvent, does not detract from its use as a moisturizing
agent (FF 3). Indeed, the ordinary artisan informed by Jeong that 1,3
butanediol is a useful moisturizing agent in shampoo and informed by
Labeque that 1,3 butanediol is also a useful solvent would have reasonably
found it useful to select 1,3 butanediol in order to obtain both desirable
properties. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.

prior art compound(s), then there arises what has been called a presumption
of obviousness or a prima facie case of obviousness.” In re Dillon, 919 F.2d
688, 696 (Fed. Cir. 1990) (en banc).
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Appellant contends
Jeong is directed to a dry shampoo composition that is designed
to be used without water. In contrast, Labeque is directed to a
pouch that is designed to rapidly and completely dissolve in
water. As such, a skilled artisan would not look to apply the
teaching of [a dry shampoo composition by] Jeong to the [wet
shampoo] compositions of Labeque, since the two compositions
are taught to be configured to operate in completely different
environments and through different methods of application,
namely, via aqueous application vs. non-aqueous application.
(Appeal Br. 8).
We find this argument unpersuasive because it fails to address the
references as combined. The Examiner relies upon Jeong simply to show
that 1,3-butanediol is an obvious equivalent of Wiesche’s 3-methyl-1,3-
butanediol because both are shampoo components used for moisturizing (FF
1–3) and therefore it would have been obvious to include Jeong’s 1,3-
butanediol in Wiesche’s shampoo composition as a substitute for 3-methyl-
1,3-butanediol. Wiesche’s shampoo composition, using 1,3-butanediol, also
includes aqueous components (see, e.g., Wiesche Translation 17 “water ad
100”). Thus, it is the combination of all three references, not simply
Labeque and Jeong, that renders the rejected claims obvious.
Appellant contends
Labeque teaches away from including more than 15 wt%
organic solvent in the disclosed pouches, since doing so may
negatively affect pouch strength and diffusion chemistry, as
well as the phase stability of the liquid ingredients. Therefore,
Labeque discloses that increasing the organic solvent
concentration would destroy the functionality of the disclosed
pouches.
(Appeal Br. 11).
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We find this argument focusing on Labeque unpersuasive because
Wiesche specifically suggests that up to 40% of 3-methyl-1,3-butanediol
may be used as a moisturizer in a shampoo composition (FF 1). Thus, this
argument fails to address the references in combination. As to the teaching
away argument, Labeque never teaches that any specific amount of glycol
has any negative effects (FF 10–11). Instead, Labeque teaches that the
solvent system may be optimized to maximize film plasticization but does
not provide any specific details on amounts of glycol that are too much.
Consequently, Labeque does not criticize, discredit, or otherwise teach away
from incorporating shampoo compositions such as the obvious shampoo
composition of Wiesche and Jeong into the pouch of Labeque. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Secondary considerations
Appellant asserts that
the present inventors tested a multitude of nonaqueous solvents,
including various diols, in an effort to provide an
encapsulatable hygiene product having an acceptable
consistency, stability, and envelope compatibility. See
Specification, ¶¶ [0085]-[0099]. For example, Composition 22
of the present disclosure included 40 wt% of propylene glycol
and had an acceptable consistency, and stability, but was found
to rapidly dissolve a PVOH envelope, thereby rendering it
unsuitable. See id., ¶¶ [0094]-[0095].
(Appeal Br. 13). Appellant also asserts the inventors “unexpectedly
discovered that hygiene compositions that included elevated amounts of the
seemingly similar diol, butylene glycol, exhibited not only an acceptable
consistency and stability, but also exhibited unexpectedly high envelope
compatibility” (id. at 13–14).
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We find this argument unpersuasive for several reasons. First, that
one of the tested compositions, composition 22, that used propylene glycol
but did not use 3-methyl-1,3-butanediol failed to work provides no evidence
regarding the efficacy or usefulness of 3-methyl-1,3-butanediol in the
composition (see Spec. ¶ 95). Instead, this is simply attorney argument
without evidence regarding the rejection as presented by the Examiner. See
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Second, the results disclosed in the Specification arenot
commensurate in scope with the range in claim 1 of 40 to 70% of 1,3
butanediol. Indeed, Table 1 of the Specification shows that values from 60
to 70% of 1,3 butanediol are not functional but rather “exhibited phase
separation” or “an overly dense creamy solid” (Spec. ¶ 87). The only
compositions tested below 59% in the range from 40% to 59%,
compositions 23–26, all showed undesirable properties including “poor
performance,” “phase separation,” and “moderate gelation” (see Spec. ¶ 98).
Only compositions 28 and 29, using 59.35% and 59.25% 1,3 butanediol
respectively, resulted in successful compositions (see Spec. ¶ 99).
Therefore, the unexpected results data for either 59.25% and 59.35% is not
commensurate in scope with claim 1.
Third, the asserted unexpected results were not compared to the
closest prior art of Wiesche, who discloses the use of up to 40% 3-methyl-
1,3-butanediol (FF 1). See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
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Fourth, we are not persuaded by Appellant’s argument that amounts
of 1,3-butanediol were not recognized as optimizable variables (see Appeal
Br. 14), because Wiesche teaches that the amount of 3-methyl-1,3-
butanediol is a moisturizing ingredient and provides a range for that
ingredient (FF 1–2) and Jeong also teaches that 1,3-butanediol is a
moisturizing agent (FF 3). Thus, the ordinary artisan would have recognized
that the amount of 1,3-butanediol would impact the moisturizing ability of
the shampoo composition and therefore be an optimizable variable.
“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980).
Conclusion of Law
(i) A preponderance of the evidence of record supports the Examiner’s
conclusion that Wiesche and Jeong render the claims obvious.
(ii) Appellant has not provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness.

B. 35 U.S.C. § 103(a) over Labeque and Jeong
The Examiner finds Labeque teaches “a pouch that include a water-
soluble film and a composition at least partially enclosed by the water-
soluble film in at least one compartment, where the water-soluble film
includes a polyvinyl alcohol (PVOH) resin blend” (Final Act. 8). The
Examiner finds Labeque teaches that “the composition within the pouch
comprises a household care composition which includes a shampoo or body
wash” (id.).
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The Examiner finds Labeque teaches “the solvent system is present at
levels in the range of from about 0.1 % to about 98% and preferably at least
about 1% to about 50% (overlaps the ranges recited[)]” (Final Act. 8).
The Examiner finds Jeong teaches “butylene glycol have functions of
providing skin stimulus release and scalp moisturizing” in a shampoo
composition (id. at 9).
Appellant contends “Labeque fails to teach or suggest including more
than 15% butylene glycol in a composition” (Appeal Br. 6). Appellant also
contends
Jeong is directed to a dry shampoo composition that is designed
to be used without water. In contrast, Labeque is directed to a
pouch that is designed to rapidly and completely dissolve in
water. As such, a skilled artisan would not look to apply the
teaching of [a dry shampoo composition by] Jeong to the [wet
shampoo] compositions of Labeque, since the two compositions
are taught to be configured to operate in completely different
environments and through different methods of application,
namely, via aqueous application vs. non-aqueous application.
(Appeal Br. 8).
We find that Appellant has the better position. While we do not agree
with Appellant’s analysis of Labeque’s concentration of butylene glycol as
per footnote 6 above, this rejection does not include Wiesche. Therefore, the
Examiner’s combination cannot rely upon a shampoo rendered obvious by
Wiesche and Jeong, but must directly provide a reason why the waterless
shampoo of Jeong would have been obvious to incorporate into the liquid
pouches of Labeque. The Examiner provides no persuasive reason for this
combination, instead simply asserting “[a]lthough Jeong’s specific
embodiments are directed to waterless shampoos, they do not specifically
teach that butylene glycol can't be used in a composition” (Ans. 5). While
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this statement may demonstrate that Jeong does not teach away from the
combination, it does not provide the “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, 550 U.S. at 418. Without such
a reason, we are constrained to reverse this rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7 103 Labeque, Wiesche,
Jeong
1–5, 7
1–7 103 Labeque, Jeong 1–7
Overall
Outcome
1–5, 7 6

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 IN PART