The Procter & Gamble Company

Patent Trials and Appeals Board

Jul 20, 2020

14310568 - (D) (P.T.A.B. Jul. 20, 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.
14/310,568 06/20/2014 Henry Rafael RINCON 13436 8277
27752 7590 07/20/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
HIRT, ERIN E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HENRY RAFAEL RINCON and
JAMES ANTHONY STAUDIGEL
________________

Appeal 2020-000664
Application 14/310,568
Technology Center 1600
________________

Before RICHARD M. LEBOVITZ, JASON V. MORGAN, and
DEBORAH KATZ, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. 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. Appellant identifies the real party in interest as The Procter &
Gamble Company. Appeal Br. 1 (Feb. 19, 2019).
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Summary of the disclosure
Appellant’s claimed subject matter “relates to stabilizing a zinc
pyrithione dispersion with a cationic polymer in the presence of an anionic
surfactant.” Spec. 1.
Representative claim2 (key limitations emphasized)
1. A composition comprising:
a) from about 25% to about 60% of a pyrithione or a polyvalent
metal salt of the pyrithione by weight of the composition;
b) from about 0.01% to about 1% of a cationic polymer by
weight of the composition;
c) from about 0.01% to about 2.0% of an anionic surfactant by
weight of the composition;
wherein the cationic polymer has a molecular weight from
about 100,000 g/mol to about 2,000,000 g/mol.
The Examiner’s rejections and cited references
The Examiner rejects claims 1–19 under 35 U.S.C. § 103 as being
unpatentable over Yoshimaru (US 2013/0289011 A1; published Oct. 31,
2013), Smith et al. (US 2013/0045263 A1; published Feb. 21, 2013)
(“Smith”), and Dihora et al. (US 2012/0276210 A1; published Nov. 1, 2012)
(“Dihora”). Non-Final Act. 3–6.
ADOPTION OF EXAMINER’S FINDINGS AND CONCLUSIONS
We agree with and adopt the Examiner’s findings as set forth in the
Answer and in the Action from which this appeal was taken, and we concur

2 The originally filed Appeal Brief erroneously enumerated the recited
components as “d),” “e),” and “f).” Appeal Br. 15. Herein, we use the
correct enumerations. Supp. Appeal Br. 1–2 (Apr. 17, 2019); see also
Amend. 2 (Mar. 22, 2018).
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with the Examiner’s conclusions. We have considered Appellant’s
arguments, but do not find them persuasive of error. We provide the
following explanation for emphasis.
ANALYSIS
The Examiner concludes the composition of claim 1 would have been
an obvious based on the composition of Yoshimaru—which includes a
cationic polymer, a metal pyrithione salt, a non-anionic surfactant, and an
anionic surfactant—and the anionic surfactant and cationic polymer
percentage teachings of Smith and Dihora. See Non-Final Act. 4–5 (citing,
e.g., Yoshimaru Abstract, ¶¶ 24, 28–30, 74, 184). In particular, the Examiner
finds that Yoshimaru teaches that “anionic surfactants can be added to
[Yoshimaru’s] composition in amounts which do not impair an object” of
Yoshimaru. Ans. 6 (citing Yoshimaru ¶ 184). The Examiner acknowledges
that an artisan of ordinary skill would understand “care would need to be
taken if said anionic surfactant was incorporated as Yoshimaru teaches said
incorporation to be difficult.” Non-Final Act. 8 (citing, e.g., Yoshimaru
¶ 81). But the Examiner concludes that, with such care being taken into
consideration, it would have been obvious to an artisan of ordinary skill in
the art, through “routine optimization,” to incorporate an amount of anionic
surfactant that includes the claimed lower bound of 0.01%. Ans. 6
Appellant contends the Examiner erred because “Yoshimaru teaches
away from the substitution of an anionic surfactant . . . for the non-anionic
surfactant” used in Yoshimaru’s composition. Appeal Br. 7. Specifically,
Appellant argues Yoshimaru teaches that “incorporation of [an] anionic
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surfactant results in it being difficult to produce a stable aqueous
dispersion.” Id. at 8 (citing Yoshimaru ¶ 4).
We are not persuaded by Appellant’s argument because the Examiner
does not conclude that it would have been obvious to substitute an anionic
surfactant for the non-anionic surfactant of Yoshimaru. Rather, the Examiner
persuasively shows that Yoshimaru teaches forming a dispersion that
includes both a non-anionic surfactant and an anionic surfactant. See Ans.
10; see also Non-Final Act. 8 (citing, e.g., Yoshimaru ¶¶ 74, 81, 184). As the
Examiner correctly concludes, claim 8 “does not exclude other surfactants,
e.g.[,] non-anionic surfactants[,] from being incorporated into the
composition.” Ans. 10.
The Examiner’s findings are supported by Yoshimaru’s teaching of
forming an “antibacterial dispersion” comprising “metal pyrithione salt . . .
5% to 70% by weight, . . . cationic polymer . . . 0.1% to 40% by weight, and
[a] non-anionic surfactant . . . 0.01 % to 25% by weight.” Yoshimaru ¶ 24.
Yoshimaru further teaches that this “antibacterial dispersion . . . may contain
. . . an anionic surfactant, and the like within a range not impairing an object
of” Yoshimaru. Id. ¶ 184. Importantly, Yoshimaru expressly teaches
blending, without coagulation, of a cationic polymer of a “hair treatment
agent with an anionic surfactant.” Yoshimaru ¶ 74 (emphasis added); see
also Yoshimaru ¶ 81 (“cationic polymer A/B . . . can sufficiently maintain
water solubility even if the cationic polymer A/B and, for example, an
anionic surfactant form a complex”). Thus, Yoshimaru teaches or suggests
producing a stable aqueous dispersion having an anionic components. See
Yoshimaru ¶ 4. Therefore, Yoshimaru does not criticize, discredit, or
otherwise discourage investigation into a dispersion containing a polyvalent
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metal salt of pyrithione, a cationic polymer, a non-anionic surfactant, and an
anionic surfactant. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)).
Appellant argues the Examiner erred because Smith’s teaching of
“anionic surfactants in a shampoo formulation that helps prevent
flocculation provides no motivation for one of skill in the art to arbitrarily
select such anionic surfactants” and because “Yoshimaru clearly teaches
away from the use of such anionic surfactants.” Appeal Br. 12. Appellant’s
arguments are not commensurate with claim 1, which does not recite a
particular anionic surfactant, but instead merely recites the amount of
anionic surfactant in the claimed composition. Moreover, we agree with the
Examiner that preventing flocculation, as taught by Smith (see, e.g., Smith
¶ 52), represents a sufficient reason having a rational underpinning as to why
an artisan of ordinary skill would have relied on Smith to teach or suggest
the percentage of anionic surfactant to incorporate into Yoshimaru’s
composition (see Non-Final Act. 5; see also Smith ¶ 95). Moreover, as
discussed above, we do not agree that Yoshimaru teaches away from the use
of anionic surfactants.
Appellant also argues the Examiner erred because Dihora’s teaching
of “tapioca starch in a shampoo formulation provides no motivation for one
of skill in the art to arbitrarily select such specific tapioca starch, and select
such anionic surfactant from Smith et al. and modify Yoshimaru.” Appeal
Br. 13.
We note that Dihora is not needed to show that claim 1 is obvious
because Yoshimaru describes a cationic polymer in the claimed range (see
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Yoshimaru ¶ 24 (cited in Non-Final Act. 4)), a fact not disputed by
Appellant. Appellant’s arguments regarding a specific starch are not
commensurate with the scope of claim 1, which does not recite a specific
cationic polymer (e.g., tapioca starch), but instead merely recites the amount
of cationic polymer in the claimed composition. Nonetheless, as claim 10
lists starch among the choices of a cationic polymer, and claim 12 includes a
tapioca starch, the Examiner correctly notes that “Dihora teaches that tapioca
starch is an effective cationic polymer useful for formulating shampoo
compositions comprising zinc pyrithione and that tapioca starch is
functionally equivalent to the guar and Jaguar polymers” of Yoshimaru.
Ans. 13; see also Dihora ¶ 53. This supports the Examiner’s reliance on
Yoshimaru to teach or suggest not just a particular cationic polymer, but also
provides further support for use of the amount recited in the claimed
composition. See Dihora ¶ 6. Dihora’s tapioca starch is therefore being used
for its known and expected properties as a cationic polymer. An “[e]xpress
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA
1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“[b]ecause the applicants merely substituted one element known in the art
for a known equivalent, this court affirms” the rejection for obviousness);
accord KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result”).
Appellant argues that “[e]ven if, arguendo, a prima facie case of
obviousness is established, it has been overcome by the showing of
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unexpected results.” Appeal Br. 9. Specifically, Appellant argues the
claimed “compositions deliver phase stability that a person of ordinary skill
in the art would have found unexpected.” Id. To this end, Appellant
compares Yoshimaru’s tables showing the use of 6–31.25% by weight of
cationic polymer to stabilize high concentration aqueous zinc pyrithione
with the Specification’s table showing a lower cationic polymer
concentration. See id. at 9–10. Appellant argues that Yoshimaru’s
“composition was only effective for up to two weeks and it required an
elevated temperature of 50 °C” (id. at 9) but that the Specification discloses
“the composition with the particular cationic polymer and anionic surfactant
displayed a phase stability of at least three months, which is up to six times
as stable as the dispersions in Yoshimaru” (id. at 10). Appellant argues these
results are evidence of nonobviousness because “one skilled in the art would
not find it obvious to increase the stability of a high concentration zinc
pyrithione dispersion by lowering the concentration of the cationic polymer
stabilizer.” Id. at 11.
When “an applicant demonstrates substantially improved results . . .
and states that the results were unexpected, this should suffice to establish
unexpected results in the absence of evidence to the contrary.” In re Soni, 54
F.3d 746, 751 (Fed. Cir. 1995). But Appellant unpersuasively relies on mere
attorney argument to characterize the comparative data of Yoshimaru and
the Specification as evidence of unexpected, substantially improved results.
See id. at 750. “[U]nexpected results must be established by factual
evidence” beyond “[m]ere argument or conclusory statements in the
specification.” Id. (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984)).
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Furthermore, we agree with the Examiner that the purported
“unexpected results are not commensurate in scope with” claim 1. Ans. 8.
For example, as the Examiner correctly notes, claim 1 does “not require a
phase stable dispersion and [the Specification’s disclosed] results contain
[only] a single example of one cationic polymer . . . whereas [claim 1] is
directed to a composition containing any cationic polymer.” Id. Similarly,
the results relied upon by Appellant in the Specification disclose use of
“only one type of pyrithione” and “a single example of an anionic
surfactant,” but claim 1 encompasses the use of “any pyrithone or salts
thereof” and “any anionic surfactant.” Id. at 9.
The experimental results Appellant identifies in the Specification also
only include two anionic surfactant concentrations (none (for comparison)
and 0.16) and three cationic polymer concentrations (none (for comparison),
0.05, and 0.10). Spec. 23–24 (Table 1). Claim 1, in contrast, encompasses
anionic surfactant concentrations “from about 0.01% to about 2.0% by
weight of the composition” and cationic polymer concentrations “from about
0.01% to about 1% by weight of the composition.”
“[O]bjective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support.” In re Tiffin,
448 F.2d 791, 792 (CCPA 1971). Appellant fails to provide persuasive
evidence showing that the anionic surfactant and cationic polymer types and
concentrations used in the experiments described in the Specification—
particularly experiments two and three—are representative of the broad
array of components and the wide range of concentrations encompassed by
claim 1. When unexpected results are proffered by an appellant to rebut a
prima facie case of obviousness, the appellant must “provide[] an adequate
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basis to support the conclusion that other embodiments falling within the
claim will behave in the same manner” in order to “establish that the
evidence is commensurate with [the] scope of the claims.” In re Kao, 639
F.3d 1057, 1068 (Fed. Cir. 2011).
For these reasons, we agree with the Examiner that the combination of
Yoshimaru, Smith, and Dihora teach or suggest all of the recitations of claim
1, and that secondary considerations of nonobviousness presented by
Appellant are unpersuasive. See Non-Final Act. 4–7; Ans. 8–9. Accordingly,
we affirm the Examiner’s 35 U.S.C. § 103 rejection of claim 1, and claims
2–19, which Appellant does not argue separately.
CONCLUSION
Claims Rejected 35 U.S.C. § References Affirmed Reversed
1–19 103 Yoshimaru,
Smith, Dihora
1–19
TIME PERIOD FOR RESPONSE
No time period for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED