Ex Parte Dickinson et al

Patent Trial and Appeal BoardMar 1, 2016

11793907 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111793,907 06/10/2008 Kelvin Brian Dickinson 201 7590 03/03/2016 UNILEVER PATENT GROUP 800 SYLVAN A VENUE AG West S. Wing ENGLEWOOD CLIFFS, NJ 07632-3100 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 ATTORNEY DOCKET NO. CONFIRMATION NO. J3780(C) 6878 EXAMINER BERRIOS, JENNIFER A ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 03/03/2016 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): patentgroupus@unilever.com pair_unilever@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KELVIN BRIAN DICKINSON, ANAND RAMCHANDRA MAHADESHW AR, and RUBY LOO BICK TAN-WALKER Appeal2013-009088 Application 11/793,907 1 Technology Center 1600 Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and ULRIKE W. JENKS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. Â§ 6(b). WE AFFIRM. 1 According to Appellants, the real party in interest is Conopco, Inc., d/b/a Unilever. Br. 3. Appeal2013-009088 Application 11/793,907 STATEMENT OF CASE The following claim is representative. 1. A water-in-oil emulsion for hair treatment comprising: (a) an oil phase comprising: (i) a first oily component which is one or more glyceride fatty esters, and (ii) a second oily component which is one or more hydrocarbon oils of average carbon chain length less than 20 carbon atoms; (b) a hydrophilic phase comprising: (i) water, (H) a non-ionic emulsifier which is an ethoxylated alcohol having an HLB of at least 6, and ( c) dispersed particles of a hair treatment wax wherein said wax is selected from the group consisting of microcrystalline wax, beeswax and silicone-urethane copolymer, wherein glycerides fatty ester of (a)(i) and oily component of (a)(ii) are blended with wax (c), heated, and emulsifier (b )(ii) is then added; wherein said emulsion does not separate immediately and remains stable on storage for over six months when stored at 25QC. Cited References Vanlerberghe et al. US 5,306,488 Apr. 26, 1994 (hereinafter "Vanlerberghe") Robbins et al. US 5,415,857 May 16, 1995 (hereinafter "Robbins") Dickinson et al. US 2002/0039564 Al Apr. 4, 2002 (hereinafter "Dickinson") Lusenti EP 0 247 552 A2 Dec. 2, 1987 2 Appeal2013-009088 Application 11/793,907 Bamikol et al. translation WO 03/105797 Al (hereinafter "Bamikol") Dec. 24, 2003 Grounds of Rejection 3-9. 1. Claims 1-8, 11, and 12 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Bamikol, Dickinson, Vanlerberghe, and Robbins. 2. Claims 1-12 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Bamikol, Dickinson, Vanlerberghe, Robbins and Lusenti. FINDINGS OF FACT The Examiner's findings of fact are set forth in the Answer at pages PRINCIPLES OF LAW In making our determination, we apply the preponderance of the evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). "In rejecting claims under 35 U.S.C. Â§ 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content 3 Appeal2013-009088 Application 11/793,907 of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and ( 4) objective evidence of nonobviousness, if present. "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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). 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 (CCPA 1972). "Unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice." In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared \'l1ith the closest prior art." In re Baxter= Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991). Obviousness We agree with the Examiner's fact finding, statement of the rejection, and responses to Appellants' arguments as set forth in the Answer. We find that the Examiner has provided evidence to support a prima facie case of obviousness. We provide the following additional comment to the Examiner's argument set forth in the Final Rejection and Answer. Appellants argue that, "nowhere do the references cited by the Examiner ever teach or suggest that, in order to stably incorporate dispersed particles of hair treatment wax (further limited to specific groups of such 4 Appeal2013-009088 Application 11/793,907 waxes) into water-in-oil emulsion (comprising two specific oily phase components)." Br. 11. Appellants argue that Vanlerberghe teaches away from the combination, and teaches that wax microdispersions not be used in the presence of oil. Id. at 12. We agree with and adopt the Examiner's specific responses to these arguments in the Answer at pages 9-10. The Examiner has shown with sufficient evidence that all the claimed ingredients and their known properties are known in the prior art to be useful in hair treatment products and provided a reason to combine them. As to the Examiner's prima facie case and response to Appellants order of steps argument, Vanlerberge states that, "it is possible to obtain microemulsions with certain oils and microdispersions with certain waxes, which are stable and dilutable with water without limitation and without aggregation and sedimentation of the particles in suspension." Col. 1, 11. 40- 45, emphasis added. ii .. ccording to Vanlerberge, \Vax and emulsifier are heated (col. 5. 11. 62-64), and "the liposoluble ingredients are generally added to the wax before producing the microdispersion" (col. 6, 11. 9-10). After dilution, the secondary ingredients are added. Col. 6, 11. 56-58. Additionally, the Examiner argues that even if the order of steps performed in preparing the prior art hair treatment product are different, the steps of blending the wax and oil prior to addition of the emulsifier are product-by-process limitations in a product claim which carry little patentable weight absent evidence demonstrating that the process steps result in a structurally different product. Ans. 10. We agree. "The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the 5 Appeal2013-009088 Application 11/793,907 prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). As discussed below, Appellant has not provided sufficient data to show that the claimed process steps result in a structurally different product. Compare Ex parte Gray, IO USPQ2d 1922, 1926 (Bd. Pat. App. & Inter. 1989) (The Board held that the burden of persuasion was on appellant to show that the claimed product exhibited unexpected properties compared with that of the prior art.) Appellant argues on page 11 of the Brief that Applicants have specifically demonstrated that, when such product-by- process is followed, wax ingredients are stably incorporated for over six ( 6) months at 25Â°C. Conversely, when wax ingredients are dispersed directly into this formulation, unstable products are immediately formed (page 16, lines 11- 16). We agree with the Examiner (Ans. 9) that Appellant has not provided sufficient comparative evidence to support a demonstration of unexpected results attributed to the order of performance of the claim steps. Ans. 9. The comparative examples on pages 13-16 of the Specification compare a control formulation of 50:50 mineral oil and sunflower oil, with 3 inventive examples which additionally include wax and other ingredients. Appellants, however, failed to provide comparative data for the control values. Nor has Appellant established that the stability results achieved by the performing the claimed product-by-process steps in the claimed product were unexpected or exceptional in view of the prior art hair treatment composition containing similar ingredients made by other processing methods, or that the results were specifically attributed to the order of performance of the claim steps. 6 Appeal2013-009088 Application 11/793,907 We adopt the Examiner's comprehensive responses to Appellant's other arguments, including Appellant's "teaching away" argument, as set forth in the Answer as our own. Appellants do not address rejection 2 on the merits and merely indicate that Lusenti does nothing to address the fundamental deficiencies of Bamikol, Dickinson, Vanlerberghe, and Robbins. Br. 13. Having found no deficiencies in the primary combination of references in rejection 1, we affirm rejection 2. CONCLUSION OF LAW The cited references support the Examiner's obviousness rejections, which are affirmed for the reasons of record. All pending claims fall. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). 7