Ex Parte Molenda et al

Patent Trial and Appeal Board

Aug 18, 2017

12187648 (P.T.A.B. Aug. 18, 2017)

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.
12/187,648 08/07/2008 MICHAEL MOLENDA 101216-121 3422
27387 7590 08/21/2017
LONDA, BRUCE S.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
08/21/2017 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, MARTIN HOFFMANN, and
SABINE FORSTER

____________

Appeal 2016-0077171
Application 12/187,648
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims directed to a two-phase composition for
hair. The Examiner rejected the claims under 35 U.S.C. § 103 as obvious
and 35 U.S.C. § 112 for lack of written description. We have jurisdiction
under 35 U.S.C. § 6(b). The § 103 rejection is affirmed. The § 112 rejection
is reversed.

1 The Appeal Brief (“Appeal Br.”) lists Kao Germany GmbH as the real-
party-in-interest. Appeal Br. 2.
Appeal 2016-007717
Application 12/187,648

  2
STATEMENT OF THE CASE
The Examiner rejected claims 1–4, 6, 7, 9–13, and 17–21 under five
separate grounds of rejection under 35 U.S.C. § 103. Appeal Br. 4–5
(Ground II–VI). Each of the rejections rely on De Salvert (US Pat. Appl.
Publ. 2005/0075265 A1, publ. Apr. 7, 2005) and/or Najdek (US Pat. Appl.
Publ. 2005/0118214 A1, publ. June 2, 2005) in addition to other cited
publications. Final Act. 5–22.
The Examiner also rejected claim 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 3.
There are two independent claims on appeal, claims 1 and 20. Claim
1, which is representative of the appealed subject matter, is reproduced
below (indentations added for clarity):
1. A two-phase composition for hair comprising
5 to 50% by weight oil phase, calculated to the total
composition, and
50 to 95%, by weight aqueous phase, calculated to the
total composition,
wherein the two phases are optically separated at zero
shear rate and become homogeneous upon shaking and return to
optically separated two-phases upon release of agitation,
wherein the oil phase comprises at least one arylated
silicone present at a concentration of 0.01 to 5% by weight
calculated to the total composition and
the aqueous phase comprises at least one fixing polymer
present at a concentration of 0.1 to 20 wt.% calculated to the
content of the aqueous phase.

Appeal 2016-007717
Application 12/187,648

  3
OBVIOUSNESS REJECTIONS
Claim 1 is directed to a two phase composition for hair comprising an
oil phase and an aqueous phase. The following limitations, number [1]–[5],
are required by the claim:
[1] The composition is 5 to 50% by weight oil phase of the total
composition.
[2] The composition is 50 to 95%, by weight aqueous phase of the
total composition.
[3] The oil phase “comprises at least one arylated silicone present at a
concentration of 0.01 to 5% by weight calculated to the total composition.”
[4] The aqueous phase “comprises at least one fixing polymer present
at a concentration of 0.1 to 20 wt.% calculated to the content of the aqueous
phase.”
[5] The two phases “are optically separated at zero shear rate and
become homogeneous upon shaking and return to optically separated two-
phases upon release of agitation.”

Findings of Fact (“FF”)
Najdek
FF1. The Examiner found that Najdek teaches a two phase oil and
aqueous composition as claimed. Final Act. 7.
FF2. The Examiner found that the phases are present in the
composition in a ratio from 40:60% to 60:40%, with the aqueous phase
Appeal 2016-007717
Application 12/187,648

  4
preferably at a higher ratio, falling within the weight ranges [1]2 and [2] of
claim 1. Id.
FF3. The Examiner also found that Najdek teaches that the oil may be
a non-volatile oil, such as phenyl trimethicone, which can be present in an
amount of 0.2–5%. Final Act. 7; Najdek ¶¶ 11, 16.
FF4. Phenyl trimethicone is [3] an arylated silicone as claimed and it
is present in Najdek in amounts that overlap with claimed amounts. Phenyl
trimethicone appears in a list of arylated silicones recited in rejected
dependent claim 2.
FF5. The Examiner found that Najdek teaches that a demixing agent
(“fixing polymer” of claim 1, limitation [4]) can be included in the
composition to rapidly separate the phases as required by limitation [5] of
claim 1. Id. at 8.
FF6. The Examiner found that that the demixing agent is preferably
in an amount of 0.01 to 1% of the composition. Final Act. 8; Najdek ¶ 9.
FF6. The Examiner calculated that the amount of demixing agent
described in Najdek corresponds to 0.016 to 2.5% by weight of the aqueous
phase which overlaps with the [4] claimed amounts of 0.1 to 20%. Id.
Appellants did not challenge the Examiner’s calculation.
FF7. The Examiner found that Najdek teaches a list of preferred
demixing agents which included polyvinylpyrrolidone/vinylacetate
copolymer (i.e. PVP/VA copolymer) (Final Act. 8; Najdek ¶¶ 7, 8), the same

2 Bracketed numbers in the findings of fact refer to the claim limitations
identified above.
Appeal 2016-007717
Application 12/187,648

  5
fixing polymer (limitation [4] of claim 1) recited in rejected claim 20 and
encompassed generically by claim 1.

De Salvert
FF8. The Examiner found that De Salvert teaches a two phase oil and
aqueous composition as claimed. Final Act. 5.
FF9. The Examiner found that the phases are present in the
composition of De Salvert in amounts of 40–60% by weight, falling within
the weight ranges [1] and [2] of claim 1. Id.
FF10. The Examiner also found that De Salvert arylated silicones,
such as phenyl trimethicone and phenyl dimethicone (id.; De Salvert ¶ 27),
each of which are recited in the list of arylated silicones recited in rejected
dependent claim 2. Final Act. 6.
FF11. The Examiner found that De Salvert teaches rapid phase
separation, meeting the limitation [5] of claim 1, and that such feature is a
desired quality of the two phase composition because poor separation of the
two phases is perceived as unattractive by users. Id.
FF12. The Examiner stated that De Salvert does not describe the
amount of the arylated silicone as recited in limitation [3] nor a fixing
polymer in the claimed amounts [4]. Id. at 7.

Rejections
With respect to the rejections based on De Salvert as a primary
reference (Final Act. 5), the Examiner found it would have been obvious to
one of ordinary skill in the art to utilize a fixing polymer of Najdek in De
Salvert’s composition to achieve rapid separation of the phases (FF5, FF6).
Appeal 2016-007717
Application 12/187,648

  6
Final Act. 8–9. The Examiner also found that it would have been obvious to
optimize the amount of the arylated silicone in De Salvert, based on
Najdek’s teaching (FF3, FF4), to achieve the claimed amounts because
Najdek teaches that such amounts are useful in a cosmetic cleaner. Final
Act. 8.
With regard to the rejections based on Najdek as a primary reference
(Final Act. 14), the Examiner found all elements of claim 1 described in
Najdek, but not a specific example of a composition comprising phenyl
trimethicone to meet the claimed requirement of an arylated silicone (id.).
However, the Examiner found it obvious to have included phenyl
trimethicone because Najdek specifically teaches that phenyl trimethicone is
a non-volatile silicone oil that may be used for the oil phase of the
composition. Id.
Discussion
Appellants did not challenge the Examiner’s findings nor the
determination that the claims are prima facie obvious. Instead, Appellants
provided a declaration under 37 CFR § 1.132 in which they attempt to
establish the non-obviousness of the claimed invention by a showing of
unexpected results. The declaration is by co-inventor Martin Hoffmann
(“Hoffmann 2d Decl.,” dated Aug. 22, 2012).
A showing of “unexpected results” can be used to demonstrate the
non-obviousness of the claimed invention. In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) (“One way for a patent applicant to rebut a prima facie case
of obviousness is to make a showing of ‘unexpected results,’ i.e., to show
that the claimed invention exhibits some superior property or advantage that
a person of ordinary skill in the relevant art would have found surprising or
Appeal 2016-007717
Application 12/187,648

  7
unexpected.”). Those results must be “surprising or unexpected” to one of
ordinary skill in the art when considered in the context of the closest prior
art. Soni, 54 F.3d at 750; Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004) (A showing of “new and unexpected
results” must be “relative to the prior art.”); 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”). To establish unexpected results, the
claimed subject matter must be compared with the closest prior art. Id.

Hoffmann Declaration
The Hoffmann Declaration reports the results of testing eight different
compositions on the 1) combability, 2) softness, 3) shine, and 4) styleability
of hair in a wig. Hoffmann 2d Decl. ¶ 6. The effects of the composition on
the wig hair was evaluated by ten experts in the field, rating each wig on a
scale of 1 to 5, where 5 represented the highest quality. Id. ¶ 6. The
Examiner objected to the expert assessments as subjective. Ans. 21, 24.
The Examiner’s reasoning, however, is not persuasive because the Examiner
did not adequately rebut Appellants’ assertions that such assessments are
commonly used in the industry to evaluate hair compositions. Appeal Br.
12. Consequently, we have considered the expert evaluations as
summarized in the Hoffmann Declaration.
The tested compositions were based on a composition described in
Example 2 of De Salvert. Hoffmann 2d Decl. ¶ 5. The base composition of
De Salvert lacks the claimed fixing polymer and the arylated silicone. Mr.
Hoffmann added 1) trimethyl pentaphenyl trisiloxane as the arylated silicone
Appeal 2016-007717
Application 12/187,648

  8
of the rejected claims, and 2) VP/VA (polyvinylpyrrolidone/vinylacetate
copolymer) as the fixing polymer of the rejected claims. Id. ¶ 5.
Compositions were made:
• Without 1) and 2) (compositions 1 and 5. i.e., having neither the
arylated silicone or fixing polymer);
• 1) or 2) alone (compositions 2, 3, 6, and 7); and
• Both 1) and 2) (compositions 4 and 8, which are considered by Mr.
Hoffmann to be the compositions within the scope of claim 1).
Two different concentrations for each of 1) and 2) were tested.
Mr. Hoffmann stated in his declaration:
The unexpected and surprising aspect of the reported
results is that compositions of the present invention exhibited
superior styleability without a significant decrease in shine.
Indeed, it would have been expected that addition of a fixing
polymer would severely decrease shine. Surprisingly, however,
a drastic decrease in shine did not occur in the inventive
compositions.
Hoffmann 2d Decl. ¶ 7.
The Examiner identified a number of reasons as to why he did not
find the experiments in the Hoffmann Declaration adequate to establish
nonobviousness of the claimed subject matter.
To begin, we recognize that a strong case of obviousness was
established in view of the Najdek publication because Najdek contains all
the elements of claim 1, including the same components and overlapping
amounts of each component (FF2–FF7). Evidence of secondary
considerations does not always overcome a strong prima facie showing of
obviousness. See e.g., Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007); Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
Appeal 2016-007717
Application 12/187,648

  9
392 F.3d 1317, 1324 (Fed. Cir. 2004); Richardson-Vicks Inc. v. Upjohn Co.,
122 F.3d 1476, 1483–1484 (Fed. Cir. 1997) (Asyst Techs., Inc. v. Emtrak,
Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008)).
Najdek is the closest prior art because it has more limitations in
common with the claims than does De Salvert. As held in In re Merchant,
575 F.2d 865, 868 (CCPA 1978), a “comparison of the claimed invention
with the disclosure of each cited reference to determine the number of claim
limitations in common with each reference, bearing in mind the relative
importance of particular limitations, will usually yield the closest single
prior art reference.” De Salvert, on the other hand, as found by the
Examiner, does not describe the amount of the arylated silicone as recited in
limitation [3] nor a fixing polymer in the amount claimed amounts [4].
FF12.

Claim 1
The showing of unexpected results is not commensurate with the full
scope of the claims. As found by the Examiner (Ans. 21), only one arylated
silicone and one fixing polymer was compared in the Hoffmann Declaration.
Yet, the scope of claim 1 is unrestricted as to each of these components.
Unexpected results must be “commensurate in scope with the degree of
protection sought by the claimed subject matter.” In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005). In this case, Appellants have not established
that the results obtained with the single species of arylated silicone and
single species of fixing polymer would predict that all members of the
claimed genus of arylated silicones and fixing polymers would result in the
same result said to be unexpected. Appellants are not being required to test
Appeal 2016-007717
Application 12/187,648

  10
every embodiment within the scope of the claim as they allege. Reply Br.
10. When unexpected results are proffered by Appellants to rebut a prima
facie case of obviousness, Appellants must “provide[] an adequate 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). One data point is not necessarily sufficient “to
ascertain a trend in the exemplified data which would allow [one having
ordinary skill in the art] to reasonably extend the probative value thereof.”
In re Kollman, 595 F.2d 48 (CCPA 1979). Appellants must therefore
demonstrate or explain why the result of the single tested species would
establish unexpected results for the genus of compounds which are tested,
especially for the fixing polymers which are unrestricted in structure.
Appellants have not done so.
In addition to this, the claims require “at least one fixing polymer
present at a concentration of 0.1 to 20 wt.% calculated to the content of the
aqueous phase.” Ans. 21. Yet, the declaration refers to the amounts of the
fixing polymer with respect to the total weight of the composition and not
the aqueous phase as required by the claim. Id.

Claim 20
Claim 20 comprises, inter alia, the following limitations:
[1] The composition is 5 to 50% by weight oil phase of the total
composition.
[2] The composition is 50 to 95%, by weight aqueous phase of the
total composition.
Appeal 2016-007717
Application 12/187,648

  11
[3] The oil phase “comprises trimethyl pentaphenyl trisiloxane at a
concentration of 0.01 to 5% by weight calculated to the total composition.”
[4] The aqueous phase “comprises polyvinylpyrrolidone/vinylacetate
copolymer present at a concentration of 0.1 to 20 wt.% calculated to the
content of the aqueous phase.
The examples in the Hoffmann Declaration utilize trimethyl
pentaphenyl trisiloxane and polyvinylpyrrolidone/vinylacetate copolymer,
each at two different concentrations. Hoffmann 2d Decl. ¶ 5. Trimethyl
pentaphenyl trisiloxane is an arylated silicone oil as required by the claim.
Even if unexpected results were established for tested compositions 4
and 8 (containing both trimethyl pentaphenyl trisiloxane and
polyvinylpyrrolidone/ vinylacetate copolymer) as compared to compositions
1–3 and 5–7, the results are not adequate to establish the nonobviousness of
claim 20 because the comparison was not made to the closest prior art,
namely a composition of Najdek. See above for discussion of why Najdek is
the closest prior art.
Najdek teaches a composition comprising a fixing polymer, such as
polyvinylpyrrolidone (Najdek, Abstract, ¶ 21), and an oil phase which can
comprise a non-volatile oil, and specifically lists phenyl trimethicone in a
list of useful non-volatile oils (id. ¶ 11). Najdek also teaches that the “non-
volatile portion of the oil phase is preferably a non-volatile silicone oil.” Id.
¶ 16. Najdek lists dimethicone as a preferred non-volatile silicone oil and
uses it in its exemplary formulation which also contains a fixing polymer.
Id. ¶¶ 16, 21. Based on these teachings, we conclude that a comparison
should have been made between the trimethyl pentaphenyl trisiloxane and
the silicone oil in Najdek, i.e., phenyl trimethicone or dimethicone, to
Appeal 2016-007717
Application 12/187,648

  12
establish that the claimed trimethyl pentaphenyl trisiloxane provided an
unexpected result in comparison to the silicone oil suggested and
exemplified in Najdek.
For the foregoing reasons, the rejections (Grounds II–VI) of claims 1
and 20, and dependent claims 2–4, 6, 7, 9–13, 17–19, and 21 are affirmed.
Claims not argued separately fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

WRITTEN DESCRIPTION REJECTION
The Examiner rejected claim 21 as lacking a written description of
“the polyvinylpyrrolidone/vinylacetate copolymer is present at a
concentration of about 5 wt.%, calculated to the content of the aqueous
phase.” The Examiner found that the recited amount limitation in claim 21,
which was added after the application was filed, is not described in the
original specification as filed. Final Act. 3–4.
The range of “about 5 wt.%” is not expressly disclosed in the original
application. However, the application discloses concentration ranges in
which the “about 5 wt.%” falls.
Aqueous phase comprises 0.1 to 20%, preferably 0.5 to 15%,
more preferably 0.5 to 10% by weight calculated to the content
of aqueous phase at least one fixing polymer.
Spec. 5:8–10.
Example 1 of the application discloses an example of 3.5 wt.% of the
aqueous phase of polyvinylpyrrolidone/vinylacetate copolymer. Id. at 11.
In our opinion, In re Wertheim, 541 F.2d 257 (CCPA 1976) is
determinative regarding this rejection. The Wertheim court held:
Claims 2, 37, and 38, which claim a solids content range of
“between 35% and 60%,” present a different question. They
Appeal 2016-007717
Application 12/187,648

  13
clearly claim a range within the described broad range of 25% to
60% solids; the question is whether, on the facts, the PTO has
presented sufficient reason to doubt that the broader described
range also describes the somewhat narrower claimed range. We
note that there is no evidence, and the PTO does not contend
otherwise, that there is in fact any distinction, in terms of the
operability of appellants’ process or of the achieving of any
desired result, between the claimed lower limit of solids content
and that disclosed in the Swiss application. . . . Where it is clear,
for instance, that the broad described range pertains to a different
invention than the narrower (and subsumed) claimed range, then
the broader range does not describe the narrower range.
In the context of this invention, in light of the description of the
invention as employing solids contents within the range of 25-
60% along with specific embodiments of 36% and 50%, we are
of the opinion that, as a factual matter, persons skilled in the art
would consider processes employing a 35-60% solids content
range to be part of appellants’ invention and would be led by the
Swiss disclosure so to conclude. The PTO has done nothing
more than to argue lack of literal support, which is not enough.
If lack of literal support alone were enough to support a rejection
under [§] 112, then the statement of In re Lukach, supra, 442 F.2d
at 969, 58 CCPA at 1235, 169 USPQ at 796, that “the invention
claimed does not have to be described in ipsis verbis in order to
satisfy the description requirement of [§] 112,” is empty
verbiage. The burden of showing that the claimed invention is
not described in the specification rests on the PTO in the first
instance, and it is up to the PTO to give reasons why a description
not in ipsis verbis is insufficient.
Wertheim, 541 F.2d at 264–65 (emphasis added) (citations omitted).
In this case, the recited amounts of “about 5 wt.%” falls within the
broader disclosed ranges of 0.1 to 20%, 0.5 to 15%, and 0.5 to 10% for the
fixing polymer. The disclosure of these ranges in the application is evidence
that one of ordinary skill in the possessed compositions comprising amounts
of fixing polymers within the disclosed ranges because that is the purpose of
Appeal 2016-007717
Application 12/187,648

  14
a range, i.e., to convey to one of ordinary skill in that art that values within
the endpoints of the range are useful and a part of the invention. The
example in the application of a composition comprising 3.5 wt.% of the
aqueous phase of polyvinylpyrrolidone/vinylacetate copolymer is consistent
with the conclusion that values within the broader range were considered by
the inventors to be part of the invention. Thus, while Appellants did not
expressly disclose “about 5%”, explicit disclosure is unnecessary because
the recited ranges establish that one of ordinary skill in the art possessed
intermediate values and ranges inside the broader ranges. To satisfy the
written description requirement of 35 U.S.C. § 112, the inventor must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). The Examiner did not
provide evidence that “about 5 wt.%” pertains to a different invention with
different properties than the broader disclosed ranges which subsume it.
Wertheim makes it clear that it does not contravene the written description
requirement to claim values within a broader range, even when such values
do literally appear in the original application as filed.
In sum, the rejection of claim 21 as lacking a written description is
reversed.
TIME PERIOD
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