Ex Parte Molenda et al

Patent Trial and Appeal BoardDec 17, 2012

12186252 (P.T.A.B. Dec. 17, 2012)

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. 12/186,252 08/05/2008 MICHAEL MOLENDA 101216-116 1835 27387 7590 12/18/2012 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 12/18/2012 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 MUSTAFA GRIT __________ Appeal 2012-002033 Application 12/186,252 Technology Center 1600 __________ Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to water- free composition for bleaching and/or highlighting keratin fibers. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-002033 Application 12/186,252 2 STATEMENT OF THE CASE Claims 1, 3-11, 13 and 16-17 are on appeal. Claim 1, the only independent claim on appeal, is representative and reads as follows: 1. A water-free composition for bleaching and/or highlighting keratin fibers comprising at least one compound with a bleaching and/or highlighting effect and at least one arylated silicone selected from the group consisting of diphenylsiloxy phenyl trimethicone, tetramethyl tetraphenyl trisiloxane, triphenyl trimethicone, tetramethly tetraphenyl trisiloxane and pentaphenyl trimethyl trisiloxane and present at a concentration of 1 to 50% by weight calculated to total composition. The claims stand rejected as follows: I. Claims 1, 3-7, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, 1 Dow Corning PH- 1555 HRI Cosmetic Fluid, 2 Phenyl Trimethicone, 3 Dias, 4 Guskey „514, 5 and Guskey „494. 6 II. Claims 1, 11 and 17 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, Dow Corning PH-1555 HRI 1 Imperial, US 6,613,311 B2, issued Sept. 2, 2003. 2 Dow Corning PH-1555 HRI Cosmetic Fluid, published 10/21/2006 at http://www.dowcoming.com/applications/search/products/details.aspx?prod =04029042&type=PROD. 3 Phenyl Trimethicone, as published on 11/06/2004 at http://www.lotioncrafter.com/reference/tech_data_1550.pdf. 4 Dias, US 6,540,791 B1, issued Apr. 1, 2003. 5 Guskey et al., US 5,976,514, issued Nov. 2, 1999. 6 Guskey et al., US 5,776,494, issued Jul. 7, 1998. Appeal 2012-002033 Application 12/186,252 3 Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey „494, and Nocker. 7 III. Claims 1 and 8 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, Dow Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey „494, Blumenschein 8 and Bernecker. 9 IV. Claims 1, 7 and 16 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, Dow Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey „494 and Legrand. 10 Each rejection set forth by the Examiner relies on the disclosures of Imperial, Dow Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey „494. Because the same issue is dispositive for each rejection, we will consider them together. I.- IV. Issue The Examiner finds that it would have been prima facie obvious to a person of ordinary skill in the art at the time the invention was made to have substituted the arylated silicone, trimethyl pentaphenyl trisiloxane, for the dimethicone utilized in an amount of 30 wt % in Example 1 because Imperial teaches nonvolatile, water insoluble silicones having a preferred viscosity of 20 to 100,000 7 Nocker et al. US 2005/0097683 A1, published May 12, 2005. 8 Blumenschein, EP 1 803 436 A1, published July 4, 2007. 9 Machine translation of Bernecker, DE 199 62 879 A1, published June 28, 2001. 10 Legrand et al., US 6,260,556 B1, issued July 17, 2001. Appeal 2012-002033 Application 12/186,252 4 are suitable for her invention (col. 3, lines 47-51) and trimethyl pentaphenyl trisiloxane is a nonvolatile silicone with a viscosity within Imperial's preferred range which is utilized in hair care formulations to provide an ultra-high refractive index. (Ans. 9.) Appellants contend that “a prima facie case of obviousness is rebutted by a showing of unexpected and surprising results” (App. Br. 5) and that “there is nothing in the prior art that would suggest that the arylated silicones presently claimed would achieve a much better bleaching effect when compared to other silicone oils” (id. at 6). The Examiner argues that “Appellant[s] did not compare degree of lightness and bleaching effect achieved with pentaphenyl trimethyl trisiloxane against the degree of lightness and bleaching effect achieved with any one of phenyl trimethicone, phenyl dimethicone, or diphenyl dimethicone taught by Imperial (i.e. the closest prior art).” (Ans. 19; emphasis omitted.) The issue presented is: Have Appellants provided evidence of unexpected results that outweighs the evidence supporting the prima facie case of obviousness? Findings of Fact FF1. The Specification discloses as follows: The compositions of the present invention comprises at least one arylated silicone at a concentration range of 1 to 50%, preferably 5 to 40% more preferably 7.5 to 35% and most preferably 7.5 to 30% by weight calculated to total composition prior to mixing with oxidizing lotion. Non-limiting suitable examples are phenyl methicone, phenyl trimethicone, diphenyl dimethicone, diphenylsiloxy phenyl trimethicone, tetramethyl Appeal 2012-002033 Application 12/186,252 5 tetraphenyl trisiloxane, triphenyl trimethicone, tetramethly tetraphenyl trisiloxane and pentaphenyl trimethyl trisiloxane. (Specification, 2; emphasis added.) FF2. Imperial discloses “[a] composition for use in bleaching hair in combination with a liquid peroxide based oxidizing agent, said composition comprising an effective amount of at least one persulfate salt dispersed in a silicone oil base.” (Imperial, Abst.) FF3. Imperial discloses that suitable silicones “include dimethicone … [and] phenyl substituted silicones such as phenyl trimethicone, phenyl- dimethicone, [and] diphenyl dimethicone.” (Imperial, col. 3, ll. 50-55; emphasis added.) Principles of Law Once a prima facie case of obviousness has been established, objective evidence of secondary considerations must be considered in making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial obviousness determination is reconsidered a new in view of the proffered evidence of nonobviousness. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990); Ex parte Quist, App. No. 2008-001183, at 10-11 (BPAI June 2, 2010) (Precedential) (available at www.uspto.gov/ip/boards/bpai/decisions/prec/fd08001183.pdf). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Appeal 2012-002033 Application 12/186,252 6 Analysis Appellants do not dispute the Examiner‟s conclusion that the claimed composition would have been prima facie obvious based on the cited references. (App. Br. 5). We adopt the Examiner‟s findings and reasoning supporting the prima facie case. Appellants argue, however, that the Specification provides evidence of unexpected results that is sufficient to rebut the prima facie case of obviousness. (Id. at 5-7.) We are not persuaded. Rather, we agree with the Examiner that Appellants have not provided evidence of unexpected results sufficient to overcome the prima facie case of obviousness. The burden of demonstrating unexpected results rests on the party asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). That burden has not been carried here because Appellants have not established that the results achieved using the recited arylated silicone compounds were unexpectedly superior compared to the closest prior art, which is compositions disclosed by Imperial using the arylated silicones phenyl trimethicone or diphenyl dimethicone. See In re Baxter Travenol Labs., 952 F.2d at 392; see also Hoffman Declaration 11 at pp. 2-3 (comparing only non-arylated silicone compound to claimed compound, in contrast to arylated silicone compounds described in Imperial (see FF3)). We sustain the Examiner‟s rejections under 35 U.S.C. § 103(a) that rely on Imperial. 11 Declaration of Martin Hoffman under 37 C.F.R. § 1.132, declaration executed September 15, 2010. Appeal 2012-002033 Application 12/186,252 7 Conclusion of Law Appellants have not provided evidence of unexpected results that outweighs the evidence supporting the prima facie case of obviousness. SUMMARY We affirm the rejection of claims 1, 3-7, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, Dow Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, and Guskey „494. We affirm the rejection of claims 1, 11 and 17 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, Dow Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey „494, and Nocker. We affirm the rejection of claims 1 and 8 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, Dow Corning PH- 1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey „494, Blumenschein and Bernecker. We affirm the rejection of claims 1, 7 and 16 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Imperial, Dow Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey „494 and Legrand. AFFIRMED cdc