Ex Parte Nguyen et al

Patent Trial and Appeal Board

Feb 25, 2019

13814963 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/814,963 02/08/2013
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
02/27/2019
FIRST NAMED INVENTOR
Nghi Van Nguyen
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.
085137-528240 5729
EXAMINER
SONG, JIANFENG
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NGHI VAN NGUYEN, SAW A HASHIMOTO, and
SILIU TAN 1
Appeal2017-006374
Application 13/814,963
Technology Center 1600
Before TA WEN CHANG, JOHN E. SCHNEIDER, and DAVID COTTA,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cosmetic composition, which have been rejected as obvious and on the
ground of nonstatutory double patenting. We have jurisdiction under 3 5
U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
According to the Specification, "[t]he present disclosure relates to
silicone based cosmetic compositions comprising a silicone amine and an
1 Appellants identify the Real Party in Interest as L'OREAL. (Appeal Br.
2.)
Appeal2017-006374
Application 13/814,963
anionic silicone, and methods for using the cosmetic compositions." (Spec.
1:4---6.)
Claims 75-79, 82, 84--86, and 89 are on appeal. Claim 75 is
illustrative and reproduced below:
75. A cosmetic composition comprising:
(a) a silicone amine in an amount up to 10 wt.%, wherein the
silicone amine is amodimethicone;
(b) an anionic silicone in an amount up to 10 wt.%, wherein
the anionic silicone is a silicone phosphate selected from
the group consisting of dimethicone PEG-7 phosphate,
dimethicone PEG-8 phosphate, dimethicone PEG- I 0
phosphate, dimethicone PEG/PPG-7 /4 phosphate, and
dimethicone PEG/PPG-12/4 phosphate;
wherein the weight ratio of the (a) silicone amine
to the (b) anionic silicone is from about 1 : 10 to about
10:1;
( c) at least 70 wt.% water;
( d) a conditioning agent comprising a cationic surfactant;
and
( e) a polyquat;
wherein the cosmetic composition does not
include a fatty acid.
(Appeal Br. 16 (Claims App.).)
The Examiner rejects claims 75-79, 82, 84--86, and 89 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Nguyen and Ittel. (Ans. 3.)
The Examiner rejects claims 75-79, 82, 84--86, and 89 on the ground
of nonstatutory double patenting as being unpatentable over claims 1-11 of
U.S. Patent No. 8,658,140 in view oflttel. (Ans. 7.)
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Issue
I.
The Examiner has rejected claims 75-79, 82, 84--86, and 89 as
obvious over Nguyen and Ittel. The Examiner finds that Nguyen teaches all
of the limitations of the claims, except that it does not expressly teach a
composition comprising polyalkylene glycol, as required by claim 76. (Ans.
3--4.) However, the Examiner finds that Ittel teaches a "personal care
composition including hair spray, hair mousse, [and] hair color lotion"
wherein "[h]air conditioning agent includes polyethylene glycol." (Id. at 4.)
The Examiner concludes that it would have been obvious to a skilled artisan
to include polyethylene glycol in Nguyen's composition to arrive at the
composition of claim 76, because Ittel "teaches polyethylene glycol as
suitable conditioning agent in hair cosmetic composition" and it would have
been prima facie obvious to select a known material based on its suitability
for its intended use. (Id. at 5.)
Appellants contend that the Examiner's rejection "is the result of
selectively picking and choosing from the art using [the] claims as a guide."
(Appeal Br. 8, 14.) Appellants also contend that the prior art does not teach
the limitation regarding the exclusion of a fatty acid. (Id.) Finally,
Appellants contend that the claimed subject matter exhibits unexpected
results. (Id. at 9-13.)
Appellants do not separately argue the claims; we therefore limit our
analysis to claim 75 as representative. 2 The issues with respect to this
2 Appellants purports to argue the claims separately by stating in its Appeal
Brief that "[t]he claims do not stand or fall together." (Appeal Br. 11.)
Such a conclusory statement does not properly constitute separate argument
of the claims. Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he
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rejection are (1) whether a skilled artisan would have had a reason to
combine the disclosures in Nguyen to arrive at the composition of claim 75;
and, if so, (2) whether Appellants have presented evidence of unexpected
results that, when weighed with the evidence supporting obviousness, shows
claim 7 5 would not have been obvious.
Findings of Fact
1. Nguy en teaches "compositions and methods of using the
compositions to color hair," wherein the composition contains "at least one
polyamine, at least one acid, at least one water-insoluble ingredient, at least
one hair colorant, solvent and optionally at least one auxiliary ingredient."
(Nguyen Abstract; see also id. ,r,r 13-19.)
2. Nguyen teaches that "[t]he at least one polyamine ... may be
chosen from ... an amodimethicone." (Id. ,r 27.)
3. Nguyen teaches that "the at least one polyamine is used in a
positive amount to about 30% by weight, more typically a positive amount
up to about 10% by weight, and most typically a positive amount up to about
5% by weight, based on the weight of the composition as a whole." (Id. ,r
35.)
Board [has] reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). With respect to claims 82 and 89, Appellants additionally
contend that, because claims 82 and 89 explicitly exclude mineral oil and
isopropyl palmitate from the claimed composition, the Examiner's finding
that the Nguyen Declaration does not compare the claim to the closest prior
art is not applicable to those claims. (Appeal Br. 11.) Even assuming that
Appellants may be considered to have separately argued claims 82 and 89,
we are not persuaded that Appellants have shown that these claims exhibit
unexpected results for the reasons further discussed below.
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4. Nguyen teaches that "[e]xamples of the at least one acid ...
include ... Dimethicone PEG-8 Phosphate." (Id. ,r 63.)
5. Nguyen teaches that "[t]he at least one acid ... is present in the
composition in a positive amount up to about 50% by weight, typically a
positive amount up to amount 30% by weight, and more typically a positive
amount up to about 15% by weight, based on the weight of the composition
as a whole." (Id. ,r 64.)
6. Nguyen teaches that "[t]he at least one water-insoluble
ingredient ... may, for example, be chosen from an oil, a polymer, a fatty
ester, a hydrocarbon, a silicone, a wax, a fatty acid ... , salts of fatty acids, a
fatty alcohol and mixtures thereof." (Id. ,r 65.)
7. Nguyen teaches that the solvent in its composition is "typically
water, alcohol, glycol or mixtures thereof." (Id. ,r 94.)
8. Nguyen teaches that the solvent in its composition "is present in
an amount from about 10% by weight to about 95% by weight, typically in
an amount from about 50% by weight to about 85% by weight and more
typically from about 60% by weight to 80% by weight, based on the weight
of the composition as a whole." (Id.)
9. Nguyen teaches that "[t]he composition may optionally contain
at least one auxiliary ingredient ... in a positive amount up to about 50% by
weight based on the composition." (Id. f 95.)
10. Nguyen teaches that the auxiliary ingredient "may include ... a
cationic conditioner" and that "[ n ]on-limiting examples of cationic
conditioners include ... stearalkonium chloride and cetrimonium chloride."
(Id. ,I,I 95, 100.)
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11. Cetrimonium chloride is also known as
cetyltrimethylammonium chloride. National Center for Biotechnology
Information, Cetrimonium Chloride, PubChem Compound Database,
https ://pubchem.nc bi .nlm.nih. gov/ compound/Hexadecy ltrimethy !ammonium
_chloride (last visited Feb. 5, 2019).
12. The Specification teaches that cationic surfactants suitable as
conditioning agents for the instant invention include cetyl trimethyl
ammonium chloride. (Spec. 40:26-30.)
13. Appellants do not dispute the Examiner's finding that
stearalkonium chloride is also a cationic surfactant. (Ans. 5.)
14. Nguyen teaches that "[c]onditioning agents may be chosen from
... polyquats." (Id. ,r 101.)
15. The Nguyen Declaration3 states that "isostearic acid and
dimethicone are not equivalent when mixed in aqueous solutions with
amodimethicone" in that the combination of dimethicone PEG-8 phosphate,
water, and amodimethicone resulted in "a homogeneous, free-flowing,
milky solution," while the combination of isostearic acid and
amodimethicone resulted in "a very viscous, semi-solid, white precipitate"
that remained "totally insoluble in ... water, even after prolonged mixing."
(Nguyen Deel. ,r,r 3--4, 6.)
16. The Nguyen Declaration states that "[i]t is surprising that
silicone phosphate and amodimethicone form a homogeneous, free flowing,
milky solution in water" because "amodimethicone is not itself water
soluble." (Id. ,r,r 3, 6.)
3 Declaration ofNghi Nguyen Pursuant to 37 CPR§ 1.132 (Feb. 12, 2015).
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17. Example 6 of the Specification compares the color retention on
dyed hair after shampooing with the following compositions and washing:
___________ Test--------------------------------------------, _______________________________________ ]
SHsense PE~100L â„¢ I 5% !
---------------------------------------------------------------------+-------------------- -- --- L•.~•'- __ .._ -~-·- --~
DC2:-8566TM I 10% !
-1
SLES-2 I 12% !
1-----------4------------------------ ........................... ~
D! Water I Q.S. '100% !
1--------•------------J,--················••n••••••••••••••••••"'{
Control 1 i
i --SLEs::2--------------------------------------------1 ·:r2oJ~------------------------
~~:.o .. 2 .............................. QS.100%······
! Silsense PE~100LTM 5 %
i SLES~2 12% .
-----------------------------------
01 Water Q.S. 100%
·'-'·'·'-'-··'"'-'·'-"··'-·"·····"'-"··"'-··········
Control 3 :
~~~~r,STM ==11~~= 100% d
(Spec. 62: 10-63: 10 (Example 6).) According to Appellants, DC2-8566â„¢ is
amodimethicone and Silsense PE- I OOLTM is dimethicone PEG-8 phosphate.
(Appeal Br. 12.) Further according to Appellants, SLES-2 is a "cleansing
surfactant," sodium lauryl ether sulfate-2. (Spec. 58:24; Appeal Br. 12.)
The %~L after 6 times of shampooing and washing with the above
compositions is reproduced below:
~ fes1~n,plEl i~~~ 1
~"Control 1----------------------------------------45. 1_0------
! Control 2 40.42
] __ Controt3 36.66
(Spec. 63:4--5.)
18. The Specification states:
The lower the %~L value, the darker the color of the hair.
Using an ANOVA statistical test, the %~L value for Test
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Application 13/814,963
shampoo was found to be significantly lower than %~L
value for the Control shampoos 1, 2, and 3. Therefore, the
disclosed composition, when present in the shampoo,
helped retain the color on the hair after shampooing and
washing.
(Id. at 63:6-10.)
Analysis
Unless othenvise noted, we adopt the Examiner's findings of fact and
reasoning regarding the scope and content of the prior art as they relate to
claim 75 (Final Act. 2-21; Ans. 2-6, 8-25; FFl-18) and agree with the
Examiner that claim 75 is obvious over Nguyen and Itte1. \Ve address
Appellants' arguments below.
Appellants contend that the Examiner's rejection selectively picks and
chooses specific ingredients from long lists of such ingredients taught by
Nguyen without providing any reason for the choices, and that the rejection
therefore is based on impermissible hindsight. (Appeal Br. 6-8, 14.)
\Ve are not persuaded. The predecessor to our reviewing court has
exp fained that "picking and choosing may be entirely proper in the making
of a 103, obviousness rejection." In re Arkley, 455 F.2d 586, 587 (CCPA
1972). As the Examiner points out, Nguyen teaches a composition for
coloring hair comprising at least one polyamine, at least one acid, at least
one water-soluble ingredient, at least one colorant, solvent, and optionally at
least one auxiliary ingredient. (Ans. 3-4; FFl .) Nguyen teaches that the
polyamine and acid may respectively be, among other things, the
arnodirnethicone and dimethicone PEG-8 phosphate recited in claim 7 5, in
an amount overlapping the claimed amounts. (Ans. 3----4; FF2----FF5.)
Nguyen teaches that the solvent in its composition is typically, among other
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things, water, in an amount overlapping the claimed amounts. (Ans. 3---4;
FF7, FF8.) Nguyen teaches that its composition may optionally contain one
or more auxiliary ingredients and that these ingredients may be, among other
things, stearalkonium chloride and cetrimonium chloride (i.e., conditioning
cationic surfactants as recited in claim 75), as well as polyquats. (Ans. 4;
FF9----FF 14.)
Based on the above, we find that Nguyen suggests the composition of
claim 75. The gravamen of Appellants' complaint appears to be that the
claimed composition is merely one of a large number of possible
compositions encompassed by Nguyen's disclosure. FI:owever, "disclos[ing]
a multitude of effective combinations does not render any particular
formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989). This is especially true where, as here, "the
claimed composition is used for the identical purpose taught by the prior
art." Id.
Appellants contend that "[t]he Examiner has not explained how she
accounts for the exclusion of a fatty acid."4 (Appeal Br. 8; see also Reply
4 Appellants also argue for the first time in the Reply Brief that the Examiner
has not articulated a reasoning for excluding mineral oil and isopropyl
palmitate, as required by claim 89. (Reply Br. 2.) As an initial matter,
Appellants have not persuasively explained why this argument could not
have been raised in the Appeal Brief. Thus, we find that the argument has
been waived. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI
2010) (informative) ( arguments and evidence not timely presented in the
Principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief). Moreover, as the Examiner explained,
mineral oil and isopropyl palmitate are included in Nguyen only as two
among many disclosed alternatives for one of the ingredients (i.e., the water
insoluble ingredient) of its composition. (Ans. 5, 12; Nguyen ,r,r 65-73.)
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Br. 2-----3.) \Ve are not persuaded. As the Examiner points out, while Nguyen
teaches that the at least one acid and the at least one water-insoluble
ingredient may be fatty acids (see, e.g., FF6), Nguyen teaches non-fatty acid
alternatives for the at least one acid and at least one water-insoluble
ingredient in its composition. (Ans. 5, 12; FF4, FF6.) Thus, Nguyen
teaches cosmetic compositions that do not include a fatty acid, as required
bv claim 75 .
.;
Appellants contend that the claimed subject matter exhibits
unexpected results. (Appeal Br. 9-13.) Appellants first rely on the Nguyen
Declaration, arguing that the experiments described in the declaration show
that "isostearic acid and dimethicone PEG-8 phosphate provide[] very
different results when mixed with amodimethicone" and that "the
combination of dimethicone PEG-8 phosphate and amodimethicone
provided surprising results" because the combination resulted in "a free-
flowing, homogeneous, milky solution" even though "amodimethicone is
not itself water soluble." (Id. at 9-10.)
We are not persuaded. As an initial matter, the comparative testing
used to show unexpected results "must be between the claimed invention
and the closest prior art." In re Fenn, 639 F.2d 762,765 (CCPA 1981). We
agree with the Examiner that the "inventive" composition tested in the
Nguyen Declaration is not the invention of claim 75, for instance because it
does not include a cationic surfactant or a polyquat. (Ans. 16.) We further
note that the "inventive" composition tested in the Nguyen Declaration
Because Nguyen does not require mineral oil or isopropyl palmitate in its
compositions, it suggests compositions that do not include mineral oil or
isopropyl palmitate, as required by claim 89.
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appears to contain over 30% and 15% by weight respectively of
amodimethicone and dimethicone PEG-8 phosphate, as well as only 50% by
weight of water, whereas the composition in claim 75 comprises only "up to
10 wt.%" of amodimethicone and dimethicone PEG-8 phosphate and also
requires at least 70 wt.% water. (Nguyen Deel. ,r 5.)
\Ve also agree with the Examiner that the comparison described in the
Nguyen Declaration was not to the closest prior art, i.e., the example
compositions comprising amodimethicone set forth in Nguyen's Tables 3-1
and 4-1. (Ans. 16.) Appellants contend that "it is proper to provide a
comparison that 'is more close1y related to the invention than the prior art
relied upon by the Examiner"' and cfaims that "the comparison in the
[Nguyen] Declaration is more closely related to what is claimed than the
compositions of Nguyen." (Appeal Br. 11 (citations omitted).) Appellants
provide no persuasive evidence, however, as to why the tested composition
is more closely related to the claimed composition than the composition of
Nguyen. 5 "Attorneys' argument is no substitute for evidence." Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
iv1oreover, "any superior property must be unexpected to be
considered evidence of non-obviousness. Thus, in order to properly evaluate
5 Appellants point out that claims 82 and 89 explicitly exclude mineral oil
and isopropyl palmitate, which are components included in Nguyen's
example compositions comprising amodimethicone. (Appeal Br. 11.)
Appellants contend that, therefore, the comparative composition used in the
experiment described in the Nguyen Declaration is at least more closely
related to the invention of those claims than the compositions in the Nguyen
prior art. (Id.) We are not persuaded that the Nguyen Declaration shows
that the compositions of claims 82 and 89 exhibit unexpected results, at least
because claims 82 and 89 also do not encompass the "inventive"
composition tested in the Nguyen Declaration.
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whether a superior property was unexpected, the [fact-finder] should have
considered what properties were expected." Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1371 (Fed. Cir. 2007). As the Examiner points out, Appellants
have provided no persuasive evidence that the better aqueous solubility of
dimethicone PEG-8 phosphate and amodimethicone, as compared to
isostearic acid and amodimethicone, is unexpected, given that dimethicone
PEG-8 phosphate is water soluble but isostearic acid is not (Ans. 16----17.)
Appellants point to a statement in the Nguyen Declaration that it is
surprising that the combination of dimethicone PEG-8 phosphate and
arnodirnethicone resulted in a "free-flowing, homogenous, milky solution"
because "amodimethicone is not itself water soluble." (Nguyen Deel. ,-r 3;
see also id. il 6.) Citing In re Zeidler, 682 F.2d 961 (CCPA 1982).
Appellants contend that "it is improper for examiners to substitute their own
opinion for those of an expert in the field." (Appeal Br. 11-----12.)
\Ve are not persuaded. While we do not substitute our own opinion
for those of an expert in the field,
[t]he Board has broad discretion as to the weight to give to
declarations offered in the course of prosecution. See Velander
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
('[A]ccord[ing] little weight to broad conclusory statements [in
expert testimony before the Board] that it determined were
unsupported by corroborating references [was] within the
discretion of the trier of fact to give each item of evidence such
weight as it feels appropriate.').
In reAmericanAcad. of Science Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004). In this case, we accord the Nguyen Declaration little weight because
it provides only a conclusory statement that the relative aqueous solubility of
the combination of amodimethicone and dimethicone PEG-8 phosphate is
surprising, without explaining why such relative solubility should be
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surprising given that dimethicone PEG-8 phosphate is water soluble even if
amodimethicone is not.
Appellants also argue that Example 6 of the Specification shows that
the composition of the invention "preserved hair co for to a much greater
extent that the control compositions (a statistically significant degree)" and
that "[t]his data shows the criticality of the combination of amodimethicone
with dimethicone PEG-8 phosphate." (Appeal Br. 13.) Appellants argue
that the example shows "a surprising result, i.e., a statistically significant
irnprovement in color retention" by the inventive composition. (Id.)
Example 6 in the Specification compares color retention on dyed hair
after shampooing and washing with (1) a test composition comprising 10%)
amodimethicone (DC2-8566â„¢), 51% dimethicone PEG-8 phosphate
(Silsense PE-lOOLâ„¢), 12% SLES-2 (sodium lauryl ether sulfate-2, a
cleansing surfactant), and water, and (2) controls that lacked either
amodimethicone (control 2), dimethicone PEG-8 phosphate (control 3), or
both (control 1). (FFl 7.) According to the Specification, the %~L was
7.29, 45.10, 40.42, and 36.66, respectively, for the test composition and
controls 1, 2, and 3, where a lower %~L value indicates darker hair (i.e.,
greater color retention). (FFl 7, FF18.)
We are not persuaded that Example 6 shows that the claimed subject
matter exhibits unexpected results. "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).
In this case, while the Specification generally states that "[i]t has been
surprisingly and unexpectedly found that the silicone based cosmetic
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compositions of the present disclosure provide cosmetic benefits to hair and
skin and can be used for beneficially coating, treating, protecting and/or
improving the condition and quality of hair and skin," there is no statement
in the Specification or other persuasive evidence that the greater color
retention specifically described in Example 6 is unexpected. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice."); Johnston,
885 F.2d at 1581 ("Attorneys' argument is no substitute for evidence.").
Moreover, as already discussed above, "[a]lthough it is well settled
that comparative test data showing an unexpected result will rebut a prima
facie case of obviousness, the comparative testing must be between the
claimed invention and the closest prior art." In re Fenn, 639 F.2d at 765.
We note that the test composition of Example 6, which consists of
amodimethicone, dimethicone PEG-8 phosphate, an anionic surfactant
(SLES-2), and water, is not the invention of claim 75, which requires both a
cationic surfactant as well as a polyquat. Likewise, Example 6 does not
compare the test composition to the closest prior art, i.e., the compositions
described in Nguy en comprising amodimethocone and another acid.
Finally, the experiment in Example 6 of the Specification is not
sufficient to establish the non-obviousness of the invention of claim 7 5
because it does not show unexpected results commensurate with the scope of
the claim. In re Dill, 604 F.2d 1356, 1361 (CCPA 1979) ("The evidence
presented to rebut a prima facie case of obviousness must be commensurate
in scope with the claims to which it pertains."). In this case, Experiment 6
tested only a single composition comprising 10% amodimethicone and 5%
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dimethicone PEG-8 phosphate, whereas claim 7 5 encompasses a much
broader range of amodimethicone and anionic silicone concentrations.
(FFl 7, FF18.) Neither have Appellants "provide[d] an adequate basis to
support the conclusion that other embodiments falling within the claim will
behave in the same manner" as the test composition of Example 6. In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
Accordingly, we affirm the Examiner's rejection of claim 75. Claims
76-79, 82, 84--86, and 89, which are not separately argued, fall with claim
75. 37 C.F.R. § 4I.37(c)(l)(iv).
II.
The Examiner has rejected claims 75-79, 82, 84--86, and 89 on the
ground of nonstatutory double patenting as being unpatentable over claims
1-11 of U.S. Patent No. 8,658,140 in view oflttel. Appellants' only
argument with respect to this rejection is that the' 140 patent is "less related
to what is claimed than Nguy en ... because [ the ' 140 patent] does not
provide any examples that actually include amodimethicone" and "[t]hus,
the instant rejection should be withdrawn for the same reasons the
obviousness rejection above over Nguyen should be withdrawn." (Appeal
Br. 14--15.) We are not persuaded by Appellants' arguments relating to
Nguy en for the reasons already discussed. 6
6 We note that in a double patenting rejection, "what is claimed, as opposed
to what is disclosed to one skilled in the art[, is] critical." In re Metoprolol
Succinate Patent Litigation, 494 F.3d 1011, 1018 (Fed. Cir. 2007).
However, Appellants have not advanced any substantive arguments that the
claims on appeal are "more than a 'slight variant' from the claims in the
[' 140 patent]." Eli Lilly & Co. v. Teva Pharms. USA, Inc., 619 F.3d 1329,
1341--42 (Fed. Cir. 2010) (emphasis added). Thus, these arguments are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015); see also Ex parte Borden
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SUMMARY
For the reasons above, we affirm the Examiner's decision rejecting
claims 7 5-79, 82, 84--86, and 89.
TIME PERIOD FOR RESPONSE
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
93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.").
16