Ex Parte Shao et al

Patent Trial and Appeal BoardMar 8, 2019

13391594 (P.T.A.B. Mar. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/391,594 02/21/2012 23909 7590 03/12/2019 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Yun Shao 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. T8810-0l-US-Ol-PC 4652 EXAMINER YU,HONG ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 03/12/2019 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): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUN SHAO, DAVID SCHLOSSMAN, NERINGA KONTRIMIENE, and ARIEL HASKEL Appeal2018-004626 Application 13/391,594 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ, Administrative Patent Judges. WISZ, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 seek review of claims 1, 3---6, 8-14, 17, and 18. We have jurisdiction under 35 U.S.C. Â§ 6(b). For the reasons set forth below, we AFFIRM. STATEMENT OF THE CASE The Specification describes a composition comprising a pigment particle that is coated with a cationic material and isopropyl titanium triisostearate. Spec. ,r 4. Claim 1, the only independent claim, is illustrative: 1 Appellants identify the Real Parties in Interest as Colgate-Palmolive Company and Kobo Products, Inc. App. Br. 3. Appeal2018-004626 Application 13/391,594 1. A composition comprising a pigment particle that is pre- coated with a cationic polymer and isopropyl titanium triisostearate, wherein an amount of isopropyl titanium triisostearate on the total weight of the pigment particle is 0.1 to 5 weight%, and wherein an amount of cationic polymer on the total weight of the pigment particle is 0.1 to 10 weight %; wherein the composition is a body wash; and wherein the cationic polymer is Polyquatemium-67. The Examiner rejected claims 1, 3---6, 8-14, 17, and 18 under 35 U.S.C. Â§ I03(a) as being obvious over Colaco et al. 2 in view of Hoffman et al.3 The Examiner provisionally rejected claims 1, 3---6, 8-14, 17, and 18 on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 13/391,590. ISSUES AND ANALYSIS We affirm the Examiner's obviousness rejection. We do not address the provisional nonstatutory double patenting rejection. We address the arguments raised by Appellants below. Obviousness The Examiner finds that Colaco teaches a composition for depositing a benefiting agent such as pigment onto a keratin-containing substrate, including skin and hair. Final Act. 7. The Examiner further finds that Colaco discloses that the pigment may be coated with up to about 5% by weight of a lipophilic compound such as isopropyl titanium triisostearate and with up to 14.3% by weight of a cationic polymer such as 2 Colaco et al., US 2009/0013418 Al, published Jan. 15, 2009 ("Colaco"). 3 Hoffman et al., US 2009/0258807 Al, published Oct. 15, 2009 ("Hoffman"). 2 Appeal2018-004626 Application 13/391,594 Polyquatemium-7 ("PQ-7"). See id. at 7-9. Although the use of Polyquatemium-67 ("PQ-67") as a cationic polymer is not disclosed in Colaco, the Examiner finds that this limitation is disclosed in Hoffman, which teaches a hair cleansing composition with shear thickening property. See id. at 9. The Examiner concludes that it would have been obvious at the time of the invention for a person of ordinary skill in the art to replace PQ-7 in the composition taught by Colaco with PQ-67 as taught by Hoffman since PQ-7 and PQ-67 were known interchangeable cationic polymers that could be used in hair cleansing compositions. See id. at 9-10. Appellants do not contest the above-referenced factual findings of the Examiner. Appellants' main argument is that the present claims are directed to a body wash and Colaco is "primarily directed to deposition of benefit agents on hair." App. Br. 6. The Examiner responds that Colaco teaches a composition for depositing a benefiting agent, such as a pigment, onto a keratin-containing substrate, including skin, and teaches a body wash at paragraph 27. Ans. 2. The Examiner also finds that the intended use of the claimed composition as a body wash does not patentably distinguish the composition. Final Act. 8. Appellants respond that the "body wash" limitation is a structural limitation that "serves to eliminate from the scope of the claims any component that is incompatible with body wash, regardless of where it may be reported in the literature." App. Br. 7. Appellants also assert that shampoos and body washes are formulated differently by citing to the O'Lenick4 reference. See id. at 7-8. 4 Anthony J. O'Lenick & Fenbao Zhang, Comparatively Speaking: Shampoo vs. Body Wash Formulation, Cosmetics & Toiletries Science Applied (Oct. 2012). 3 Appeal2018-004626 Application 13/391,594 We are not persuaded by Appellants' arguments. First, Colaco discloses that the compositions disclosed therein can be used on skin (Colaco ,r,r 1, 18, 31, 35, 36) and states the following: The quaternary ammonium compounds useful in the compositions and methods of this invention should be capable of complexing with anionic compounds that can be benefit agents in order to adhere to keratin-containing substrates such as hair. Examples of such anionic compounds include acrylates, sulfates, sulfonates, sufosuccinate, phosphate and phosphonates and the like. Such anionic compounds may be present in the form of surfactants, polymers, salts, acids, bases AND THE LIKE. They can be useful as coloring agents, conditioners, shampoos, body cleansers and other soap-like products. Colaco ,r 27 (emphasis added). Second, the "body wash" limitation of claim 1 merely states an intended use for the claimed composition. ''An [] intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Appellants do not identify any necessary structural differences between the composition of Colaco and the claimed composition. "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Furthermore, even if shampoos and body washes may be formulated differently, it is well established that the "patentability of a claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious." In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969). 4 Appeal2018-004626 Application 13/391,594 Appellants also argue that "to the extent that Colaco utilizes body cleansing compounds at all, it does so not in a manner to function as a body cleaning composition, but to effect retention of the body cleaning compounds on the skin or hair" which is in direct contrast to the present invention. App. Br. 9. We agree with the Examiner that a formulation can be a body cleanser and cause the retention of the benefit agent/pigment on the skin. Ans. 4. We also agree that this concept is disclosed in the Specification of the pending application, which states, "[t]he problem with using a cleansing composition is that the composition performs its function of cleaning by removing oil and dirt from skin. To be effective, the pigment needs to be modified to adhere to skin to avoid being washed away by the cleansing composition." Spec. ,r 2. Appellants also argue that the deficiencies of Colaco are not cured by Hoffman, which discloses a cleansing compound for hair - not a body wash. App. Br. 9. We agree with the Examiner in finding this argument unpersuasive because, as discussed above, Colaco teaches a body wash; therefore, this limitation does not need to be taught by Hoffman. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art" In re Keller, 642 F.2d 413, 425 (CCPA 1981 ). With respect to claims 4, 6, 11, and 14, Appellants argue that "Colaco does not disclose a composition comprising mica/titanium dioxide, but 5 Appeal2018-004626 Application 13/391,594 rather discloses a composition comprising 'a particulate benefit agent', where the benefit agent can be mica or titanium dioxide." App. Br. 10. The Examiner finds that Colaco teaches that the pigment particles can be an admixture of pigments and claims both mica and Ti02 as pigment particles in claim 9. Ans. 6. The Examiner concludes that, absent some demonstration of an unexpected result, it would have been obvious to one of ordinary skill in the art to pick any individual pigment in claim 9 and come up with a mixture of mica/titanium dioxide. See id. We agree with the Examiner that it would have been obvious for one of skill in the art to combine these two pigments and Appellants have not shown any unexpected results with regard to the use of mica/titanium dioxide as a pigment. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose."). For the reasons described herein and those already of record, we sustain the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over Colaco in view of Hoffman. We also sustain the Examiner's rejection of claims 4, 6, 11, and 14. Claims 3, 5-6, 8-10, 12-13, 17, and 18 are not argued separately, and fall with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Provisional Nonstatutory Double Patenting We decline to reach this undisputed provisional rejection. See In re Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010) (precedential). The rejection 6 Appeal2018-004626 Application 13/391,594 is provisional and Application No. 13/391,590 remains copending and not allowed; accordingly, the issues are not ripe for decision. CONCLUSION We affirm the Examiner's rejection of claims 1, 3---6, 8-14, 17, and 18. 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 )(iv). AFFIRMED 7