Ex Parte Wood et al

Patent Trial and Appeal Board

Nov 9, 2018

13124064 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/124,064 04/13/2011
27387 7590 11/13/2018
LONDA, BRUCE S.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD A VE, 8TH FLOOR
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Jonathan Wood
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.
101216-151 3493
EXAMINER
GOTFREDSON,GAREN
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
11/13/2018 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 JONATHAN WOOD, ALEXANDRA MEUSER, and
MUSTAFA GRIT 1
Appeal2017-005552
Application 13/124,064
Technology Center 1600
Before JEFFREY N. FREDMAN, TA WEN CHANG, and
TIMOTHY G. MAJORS, 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
composition for the permanent shaping of human hair, which have been
rejected as obvious and on the ground of nonstatutory obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as KAO GERMANY GMBH.
(Appeal Br. 2.)
Appeal2017-005552
Application 13/124,064
STATEMENT OF THE CASE
In permanent waving of hair, cysteine disulfide bonds in hair are first
split by a reducing agent, such as thioglycolic acid, and then restored by
application of an oxidizing agent. (Spec. 1.) According to the Specification,
'[i]t has surprisingly been found ... that a permanent
shaping composition for hair based on at least one
reducing agent further comprising an aqueous emulsion of
a high viscosity silicone copolymer and at least one alkyl
ether or ester or amine alky 1 amine or quaternary
ammonium compound shows excellent waving effect and
further hair feels natural upon touching and excellent
shine, elasticity and bounce.
(Id. at 2.)
Claims 1, 4--10, 16, and 18-23 are on appeal. Claim 1 is illustrative
and reproduced below:
1. A composition for the permanent shaping of human hair,
wherein the composition comprises:
at least one reducing agent selected from the group
consisting of thioglycolic acid, its salt, thiolactic acid, its salt,
cystein and acetylcystein;
an aqueous emulsion of divinyldimethicone/ dimethicone
copolymer with an internal phase viscosity of more than 1 x 108
mm2/s measured at 0.01 Hz and at about 25°C; and
a compound selected from the group consisting of
stearamidopropyl dimethyl amine, stearamidopropyl trimonium
chloride, stearoxypropyl trimonium chloride and
palmitamidopropyl trimonium chloride
wherein the composition has a pH in a range from 8.0 to
10.5, and
further wherein the composition comprises the at least
one reducing agent at a concentration from 0.5 to 15 % by
weight, the aqueous emulsion at a concentration from 0.1 to
2.5 % by weight and the compound at a concentration from 0.1
to 2.5 % by weight, wherein all concentration values are
calculated to the total composition.
2
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Application 13/124,064
(Appeal Br. 25 (Claims App., formatting added).)
The Examiner rejects claims 1, 4--7, 9, 10, 16, 18, 20-23 under 35
U.S.C. § I03(a) as being unpatentable over Cassier, 2 Decoster, 3 Zofchak, 4
and Torgerson. 5 (Final Act. 3.)6
The Examiner rejects claim 8 under 35 U.S.C. § I03(a) as being
unpatentable over Cassier, Decoster, Zofchak, Torgerson, and Wood. 7
(Final Act. 6-7.)
The Examiner rejects claim 19 under 35 U.S.C. § I03(a) as being
unpatentable over Cassier, Decoster, Zofchak, Torgerson, and Lennon. 8
(Final Act. 8.)
2 Cassier, EP 1 880 709 Al, published Jan. 23, 2008.
3 Decoster et al., US 6,451,298 B 1, issued Sep. 17, 2002.
4 Zofchak et al., US 7,101,954 B2, issued Sep. 5, 2006.
5 Torgerson, US 2006/0083704 Al, published Apr. 20, 2006.
6 The Examiner and Appellants state, in the Answer and Appeal Brief
respectively, that the Examiner rejects claims 1-7, 9-11, 16, 18, 20, and 21
over Cassier, Decoster, Zofchak, and Torgerson. (Ans. 2; Appeal Br. 5.)
However, claims 2, 3, and 11 have been cancelled. (Appeal Br. 2.) Claim
17, which the Examiner rejected as obvious over Cassier, Decoster, Zofchak,
Torgerson, and Rollat in the Final Action, has also been cancelled. (Final
Act. 7; Appeal Br. 2.) In addition, claims 22 and 23 were added in the April
11, 2016 Amendment after Final Rejection, and the Examiner entered the
Amendment in the May 17, 2016 Advisory Action. (Appeal Br. 2-3.) The
Examiner stated that "[t]he newly added claims ... are rendered obvious by
the prior art for the reasons discussed in the Final Rejection"; thus, we
understand that claims 22 and 23 are also rejected as obvious over Cassier,
Decoster, Zofchak, and Torgerson and on the grounds of nonstatutory
obviousness-type double patenting over U.S. Patent Nos. 7,850,953,
8,361,447, 8,542,208, 8,524,209, and Application Nos. 13/128,055,
12/145,206, 13/124,028, and 13/124,053, in view ofCassier, Zofchak,
Rollat, Torgerson, and/or Decoster.
7 Wood et al., EP 1 797 861 Al, published June 20, 2007.
8 Lennon et al., US 2003/0171479 Al, published Sep. 11, 2003.
3
Appeal2017-005552
Application 13/124,064
The Examiner rejects claims 1, 4--10, 16, and 21-23 on the ground of
nonstatutory obviousness-type double patenting over the claims of U.S.
Patent No. 7,850,953 in view of Cassier, Zofchak, Rollat, 9 Torgerson, and/or
Decoster. (Final Act. 12.) 10
The Examiner rejects claims 1, 4--10, 16, and 21-23 on the ground of
nonstatutory obviousness-type double patenting over claims 1-15 of U.S.
Patent No. 8,361,447 in view of Cassier, Zofchak, Rollat, Torgerson, and/or
Decoster. (Final Act. 14.)
The Examiner rejects claims 1, 4--10, 16, and 21-23 on the ground of
nonstatutory obviousness-type double patenting over the claims of U.S.
Patent No. 8,542,208 in view of Cassier, Zofchak, Rollat, Torgerson, and/or
Decoster. (Final Act. 15.)
The Examiner rejects claims 1, 4--10, 16, and 21-23 on the ground of
nonstatutory obviousness-type double patenting over the claims of U.S.
Patent No. 8,524,209 in view of Cassier, Zofchak, Rollat, Torgerson, and/or
Decoster. (Final Act. 17.)
The Examiner rejects claims 1, 4--10, 16, and 21-23 on the ground of
nonstatutory obviousness-type double patenting over the claims of U.S.
Patent No. 9,750,679 in view of Cassier, Zofchak, Rollat, Torgerson, and/or
Decoster. 11 (Final Act. 18.)
9 Rollat et al., US 2003/0147834 Al, Aug. 7, 2003.
10 Appellants state in the Appeal Brief that the Examiner rejects claims 1-11,
16, 1 7, and 21 on the grounds of nonstatutory obviousness-type double
patenting over various patents and applications, in view of Cassier, Zofchak,
Rollat, Torgerson, and/or Decoster. (Appeal Br. 17-23.) However, claims
2, 3, 11, and 17 have been cancelled. (Appeal Br. 2.)
11 The Examiner entered a provisional rejection based on Application No.
12/145,206, but that application has issued as the '679 patent, so the
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Application 13/124,064
DISCUSSION
Issue
The same issue is dispositive of all of the rejections on appeal. We
therefore discuss all the rejections together.
As to claim 1, the Examiner finds that Cassier teaches all of the
limitations of the claim, except that Cassier does not teach a composition
comprising "an aqueous emulsion of divinyldimethicone/dimethicone
copolymer with an internal phase viscosity of more than 1 x 108 mm2/s
measured at 0.01 Hz and at about 25QC," as recited in claim 1. 12 (Final Act.
3-5.) The Examiner finds that Cassier also teaches that its composition may
comprise a cationic polymer. (Id. at 3.)
The Examiner finds that Decoster discloses "compositions for the
permanent waving of hair that comprise Down Coming DC-1997 ( an
'aqueous emulsion of divinuldimethicone/dimethicone copolymer')" and
teaches that "[u]se of the emulsion ... overcome[s] disadvantages caused by
the presence of a cationic polymer in hair care compositions, such as an
rejection is no longer provisional. In the Final Action, the Examiner also
provisionally rejects claims 1, 4--10, 16, and 21-23 on the ground of
nonstatutory obviousness-type double patenting over the claims of
Application Nos. 13/128,055, 13/124,028, and 13/124,053 in view of
Cassier, Zofchak, Rollat, Torgerson, and/or Decoster. (Final Act. 18.)
These applications have been abandoned. We therefore vacate the
provisional double patenting rejections over these three applications as
moot.
12 In the Final Action, the Examiner also finds that Cassier does not
explicitly teach a cationic surfactant "within the scope of the formula recited
by[] claim 1, such as stearamidopropyl methylamine." (Final Act. 4.)
However, as discussed below, the limitation referred to by the Examiner in
this statement is no longer present in the version of claim 1 currently on
appeal. See infra n. 13.
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Application 13/124,064
unpleasant laden feel, stiffening of hair, and interfiber adhesion." (Id. at 5.)
The Examiner also finds that Torgerson discloses "hair conditioning
compositions comprising high internal phase viscosity silicone copolymer
emulsions," which "may be used in the amount of 0.1 % to about 15%," and
discloses an embodiment comprising an aqueous emulsion of
divinuldimethicone/dimethicone copolymer having viscosity recited in claim
1. (Id.) The Examiner finds that Torgerson teaches that use of such
emulsion provides benefits such as "smooth feel and reduced friction to ...
hair" and "a slippery and slick feel on wet hair." (Id.)
The Examiner concludes that
it would have been prima facie obvious to one of ordinary
skill in the art at the time of the invention to modify the
composition of Cassier by . . . incorporating a nonionic
aqueous emulsion of HMW-2220
divinyldimethicone/ dimethicone copolymer as disclosed
by Torgerson and in an amount within the range [ of from
0.1 to 2.5% or from 0.01 to 0.45% by weight], ... , since
Torgerson discloses that a
divinyldimethicone/ dimethicone copolymer emulsion
such as HMW-2220 in amounts within the claimed range
imparts benefits to a hair care composition . . . and
Decoster teaches that divinyldimethicone/ dimethicone
copolymer emulsions can be generated using nonionic
surfactants.
(Id. at 6.)
Appellants do not dispute that the Examiner has established a prima
facie case of obviousness; however, Appellants contend that the prima facie
case of obviousness is rebutted by evidence of unexpected results as set forth
in the Declaration of Jonathan Wood under 37 C.F.R. § 1.132 (Oct. 29,
2015) ("Wood Declaration").
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Application 13/124,064
The issue with respect to this rejection is whether the Wood
Declaration sets forth evidence of unexpected results that, when taken
together with the evidence of obviousness, shows the claims to be non-
obvious.
Analysis
Except as otherwise noted, we adopt the Examiner's findings of fact
and reasoning regarding the scope and content of the prior art with respect to
claim 1 (Final Act. 3-6, 9-11, 12-19; Advisory Act. 2; Ans. 2-7, 8.) and
agree that claim 1 is obvious over Cassier, Decoster, and Togerson. 13 Only
those arguments made by Appellants in the briefs have been considered;
arguments not presented in the briefs are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
As discussed above, Appellants contend that the Examiner erred by
maintaining the rejection of claim 1 as obvious over Cassier, Decoster,
13 In the Final Action, the Examiner cites Zofchak only for its disclosure of
stearamidopropyl methylamine as a surfactant in hair care compositions.
(Final Act. 6.) In the April 11, 2016 Amendment after Final Rejection,
Appellants amended claim 1 such that the claimed composition comprises "a
compound selected from the group consisting of stearamidopropyl dimethyl
amine, stearamidopropyl trimonium chloride, stearoxypropyl trimonium
chloride and palmitamidopropyl trimonium chloride." The Examiner
entered the Amendment in the May 17, 2016 Advisory Action. Because the
stearamidopropyl methylamine disclosed in Zofchak is not recited in claim 1
as amended, we do not adopt the Examiner's reasoning regarding Zofchak
with respect to the rejection of claim 1. Because Cassier teaches a
composition for the permanent shaping of human hair comprising
stearamidopropyl dimethylamine, one of the compounds recited in claim 1
as amended, we nevertheless agree with the Examiner that claim 1 is
obvious over the combination of Cassier, Decoster, and Togerson. See
generally In re Bush, 296 F .2d 491, 496 (CCP A 1961) (the Board may rely
on less than all of the references relied upon by Examiner).
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Application 13/124,064
Zofchak, and Togerson, in view of the Wood Declaration showing that the
claimed composition achieves surprising and unexpected superior results.
The Wood Declaration describes an experiment in which the
composition of Working Example 1 in the Specification ("Inventive
Composition" 14) and a Comparative Composition were applied to "hair
streaks having a length of 13 cm." (Wood Deel. 2.) The Comparative
Composition "was prepared by excluding the 0.5% Dow Coming HMW
2220 (i.e., a divinyldimethicone/dimethicone copolymer as recited in claim
1 ). (Id.) The Wood Declaration states that, after the compositions were
applied to hair streaks on curlers with a 4.5 cm diameter, the hair streaks
were processed for 20 minutes, rinsed off with water, and treated with an
oxidizing composition. (Id.) The Wood Declaration reports that the length
of the hair permanently shaped with the Inventive Composition was 8.5 cm
and that the length of the hair treated in the same way with the Comparative
Composition was 9.1 cm, resulting in a curl retention loss of 47.1 and 54.1 %
respectively. (Id. at 3.)
The Wood Declaration does not persuade us that the subject matter of
claim 1 exhibits unexpected results that outweigh the evidence of
obviousness. In this regard, we note that "[ m Jere improvement in properties
does not always suffice to show unexpected results." In re Soni, 54 F.3d
746, 751 (Fed. Cir. 1995). Rather, unexpected results may be established
14 Example 1 of the Specification describes a composition consisting of
21.3% by weight ammonium thioglycolate (60%), 5.0% by weight
ammonium hydrogen carbonate, 3% by weight 1, 3-butylene [glycol], 0.5%
by weight Dow Coming HMW 2220, 0.5% by weight stearamidopropyl
dimethyl amine, 0.7% by weight PEG-40-Hydrogenated castor oil, 0.4% by
weight perfume, ammonia (25%) to reach pH 8.3, and water to reach
100.0% weight.
8
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Application 13/124,064
where, in the absence of evidence to the contrary, "an applicant
demonstrates substantially improved results
were unexpected." Id.
... and states that the results
Appellants contend that "[a] 13% curl retention loss improvement
achieved by the Inventive Composition is both unexpected and significant."
(Reply Br. 2.) However, as the Examiner points out, the Wood Declaration
provides no indication that any alleged superior performance is statistically
significant. (Ans. 3.) Neither are we persuaded by Appellants' contention
that, "[b ]ased on the fact that multiple hair streaks were used while testing
both Compositions, Appellants submit that the superior and unexpected
improved result is both reproducible and statistically significant." (Reply
Br. 3.) Assuming for argument's sake that the alleged 13% curl retention
loss improvement is the improvement averaged from multiple samples,
Appellants still fail to provide information regarding, for instance, the
number of samples tested, the curl retention loss for individual samples,
and/or any indication of statistical significance such asp-value or standard
deviation.
As our reviewing court has explained,
[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, in light of the paucity of underlying data and the lack of
statistical analysis provided in the Wood Declaration, we accord little weight
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Application 13/124,064
to the declaration and find it insufficient to establish that the subject matter
of claim 1 exhibits unexpected results.
We note also that "[i]t is well established that the objective evidence
of nonobviousness must be commensurate in scope with the claims." In re
Lindner, 457 F .2d 506, 508 (CCP A 1972). As the Examiner points out in
the Advisory Action, the data Appellants provided as evidence of
unexpected results is not commensurate with the scope of claim 1.
(Advisory Act. 2.) More specifically, the Wood Declaration provided
comparative data only for a single "Inventive Composition" comprising
21.3% by weight ammonium thioglycolate (60%) (i.e., reducing agent),
0.5% by weight Dow Coming HMW 2220 (i.e., aqueous emulsion of
divinyldimethicone/dimethicone copolymer), and 0.5% by weight
staramidopropy dimethyl amine, even though claim 1 encompasses
compositions comprising reducing agent from 0.5 to 15% by weight, an
aqueous emulsion from 0.1 to 2.5% by weight, and compounds such as
stearamidopropyl dimethyl amine from 0.1 to 2.5% by weight.
Appellants argue in the Appeal Brief that "the present pending claim 1
is commensurate in scope with the Experiment's Inventive Composition of
the [Wood] Declaration." (Appeal Br. 11.) We are not persuaded, however,
because Appellants fail to provide an adequate basis for reasonably
concluding that the breadth of compositions encompassed by claim 1 would
behave in the same manner as the single tested "Inventive Composition."
Lindner, 457 F.2d at 508 (explaining that "mere lawyers' arguments
unsupported by factual evidence are insufficient to establish unexpected
results").
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Application 13/124,064
Finally, in light of the deficiencies discussed above, we also agree
with the Examiner that, even were we to find in the Wood Declaration some
evidence of unexpected results, such evidence does not persuade us to
conclude that the claim is nonobvious when considered with the evidence of
obviousness. (Ans. 4--7.)
Appellants contend in response that "the present rejection does not lay
out a strong prima facie case of obviousness as alleged by the Examiner,"
because "the [E]xaminer had to piece together four (4) different prior art
references to allegedly find the subject matter of claim 1 obvious." (Reply
Br. 3.) We are not persuaded. Reliance upon even a large number of
references does not, without more, weight against a holding of obviousness.
In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
Accordingly, we affirm the Examiner's rejection of claim 1. Claims
4--7, 9, 10, 16, 18, 20-23, which are not separately argued, fall with claim
1. 15 37 C.F.R. § 4I.37(c)(l)(iv). Appellants argue that the rejections of
15 With respect to claims 4--7, 9, 10, 16, 18, and 20-23, Appellants only state
that the claims depend directly or indirectly from claim 1, recite the
additional dependent claim limitations, and state that the claims are "further
commensurate in scope with the Experiment's Inventive Composition of the
Declaration which achieved surprisingly synergistic and unexpected superior
results rebutting any alleged prima facie case of obviousness raised by the
Examiner." (Appeal Br. 11-15.) Such conclusory statements do not
constitute proper separate argument of the dependent claims. Cf In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he 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."). Moreover,
even assuming Appellants have properly argued the claims separately,
Appellants' arguments that the dependent claims are "further commensurate
in scope with the Experiment's Inventive Composition of the [Wood]
Declaration" are unavailing. First, as discussed above, we find Appellants
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Application 13/124,064
claims 8 and 9 over Cassier, Decoster, Zofchak, Togerson, and, respectively,
Wood or Lennon, as well as all of the double patenting rejections, should be
reversed for the same reasons set forth above with respect to claim 1 and
because the dependent claims are "further commensurate in scope with the
... Inventive Composition of the [Wood] Declaration]." (Appeal Br. 15-
23.) We are not persuaded for the reasons already discussed above.
SUMMARY
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 4--7, 9, 10, 16, 18, 20-23.
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
have not established unexpected results even as to the tested "Inventive
Composition." Second, with the possible exception of claims 22 and 23, the
dependent claims are not limited to compositions comprising reducing agent,
aqueous emulsion, and compounds such as stearamidopropyl dimethyl
amine in concentrations similar to those in the tested "Inventive
Composition." Thus, the alleged unexpected results are not commensurate
in scope even as to those dependent claims.
12