Henkel AG & Co. KGaA

Patent Trials and Appeals BoardOct 30, 2020

2020002169 (P.T.A.B. Oct. 30, 2020)

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. 15/547,067 07/28/2017 Udo Erkens PT033079 (083.0347US) 1623 29906 7590 10/30/2020 LKGLOBAL 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 EXAMINER CONIGLIO, AUDREA JUNE BUCKLEY ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 10/30/2020 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): docketingteam@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UDO ERKENS and BURKHARD MUELLER ____________ Appeal 2020-002169 Application 15/547,067 Technology Center 1600 ____________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and MICHAEL A. VALEK, Administrative Patent Judges. VALEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving claims to an agent for lightening keratin fibers. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Henkel AG & Company, KGaA as the real party in interest. Appeal Br. 3. Herein, we refer to the Final Office Action mailed August 8, 2019 (“Final Act.”); Appellant’s Appeal Brief filed September 16, 2019 (“Appeal Br.”); Examiner’s Answer mailed December 17, 2019 (“Ans.”); and Appellant’s Reply Brief filed January 23, 2020 (“Reply Br.”). Appeal 2020-002169 Application 15/547,067 2 STATEMENT OF THE CASE “The present disclosure relates to agents for oxidative color change in the field of cosmetics, which are particularly designed for lightening keratin fibers, particularly human hair.” Spec. ¶ 2. According to the Specification, “the use of certain copolymers” as described in the present disclosure “improve[s] the properties of bleaching agents, in particular resistance to oil separation” as well as “[m]iscibility with dye-containing formulations.” Id. ¶¶ 15–16. Claims 1–8, 12, 14, 15, and 18–20 are on appeal and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is illustrative of the claims on appeal and reads as follows: 1. An agent for lightening keratin fibers, comprising – relative to the weight thereof – a) at least one ethyl cellulose, b) at least one oil component, c) at least one peroxydisulphate from the group of sodium peroxydisulphate and/or potassium peroxydisulphate and/or ammonium peroxydisulphate; and d) at least one fatty alcohol from the group arachyl alcohol (eicosan-1-ol), gadoleyl alcohol ((9Z)-eicos-9-ene-l-ol), arachidonic alcohol ((5Z,8Z, 11Z, l4Z)-eicosa-5,8,11,14- tetraenel-ol), heneicosyl alcohol (heneicosane-1-ol), behenyl alcohol (docosane-1-ol), erucyl alcohol ((13Z)-docos-13 - ene-1-ol) and brassidyl alcohol ((13E)-docosene-l-ol). Appeal Br. 11. The following rejections are before us for review: Appeal 2020-002169 Application 15/547,067 3 I. Claims 1, 4, 6–8, 15, 18, and 19 under 35 U.S.C. § 103 as obvious over Braun,2 Hoeffkes,3 and Yoshida4; II. Claims 2, 3, 12, 14, and 20 under 35 U.S.C. § 103 as obvious over Braun, Hoeffkes, Yoshida, and Ethocel5; and III. Claim 5 under 35 U.S.C. § 103 as obvious over Braun, Hoeffkes, Yoshida, and Narasimhan.6 Final Act. 5–8. All three rejections are premised on the same underlying combination of Braun, Hoeffkes, and Yoshida. Moreover, Appellant relies on the same arguments for independent claim 20 and the dependent claims that it does for claim 1. Appeal Br. 9–10. Accordingly, we analyze the rejections together, selecting claim 1 to be representative of the claims on appeal. See 37 C.F.R. § 41.37 (c)(1)(iv). The issue is whether the preponderance of the evidence supports Examiner’s conclusion that claim 1 is obvious over the cited prior art. Findings of Fact FF1. Braun teaches “[h]air bleach” compositions comprising an “organic lipophilic compound,” a “thickener,” and an “inorganic persalt.” Braun, Abstr., claim 1. 2 EP 1034777 A1, published Feb. 2, 2000 (English translation) (“Braun”). 3 US 2003/0012751 A1, published Jan. 16, 2003 (“Hoeffkes”). 4 US 7,166,136 B2, issued Jan. 23, 2007 (“Yoshida”). 5 Dow Cellulosics, Ethocel: Ethylcellulose Polymers Technical Handbook, 2005 (“Ethocel”). 6 US 6,703,004 B2, issued Mar. 9, 2004 (“Narasimhan”). Appeal 2020-002169 Application 15/547,067 4 FF2. Braun teaches that the thickener in its hair bleach compositions may be a cellulose polymer such as an “ethylcellulose[].” Braun 3/13. FF3. Braun teaches that the organic lipophilic compound in its hair bleach compositions may be, inter alia, a vegetable oil, silicone oil or “hydrophobic fatty acid ester such as” isopropyl palmitate. Braun 3/13. Appellant’s Specification describes the same oils and fatty acid esters as preferred examples of the “oil component” in Appellant’s claim 1. See Spec. ¶¶ 24–30. FF4. Braun teaches that the inorganic persalt in its hair bleach compositions may be “alkaline earth metal peroxides and inorganic persulfates such as ammonium persulfate and alkali metal persulfates such as sodium persulfate or potassium persulfate.” Braun 3/13, claim 8. FF5. Hoeffkes describes compositions “for blonding human hair.” Hoeffkes ¶ 2. Hoeffkes teaches that such compositions contain a “standard peroxo compound” such “ammonium peroxydisulfate, potassium peroxydisulfate, or sodium peroxydisulfate.” Id. ¶ 11. In addition, Hoeffkes teaches that such compositions may further include “thickeners, such as . . . cellulose derivatives, for example methyl cellulose” (id. ¶ 41), “fatty alcohols” (id. ¶ 50), and “oils and liquid waxes as care components” (id. ¶ 55). FF6. Yoshida teaches hair dye compositions comprising a “long- chain acyl sulfonic acid salt anionic surfactant” and an “aliphatic alcohol” such as “behenyl alcohol.” Yoshida Abstr.; 3: 1–3, 3:55–59. Yoshida teaches that a hair dye composition comprising these components “provides a smooth sensation upon use that has not yet been obtained from a conventional hair dye composition, and which exhibits excellent stability (in Appeal 2020-002169 Application 15/547,067 5 particular, viscosity stability) and excellent dyeability.” Id. at 4:23–27; see also 1:7–10 (teaching the composition “exhibits excellent stability and dyeability, which provides excellent sensation upon use (smoothness), and which can be easily rinsed off after use thereof”). Analysis Examiner finds Braun teaches hair bleach compositions comprising elements a)–c) of claim 1. Examiner determines that Yoshida teaches hair dye compositions comprising fatty alcohols such as behenyl alcohol. Examiner concludes it would have been obvious to one of ordinary skill in the art to include behenyl alcohol in addition to the other recited elements in order “to achieve a desirable balance of smoothness in the hair after rinsing and viscosity of the product at taught by Yoshida.” Final Act. 6. Examiner further determines that Hoeffkes “teaches similar formulations” for hair bleaching compositions “combining analogous components which may include cellulosic agents, oil components, and fatty alcohol components, thereby establishing a reasonable expectation of success from the combination of” Braun and Yoshida, as articulated above. Id. After considering the record and the arguments in the Appeal Brief, we adopt Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 4–8; FF1–FF6) and agree that the agent for lightening keratin fibers recited in claim 1 would have been obvious over Braun, Hoeffkes, and Yoshida. We address Appellant’s arguments below. Appellant argues “there is no motivation to combine Braun, Hoeffkes and Yoshida.” Appeal Br. 7–9. According to Appellant, the fatty alcohols recited in claim 1 “are present in the [claimed] bleaching agents as volumizers,” whereas Appeal 2020-002169 Application 15/547,067 6 the motivation to use the aliphatic alcohols of Yoshida is to form a gel with long-chain sulfonic acid salt anionic surfactants to form a highly stable gel that allows a high amount of hair dye aid to be added so that higher dyeability can be achieved. Braun and Hoeffkes do not utilize long-chain sulfonic acid salt anionic surfactants. Thus, one of skill in the art would not be motivated to combine Yoshida with Bran and/or Hoeffkes. Moreover, as a fundamental matter, unlike Yoshida' s invention, which is a hair dye, Braun, Hoeffkes, and Appellant's inventions are not hair dyes but rather are bleaching agents. Id. at 7–8. Appellant contends “one of skill in the art would not look to a reference teaching how to make a gel for a hair dye for instructions on how to make the lightening agents of the instant application.” Id. at 8. Appellant’s argument is unpersuasive for several reasons. First, as Examiner correctly observes (see Ans. 4), the fact that Yoshida teaches the addition of behenyl alcohol for a different purpose than Appellant’s Specification does not overcome the rejection. See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references be combined for the reasons contemplated by the inventor.”). Here, Examiner has articulated a sufficient rationale for why it would have been obvious to add behenyl alcohol to Braun’s hair bleach compositions, i.e., “to achieve a desirable balance of hair smoothing effects” (Ans. 4), and that rationale is supported by the record (see FF6). Second, Appellant’s argument that Yoshida teaches it is the combination of a long-chain sulfonic acid salt anionic surfactant and behenyl alcohol to form a gel, as opposed to the use of an aliphatic alcohol alone, that provides beneficial effects (see Appeal Br. 8) is unavailing because Appellant’s claims do not exclude the combination of those ingredients to Appeal 2020-002169 Application 15/547,067 7 form a gel. Claim 1 is a “comprising” claim and, therefore, does not exclude other ingredients, such as the anionic surfactants taught in Yoshida, in addition to those recited therein. Thus, even if the teachings in Yoshida were interpreted to require both an anionic surfactant and an aliphatic alcohol to achieve the beneficial effects described therein, the addition of both ingredients to Braun’s hair bleach composition would continue to read on claim 1.7 Finally, we disagree with Appellant’s assertion that one of ordinary skill in the art would not consider the teachings in Yoshida because they relate to hair dye as opposed to hair bleach. See Appeal Br. 8. The benefits Yoshida describes, e.g., “excellent sensation upon use (smoothness)” and easy rinse off after use, are applicable to both dyes and bleaches. FF6. Moreover, Appellant’s Specification explains that “[o]ften hair is not only to be lightened, but dyed at the same time. Bleaching pastes should therefore be readily miscible with mousse-like dyes. These colorants often contain direct dyes, so homogenous mixing is essential for a uniform dyeing and lightening result.” Spec. ¶ 8. Thus, Appellant’s argument that a skilled artisan would not consider teachings regarding hair dye ingredients to be relevant to those in hair bleach is undermined by Appellant’s own statements in the Specification. For these reasons, we conclude that the preponderance of the evidence supports Examiner’s rejection of claim 1. We determine that Examiner’s 7 We further note that Hoeffkes describes anionic surfactants, including anionic surfactants similar to those taught in Yoshida, as ingredients in hair bleach compositions. See Hoeffkes ¶ 29. Appeal 2020-002169 Application 15/547,067 8 rejections of the other claims are supported by a preponderance of the evidence for the same reasons as claim 1. Thus, we affirm. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 6–8, 15, 18, 19 103 Braun, Hoeffkes, Yoshida 1, 4, 6–8, 15, 18, 19 2, 3, 12, 14, 20 103 Braun, Hoeffkes, Yoshida, Ethocel 2, 3, 12, 14, 20 5 103 Braun, Hoeffkes, Yoshida, Narasimhan 5 Overall Outcome 1–8, 12, 14, 15, 18–20 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