L'OREALDownload PDFPatent Trials and Appeals BoardDec 15, 20212021001510 (P.T.A.B. Dec. 15, 2021) Copy Citation 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. 14/764,751 07/30/2015 Virginie BURCKBUCHLER 4000-562US 8318 61275 7590 12/15/2021 The Marbury Law Group, PLLC 11800 Sunrise Valley Drive 15th Floor Reston, VA 20191 EXAMINER FRAZIER, BARBARA S ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 12/15/2021 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): ptonotices@marburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte VIRGINIE BURCKBUCHLER __________ Appeal 2021-001510 Application 14/764,751 Technology Center 1600 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and RACHEL H. TOWNSEND, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a hair straightening composition. The Examiner rejected the claims as obvious. 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. Appellant identifies the Real Party in Interest as L’OREAL (see Appeal Br. 2). We have considered the Specification of July 30, 2015 (“Spec.”); Non-Final Office Action of Oct. 1, 2019 (“Non-Final Action”); Appeal Brief of Aug. 20, 2020 (“Appeal Br.”); Examiner’s Answer of Oct. 27, 2020 (“Ans.”); and Reply Brief of Dec. 22, 2020 (“Reply Br.”). Appeal 2021-001510 Application 14/764,751 2 Statement of the Case Background “Many people are dissatisfied with the appearance of their hair; in particular, people who have curly hair . . . usually wish to acquire straight hair” (Spec. 1:7–9). One technique involves “using a composition containing a suitable reducing agent” followed by “an oxidizing composition . . . so as finally to give the hair the desired shape” (id. at 1:14–19). But this technique “degrades the hair fibers, which is mainly due to the high contents of reducing agents used” (id. at 2:3–4). Another technique is “lanthionization, using a composition containing a base belonging to the hydroxide family” (id. at 2:25–26). “However, the hydroxides employed during this process have the major drawback of being caustic. This causticity affects the scalp by causing irritation which is sometimes severe, and can also affect the condition of the hair” (id. at 3:1516). The Claims Claims 13–18, 20, and 24–29 are on appeal. Claim 13 is an independent claim, is representative and reads as follows: 13. A hair straightening composition comprising, in a physiologically acceptable aqueous medium: a dicarboxylic acid chosen from maleic acid, malic acid, itaconic acid, oxalic acid, malonic acid, oxomalonic acid, fumaric acid, succinic acid, tartaric acid, adipic acid, glutaric acid, α-ketoglutaric acid, or galactaric acid, salts thereof, or mixtures thereof, wherein the dicarboxylic acid is present in an amount ranging from about 0.5% to about 10% by weight, relative to the total weight of the hair straightening composition, and a plant oil of triglyceride type, chosen from avocado oil, olive oil, or coriander oil, wherein the plant oil is present in an Appeal 2021-001510 Application 14/764,751 3 amount ranging from about 5% to about 30% by weight, relative to the total weight of the hair straightening composition, wherein the hair straightening composition is substantially free of reducing agents, and wherein the hair straightening composition has a pH ranging from about 7 to about 11. The Rejection The Examiner rejected claims 13–18, 20, and 24–29 under 35 U.S.C. § 103(a) as obvious over Dixon,2 Makino,3 Elliott4 and Cabourg5 (Ans. 3–6). The Examiner finds “Dixon teaches a process for relaxing or straightening hair, using weak dicarboxylic acids with heat” and a “preferred weak acid is maleic acid” with “a pH from 8 to 11” and “at least one adjuvant, such as natural oils” (Ans. 3). The Examiner finds Dixon “does not require any reducing agents” (id. at 4). The Examiner acknowledges that “Dixon does not specifically teach the presence of a plant oil of triglyceride type, such as avocado oil” (Ans. 4). The Examiner finds that Makino teaches “in compositions for straightening curly hair . . . suitable oils include avocado oil in amounts from 0.5-10%”; that Elliott teaches in “compositions for straightening hair . . . preferred fatty esters include avocado oil in amounts from 0.1 to 10%”; and that Cabourg teaches in “hair straightening compositions . . . suitable fatty substances include avocado oil in amounts of 0.1-30%” (Ans. 4). 2 Dixon et al., WO 2010/049434 A2, published May 6, 2010. 3 Makino, Y., US 2006/0222618 A1, published Oct. 5, 2006. 4 Elliott et al., US 2008/0019938 A1, published Jan. 24, 2008. 5 Cabourg et al., WO 2012/164065 A2, published Dec. 6, 2012. Appeal 2021-001510 Application 14/764,751 4 The Examiner finds that it would have been obvious “to include avocado oil in the composition of Dixon in amounts recited” because “avocado oil in said amounts is already known to be suitable in hair strengthening compositions” and it is obvious to combine “known ingredients for the same known purpose, with a reasonable expectation of success” (Ans. 4–5). The issues with respect to this rejection are: (i) Does a preponderance of the evidence of record support the Examiner’s conclusion that the prior art renders the claims obvious? (ii) If so, has Appellant provided evidence of unexpected results that outweighs the evidence supporting the prima facie case of obviousness? Findings of Fact 1. Dixon teaches “a hair straightening or relaxing composition having a pH ranging from 8 to 11.5, and containing, in a cosmetically acceptable medium, at least one weak acid chosen from monocarboxylic, dicarboxylic and tricarboxylic acids.” (Dixon ¶ 5). 2. Dixon teaches “[p]referably, the hair straightening or relaxing composition . . . has a pH of from 8 to 11” (Dixon ¶ 6). 3. Dixon teaches “[p]articularly preferred weak dicarboxylic acids include malic acid, maleic acid” (Dixon ¶ 30; cf. Dixon ¶ 37). 4. Dixon teaches the weak acid “is typically employed in the hair straightening or relaxing composition in an amount . . . more preferably from 0.5% to 10% by weight” (Dixon ¶ 36). 5. Dixon teaches the “hair straightening or relaxing composition as disclosed herein may also comprise at least one adjuvant chosen, for example, from . . . natural and synthetic oils” (Dixon ¶ 118). Appeal 2021-001510 Application 14/764,751 5 6. Dixon teaches: by employing a weak acid product, preferably in a viscous form, combined with heat and, optionally, means for physically smoothing the hair, satisfactory and long-lasting straightening or relaxing of the hair can be achieved in a very short period of time and in a manner that is safer for both skin and hair. (Dixon ¶ 17). 7. Makino teaches the “present invention relates to a process for straightening curly hair, which comprises (1) the step of washing hair with water, applying a scalp protecting agent to the scalp” where the scalp protection agent may include “avocado oil . . . preferably 0.5 to 10% by weight” (Makino ¶¶ 55, 58). 8. Elliott teaches “a method of straightening hair without mechanical intervention in which a composition comprising a sugar lactone is applied to the hair” (Elliott ¶ 9). 9. Elliott teaches “preferred fatty esters are mono-, di- and triglycerides . . . a variety of these types of materials can be obtained from vegetable and animal fats and oils, such as . . . olive oil . . . avocado oil” (Elliott ¶ 59). 10. Elliott teaches “[s]pecific examples of preferred materials include cocoa butter, palm stearin, sunflower oil, soybean oil and coconut oil” and that the “total amount of hydrophobic conditioning oil present in the composition is preferably from 0.1 % to 10% by weight of the total composition” (Elliott ¶¶ 60, 62). 11. Cabourg teaches “a process for treating keratin fibres, and in particular a process for treating straightened keratin fibres” (Cabourg 1:2–3). Appeal 2021-001510 Application 14/764,751 6 12. Cabourg teaches “oils of plant origin or synthetic triglycerides that may be used in the composition of the invention as liquid fatty esters, examples that may be mentioned include: . . . avocado oil” (Cabourg 36:24, 25, 30). Principles of Law A prima facie case for obviousness “requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Prima facie obviousness can be rebutted by presenting evidence of secondary considerations and when such evidence is submitted, all of the evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472- 1473 (Fed. Cir. 1984). Secondary considerations include: long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Analysis We adopt the Examiner’s findings of fact and conclusion of law (see Ans. 3–6; FF 1–5) and agree that the combination of Dixon, Makino, Elliott, and Cabourg, renders the claims obvious. We address Appellant’s arguments below. Appeal 2021-001510 Application 14/764,751 7 Prima Facie Obviousness Appellant contends: the Examiner has not demonstrated that one of ordinary skill in the art at the time of the invention would have been motivated to modify the compositions disclosed in Dixon based on the disclosure of Makino, Elliott, and/or Cabourg to arrive at the claimed “hair straightening composition” including “a plant oil of triglyceride type, chosen from avocado oil, olive oil, or coriander oil, wherein the plant oil is present in an amount ranging from about 5% to about 30% by weight, relative to the total weight of the hair straightening composition, wherein the hair straightening composition is substantially free of reducing agents”. (Appeal Br. 6–7). We find this argument unpersuasive because Dixon teaches the elements of claim 13, including the use of a plant oil, but simply does not list specific plant oils that may be used in treatment of hair (FF 1–6). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417. The Examiner therefore relies on three different hair treatment composition references to establish that avocado oil was a predictable variation of plant oil that was known in the prior art as suitable for hair treatment compositions (FF 7–12). The Examiner’s reasoning “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant contends “the hair straightening compositions and methods taught in Makino all necessarily include a reducing agent” and therefore Appeal 2021-001510 Application 14/764,751 8 “Makino expressly teaches away from hair straightening compositions that are ‘substantially free of reducing agents’” (Appeal Br. 8). We are not persuaded by Appellant’s teaching away argument regarding Makino. While Makino does use a reducing agent, Appellant does not identify teachings in Makino that criticize, discredit, or otherwise discourage the hair straightener of Dixon that uses maleic acid, a plant oil, is in a pH range of 8–11, and lacks reducing agents (FF 1–7). “The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, we agree with the Examiner that “the teachings of Makino are relied upon merely to establish what natural oils are already known to be present in or with hair straightening compositions” (Ans. 7). That is, Makino is simply one piece of evidence among several cited of what the ordinary artisan, reading Dixon, would have known, which is that when Dixon is referencing natural oils (FF 5), Dixon and the ordinary artisan would have understood that genus to encompass any obvious natural oil already known at the time of invention to be useful in hair compositions, including the avocado and other natural plant oils as described by Makino (FF 7). Appellant contends: Elliott teaches that the fatty esters used in the conditioner composition may be obtained from oils such as avocado oil- that is, a product (i.e., fatty ester) of avocado oil, as opposed to the oil itself. As such, Elliott fails to disclose or suggest that Appeal 2021-001510 Application 14/764,751 9 compositions for straightening hair may include plant oils such as avocado oil. (Appeal Br. 9). While Appellant is correct that as to the specific oils, Elliott teaches the use of esters of avocado or olive oil, not the oils themselves (FF 9), Elliott also appears to suggest that plant based conditioning oils may be used as well (FF 10). But whether Elliott is limited to esters of avocado oil or more broadly suggests plant based conditioning oils is not the correct inquiry. Rather the obvious analysis depends on whether an ordinary artisan selecting natural oils as suggested by Dixon would have recognized avocado or olive oils as the type of natural oils that might be used in hair straightening applications. Elliott is reasonably understood to support the Examiner’s position that avocado and olive oil are known natural oils (FF 9), that oils may be used in hair straightening applications (FF 8, 10), that Elliott does not discredit or discourage the use of known natural oils like avocado and olive oil. Appellant contends “[s]ince Cabourg fails to demonstrate the suitability of any of the ingredients taught therein in a hair straightening composition, the Examiner’s argument does not meet the threshold for establishing a prima facie case of obviousness” (Appeal Br. 11). We remain unpersuaded as Dixon teaches the use of natural oils in hair straightening compositions and Cabourg teaches avocado oil is a known natural oil that may be used in conjunction with hair (FF 12). Wrigley found a “strong case of obviousness” based on a claim that “recites a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known . . . agent for Appeal 2021-001510 Application 14/764,751 10 another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). Appellant provides no evidence rebutting the Examiner’s reliance on Makino, Elliott, and Cabourg to show that avocado oil is a well-known agent that would function as the natural oil in Dixon. And “obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). Selecting avocado oil as the well-known natural oil used in Dixon has a reasonable expectation of success that is unrebutted. Secondary Considerations Appellant contends: Example 1 in the specification establish that synergistic combination of a dicarboxylic acid and a plant oil of triglyceride type provide surprisingly superior results in terms of straightening, softness and sheen, and also of relaxing remanence than either the dicarboxylic acid or a plant oil of triglyceride type alone. See, e.g., Merck, 874 F.2d at 804, 10 U.S.P.Q.2d at 1843. Further, Example 2 demonstrates that the claimed compositions including a plant oil of triglyceride type provided superior properties than identical compositions including a different oil. None of the cited art suggest such a synergy. Dixon discloses the use of synthetic or natural oils in a list of optional ingredients. (Appeal Br. 12). Appellant contends “none of the references disclose or even suggest that a synergistic benefit would be gained through the claimed combination of a dicarboxylic acid and a plant oil of triglyceride type” (id.). We have evaluated these results and find them insufficient to overcome the prima facie case of obviousness for several reasons. First, the fundamental requirement is that “any superior property must be unexpected Appeal 2021-001510 Application 14/764,751 11 to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). However, other than statements by Attorney (see, e.g., Appeal Br. 12), Appellant provides no evidence that these results are unexpected. We note that an electronic word search of the Specification does not find any usage of either the terms “unexpected,” “synergistic,” or “surprising.” No declaration or affidavit has been submitted to show that the results of Examples 1 or 2 would have been surprising or unexpected. We note that the statement that the combination is “better than those obtained by treating the hair with each of the ingredients” (Spec. 13:8–9) does not suggest the results are unexpected. Therefore, the only indication that any of these results constitutes an unexpected result is naked attorney argument in the Appeal Brief and these statements are not evidence. As Geisler explains in distinguishing In re Soni, 54 F.3d 746 (Fed. Cir. 1995), in Soni the applicants stated “in their application that the improved properties exhibited by the claimed compositions were ‘much greater than would have been predicted,’ . . . while Geisler made no such assertion in his application. Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration.” Geisler, 116 F.3d at 1470–71 (citation omitted). Geisler concluded that “naked attorney argument is ‘insufficient to establish unexpected results.’” Id. at 1471 (citing Soni, 54 F.3d at 750). Second, the data in the Specification is not compared with the closest prior art, which would be a maleic acid containing hair straightening composition in Example 3 or 4 of Dixon. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as Appeal 2021-001510 Application 14/764,751 12 evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). Third, unexpected results must be “commensurate in scope with the degree of protection sought by the claimed subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Here, Examples 1 and 2 use only one type of dicarboxylic acid at 2% while claim 13 is drawn to a number of different dicarboxylic acids and which acids are present in a broad amount range, and only avocado oil at a particular amount while claim 13 is open to other oils at other amounts. Thus, the results of Examples 1 and 2 are not commensurate in scope with claim 13. Fourth, Appellant also provides no evidence that the differences shown in Examples 1 and 2 were statistically significant. Appellant has not provided any error bars or other explanation of the data in the Specification, suggesting that the results represent a single experiment. See McNeil-PPC, Inc. v. L. Perrigo Co., 337 F.3d 1362, 1370 (Fed. Cir. 2003) (Finding evidence unpersuasive that “was based on the results of a study involving only nine participants and thus did not rise to the level of statistical significance” and finding the studies were “not shown to be reproducible.”) Conclusions of Law (i) A preponderance of the evidence of record supports the Examiner’s conclusion that the prior art renders the claims obvious. (ii) Appellant has not provided evidence of unexpected results that, when weighed with the prima facie case, results in a conclusion of non- obviousness. Appeal 2021-001510 Application 14/764,751 13 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–18, 20, 24–29 103 Dixon, Makino, Elliott, Cabourg 13–18, 20, 24–29 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 Copy with citationCopy as parenthetical citation