L'OREAL

Patent Trials and Appeals Board

Dec 15, 2021

2021001510 (P.T.A.B. Dec. 15, 2021)

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.”).
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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
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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.
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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).
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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).
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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.
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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
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“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
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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
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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
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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
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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.

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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