Nghi Nguyen et al.

Patent Trials and Appeals Board

Mar 28, 2022

2021000772 (P.T.A.B. Mar. 28, 2022)

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. 13/814,963 02/08/2013 Nghi Van Nguyen 085137-528240 5729 30678 7590 03/28/2022 POLSINELLI PC (DC OFFICE) PO Box 140310 Kansas City, MO 64114-0310 EXAMINER SONG, JIANFENG ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 03/28/2022 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): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NGHI VAN NGUYEN, SAWA HASHIMOTO, and SILIU TAN Appeal 2021-000772 Application 13/814,963 Technology Center 1600 Before TAWEN CHANG, JOHN E. SCHNEIDER, and DAVID COTTA, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 75-77, 79, 82, 84, 86, 89, and 91-95. 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’Oréal. Appeal Br. 2. Appeal 2021-000772 Application 13/814,963 2 STATEMENT OF THE CASE The Specification states that its disclosure “relates to silicone based cosmetic compositions comprising a silicone amine and an anionic silicone.” Spec. 1:4-6. The Specification states that “[i]t has been surprisingly and unexpectedly found that the silicone based cosmetic compositions of the present disclosure provide cosmetic benefits to hair and skin and can be used for beneficially coating, treating, protecting and/or improving the condition and quality of hair and skin.” Id. at 2:16-19. CLAIMED SUBJECT MATTER The claims are directed to a cosmetic composition. Claim 75 is illustrative: 75. A cosmetic composition comprising: (a) a silicone amine in an amount up to 10 wt.%, wherein the silicone amine is amodimethicone; (b) an anionic silicone in an amount up to 10 wt.%, wherein the anionic silicone is a silicone phosphate selected from the group consisting of dimethicone PEG-7 phosphate, dimethicone PEG-8 phosphate, dimethicone PEG-10 phosphate, dimethicone PEG/PPG-7/4 phosphate, and dimethicone PEG/PPG-12/4 phosphate; wherein the weight ratio of the (a) silicone amine to the (b) anionic silicone is from about 1:10 to about 10:1; (c) at least 80 wt.% water; (d) a cationic surfactant; (e) a polyquat; and (f) about 0.1 to about 10 wt.% of an oil; wherein the percentages by weight are based on the total weight of the cosmetic composition, and the cosmetic composition is not a shampoo. Appeal Br. App. A 1 (Claims App.). Appeal 2021-000772 Application 13/814,963 3 REJECTION(S) A. Claims 75-77, 79, 82, 84, 86, 89, and 91-95 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nguyen2 and Ittel.3 B. Claims 75-77, 79, 82, 84, 86, 89, and 91-95 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 8,658,140 B2 (the ’140 patent) in view of Nguyen and Ittel. OPINION A. Obviousness Rejection over Nguyen and Ittel (claims 75-77, 79, 82, 84, 86, 89, and 91-95) 1. Issue The Examiner finds that Nguyen suggests a hair treating composition comprising all of the limitations of claim 75.4 Ans. 4. Appellant contends that the subject matter of the invention exhibits unexpected results. See, e.g., Appeal Br. 7-15. Appellant does not separately argue the claims.5 Thus, we focus our analysis on claim 75 as representative. The issue with respect to this 2 Nguyen et al., US 2009/0071493 A1, published Mar. 19, 2009. 3 Ittel et al., US 2007/0249805 A1, published Oct. 25, 2007. 4 Ittel is cited for its teaching on polyalkylene glycol, which is a limitation in, e.g., dependent claim 76. 5 Appellant states in the Appeal Brief that claims 92-95 contain additional limitations that “further distinguish over the compositions of the Nguyen references” and that those claims thus do not stand or fall together. Appeal Br. 8, 12. However, such conclusory statements do not suffice to separately argue the claims. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which Appeal 2021-000772 Application 13/814,963 4 rejection is whether Appellant has provided evidence of unexpected results that, when considered together with evidence of obviousness, shows claim 75 to be non-obvious. 2. Analysis In our previous Decision of February 27, 2019 (“Decision” or “Dec.”), we affirmed the Examiner’s rejection of claim 75 as obvious over Nguyen and Ittel. We once again adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art with respect to claim 75 (Final Act. 3-5; Ans. 4-6) and agree that claim 75 is prima facie obvious over Nguyen and Ittel.6 On this appeal, Appellant does not argue that the Examiner has failed to established a prima facie case of obviousness. We therefore turn to Appellant’s arguments with respect to unexpected results. See 37 C.F.R. § 41.37(c)(1)(iv) (2019) (explaining that arguments not timely presented in the appeal brief will not be considered by the Board). Appellant contends that the claimed cosmetic compositions “provide surprisingly good cosmetic benefits to hair, for example, anti-frizz benefits to hair.” Appeal Br. 7. Appellant relies on the Tan Declaration7 to support its arguments relating to unexpected results.8 In particular, Dr. Tan merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”) 6 We note that claim 75 was amended subsequent to our prior Decision. Compare Dec. 2 (setting forth claim 75 at the time of our prior Decision) with Appeal Br. App. A 1 (Claims App.) (setting forth claim 75 on appeal). 7 Declaration of Siliu Tan pursuant to 37 C.F.R. § 1.132 (Nov. 22, 2019) (“Tan Declaration” or “Tan Decl.”). 8 Dr. Tan also states that “[t]he Nguyen Declaration shows that fatty acids (such as isostearic) acid and dimethicone PEG-X phosphates (such as Appeal 2021-000772 Application 13/814,963 5 describes preparing the compositions set forth in the table below, wherein “[t]he comparative composition is a reproduction of the composition of Test D in Table 3-1 of Nguyen-945[9]”: Tan Dec. ¶¶ 5-6. The table reproduced above from the Tan Declaration sets forth the wt.% of the ingredients used in each of three compositions (“Inventive A,” “Inventive B,” and “Comparative”) evaluated for anti-frizz properties in the declaration. Id. ¶¶ 5-6, 10. The Tan Declaration describes assessing the degree of frizz, on a scale from 1-5 (5 being the frizziest), after hair swatches treated with the compositions above were (1) allowed to stand at ambient temperature overnight and (2) subsequently placed in a humidity chamber (80% RH, dimethicone PEG-8 phosphate) are not interchangeable and behave very differently when combined with amodimethicone and water,” and that “[s/he] agree[s] with the statements and conclusions set forth [in] the Nguyen Declaration, for example, that it is surprising that dimethicone phosphates and amodimethicone form a homogenous, free flowing, milky solution in water.” Tan Decl. ¶ 4; see also Appeal Br. 8. We have previously explained, however, why the Nguyen Declaration is not adequate to show unexpected results as to the full scope of claim 75. Dec. 10-13. 9 Nghi Van Nguyen et al., US 2009/0070945 A1, published Mar. 19, 2009. Appeal 2021-000772 Application 13/814,963 6 25ºC) for 8 hours. Id. ¶ 10. The results of the assessment are set forth in the table below: Id. The table reproduced above from the Tan Declaration sets forth the degree of frizz, on a scale from 1-5, for hair swatches treated with Inventive Composition A, Inventive Composition B, or Comparative Composition, before and after placement of the swatches in a humidity chamber. Id. Dr. Tan states the data above shows that hair treated with Inventive Compositions A and B exhibited significantly less frizz than hair treated with the comparative composition, under both ambient and high humidity conditions. These results are surprising, especially considering that the comparative composition included much higher amounts of amodimethicone and isopropyl palmitate (an oil), both of which are known to provide anti-frizz properties to hair; and because the comparative composition included much less water than the inventive compositions (water causes frizziness). Even though the inventive compositions included less amodimethicone and isopropyl palmitate, and more water, hair treated with the inventive compositions exhibited significantly less frizz. Id. ¶ 11. We appreciate Appellant’s submission of additional data relating to unexpected results in response to our prior Decision. Nevertheless, we are not persuaded that Appellant has submitted evidence of unexpected results Appeal 2021-000772 Application 13/814,963 7 that, when considered together with the evidence of obviousness, show claim 75 to be non-obvious, for at least the reasons discussed below.10 Our reviewing court has explained that, “when an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). In this case, however, Appellant has not provided us sufficient information to evaluate whether the claimed invention demonstrates “substantially improved” results. For example, the Tan Declaration does not state how many swatches of hair were evaluated for each composition and how many individuals assessed the degree of frizz. Likewise, although Dr. Tan states that “hair treated with Inventive Compositions A and B exhibited significantly less frizz than hair treated with the comparative composition,” Tan Decl. ¶ 11 (emphasis added), the Tan Declaration fails to provide 10 The Examiner and Appellant dispute whether the Comparative Composition used in the comparison set forth in the Tan Declaration is the closest prior art. See Final Act. 6-8; Ans. 9-11; Appeal Br. 13-15. We need not decide this issue because we find that Appellant’s evidence of unexpected results unpersuasive for other reasons as discussed below. We clarify, however, that the statement in our earlier Decision that “the comparison described in the Nguyen Declaration was not to the closest prior art, i.e., the example compositions comprising amodimethicone set forth in Nguyen’s Tables 3-1 and 4-1” is not intended to suggest that those compositions are necessarily the closest prior art regardless of additional information that may become part of the record. Dec. 11. Rather, we referred to those compositions because they comprise amodimethicone and are at least closer to the invention than what was in fact compared in the Nguyen Declaration. Appeal 2021-000772 Application 13/814,963 8 objective statistical information such as standard deviation and/or p value. In this regard, we note that [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 re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (alterations in original). We further note that “objective evidence of nonobviousness must be commensurate in scope with the claims.” In re Lindner, 457 F.2d 506, 508 (CCPA 1972). In this case, although Dr. Tan tested two claimed compositions against the comparative composition, we are not persuaded that the results “provide[] an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Dr. Tan notes that “amodimethicone interacts with dimethicone phosphates (e.g., dimethicone PEG-X phosphates) in the composition of the Instant Case to provide beneficial properties such as anti-frizz properties, etc., to hair.” Tan Dec. ¶ 2. Claim 75 recites a composition comprising amodimethicone “in an amount up to 10 wt.%,” dimethicone PEG-X phosphate “in an amount up to 10 wt.%,” where X is 7, 9, 10, 7/4, or 12/4, and wherein the weight ratio of the amodimethicone to dimethicone PEG-X phosphate is “from about 1:10 to about 10:1.” Appeal Br. 18 (Claims App.). However, the only inventive compositions tested have 2 wt.% amodimethicone and either 0.30 or 10.00 wt.% dimethicone PEG-7 Appeal 2021-000772 Application 13/814,963 9 phosphate, and amodimethicone to dimethicone PEG-7 phosphate weight ratios of 6.7:1 and 1:5. The Tan Declaration does not persuasively explain why the results with respect to Inventive Compositions A and B adequately support the full scope of the claim. Dr. Tan does state that dimethicone PEG-7 phosphate would be representative of other dimethicone PEG-X phosphates. Tan Decl. ¶ 13. Similarly, Dr. Tan states that the comparison included inventive compositions comprising both a high amount and low amount of dimethicone PEG-7 phosphate, “represent[ing] the full range of the claimed amount of the dimethicone PEG-X phosphates” and demonstrating that, “[r]egardless of whether the dimethicone PEG-X phosphate is used in low amounts or high amounts, the results for hair treated with the inventive compositions is significantly better than the results for hair treated with the comparative composition.” Id. ¶ 14. Even assuming dimethicone PEG-7 phosphate is representative of other dimethicone PEG-X phosphates, however, Appellant still has not explained why 2% dimethicone PEG-7 phosphate (or 2% amodimethicone) would be representative of the lowest amounts of dimethicone PEG-X phosphate or amodimethicone encompassed by claim 75, given that the claim does not recite a lower bound (other than zero) for the amounts of dimethicone PEG-7 phosphate and amodimethicone in the claimed composition. Likewise, Appellant has not adequately explained why compositions having the weight ratios of amodimethicone to dimethicone PEG-X phosphate in the two inventive compositions tested (i.e., 6.7:1 and 1:5) would be representative of compositions where such ratio is “from about 1:10 to about 10:1.” Appeal 2021-000772 Application 13/814,963 10 Accordingly, for the reasons discussed above, we affirm the Examiner’s rejection of claim 75 as obvious over Nguyen and Ittel. Claims 76, 77, 79, 82, 84, 86, 89, and 91-95, which are not separately argued, fall with claim 75. B. Obviousness-Type double patenting rejection over the ’140 patent, Nguyen, and Ittel (claims 75-77, 79, 82, 84, 86, 89, and 91-95) Appellant does not make additional arguments with respect to the obviousness-type double patenting rejection. Appeal Br. 16 (“[T]he instant rejection should be withdrawn for the same reasons the obviousness rejection above should be withdrawn.”). Accordingly, we affirm the obviousness-type double patenting rejection for the same reasons already discussed. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 75-77, 79, 82, 84, 86, 89, 91-95 103(a) Nguyen, Ittel 75-77, 79, 82, 84, 86, 89, 91-95 75-77, 79, 82, 84, 86, 89, 91-95 Nonstatutory Double Patenting US 8,658,140 B2, Nguyen, Ittel 75-77, 79, 82, 84, 86, 89, 91-95 Overall Outcome 75-77, 79, 82, 84, 86, 89, 91-95 Appeal 2021-000772 Application 13/814,963 11 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED