The Procter & Gamble Company

Patent Trials and Appeals BoardMar 23, 2021

2020004437 (P.T.A.B. Mar. 23, 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. 14/245,276 04/04/2014 John David CARTER 12839M 4767 27752 7590 03/23/2021 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER BASQUILL, SEAN M ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 03/23/2021 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): centraldocket.im@pg.com mayer.jk@pg.com pair_pg@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOHN DAVID CARTER, QING STELLA, TOSHIYUKI IWATA, TANASHAYA CIENGSHIN, DARIUSH HOSSEINPOUR, NOBUAKI UEHARA, TOSHIYUKI OKADA, and RAYMOND XU ZHAN TAY __________ Appeal 2020-004437 Application 14/245,276 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, 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 care composition. The Examiner rejected the claims as indefinite and 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 the Procter & Gamble Company (see Appeal Br. 1). We refer to the Specification of Apr. 4, 2014 (“Spec.”); Non-Final Action of May 13, 2019 (“Non-Final Act.”); Appeal Brief of Oct. 14, 2019 (“Appeal Br.”); and Examiner’s Answer of Feb. 12, 2020 (“Ans.”). Appeal 2020-004437 Application 14/245,276 2 Statement of the Case Background “Shampooing cleans the hair by removing excess soil and sebum. However, shampooing can leave the hair in a wet, tangled, and generally unmanageable state. Once the hair dries, it is often left in a dry, rough, lusterless, or frizzy condition due to removal of the hair’s natural oils” (Spec. 1:10–12). “There is . . . a desire to find a conditioning active that is both derived from a natural source and leads to a stable product” (id. at 2:2– 3). “There is [also] a desire to enhance the deposition quality (film smoothness), skin/hair smoothness and hair volume of these conditioning actives to provide consumer noticeable benefits” (id. at 2:8–10). The Claims Claims 1–3, 5, 8–10, 13–18, 20–24, and 26 are on appeal. Independent claim 1 is representative and reads as follows: 1. A hair care composition comprising: a from about 0.25% to about 80% of a pre- emulsified emulsion comprising from about 0.005% to about 80% of one or more materials selected from the group consisting of metathesized unsaturated polyol esters, and fatty esters with a molecular weight greater than or equal to 1500 and mixtures thereof by weight of said hair care composition; wherein the composition comprises an emulsifier selected from the group consisting of anionic, non-ionic, cationic, amphoteric and mixtures thereof wherein the average particle size of the pre-emulsified emulsion is from about 20 nanometers to 20 microns; and b a cationic surfactant system wherein the composition is stable with respect to one of the following selected from emulsion particle size, viscosity or visual phase separation and combination thereof. Appeal 2020-004437 Application 14/245,276 3 The Issues A. The Examiner rejected claims 1–3, 5, 8–10, 13–18, 20–24, and 26 under 35 U.S.C. § 112(b) as indefinite (Non-Final Act. 6–7). B. The Examiner rejected claims 1–3, 5, 8–10, 13–18, 20–24, and 26 under 35 U.S.C. § 103(a) as obvious over Kitko,2 Giroud,3 and Braksmayer4 (Non-Final Act. 8–13). A. 35 U.S.C. § 112(b) The Examiner finds: It is unclear from the language whether the language specifying the presence of a cationic surfactant system places a particular limitation on the identity of the emulsifier in the emulsion composition or represents an additional component of the overall “hair care composition” claimed. This confusion is amplified by the language presented by Applicants Claim 2, which adds yet another cationic surfactant system component to the overall composition claimed; as these components are ultimately provided as a single composition, it is unclear from the language of the claims how the various competing interpretations of various surfactant systems are to be reconciled. (Non-Final Act. 6–7). Appellant contends the “claims are clear as written” and “the composition of the present invention comprises a cationic surfactant system. The cationic surfactant system can be one cationic surfactant or a mixture of two or more cationic surfactants” (Appeal Br. 5). Appellant contends it “is 2 Kitko et al., US 8,936,798 B2, issued Jan. 20, 2015. 3 Giroud et al., US 2008/0286218 A1, published Nov. 20, 2008. 4 Braksmayer et al., US 2009/0220443 A1, published Sept. 3, 2009. Appeal 2020-004437 Application 14/245,276 4 clearly defined . . . that the composition comprises a) from about 0.25% to about 80% of a pre-emulsified emulsion and b) a cationic surfactant system” (id. at 6) (emphasis omitted). We find that the Examiner has the better position. We understand the Examiner to find that it is indefinite whether a single component can satisfy both the emulsifier and cationic surfactant system limitations of claim 1 or whether two components or more are required. As to the emulsifier, the Specification teaches that: “Cationic Emulsifers suitable for use in the emulsion of the present invention may include a wide variety of emulsifiers useful herein and include, but not limited to,: mono-long alkyl quaternized ammonium salt” (Spec. 12:8–10). As to the cationic surfactant system, the Specification teaches: “Preferably, the cationic surfactant system is selected from: mono-long alkyl quaternized ammonium salt” (Spec. 17:5–6). Thus, the Specification envisions the exact same compound as able to satisfy both the emulsifier and cationic surfactant limitations.5 But claim 1 separately recites an emulsifier and a cationic surfactant. So, it is unclear if the claim is limited to the situation where the emulsifier must be different than the cationic surfactant, or also encompasses a situation where, for example, a single mono-long alkyl quaternized ammonium salt can satisfy both the emulsifier and cationic surfactant requirements. We also agree with the Examiner that claim 2 further confuses the issue, because claim 2 “further compris[es]” a gel matrix composed of two 5 We note that the Specification provides duplicative compounds other than a mono-long alkyl quaternized ammonium salt that can function as a cationic emulsifier and as a cationic surfactant system. Appeal 2020-004437 Application 14/245,276 5 additional elements, “high melting point fatty compounds” and “a cationic surfactant system.” It is indefinite whether this is the same cationic surfactant system as that required by claim 1 or a different cationic surfactant system that is solely part of a gel matrix. It is further indefinite whether a single mono-long alkyl quaternized ammonium salt can function as the compound for each of the emulsifier, the cationic system recited in claim 1, and the cationic system in a gel matrix recited in claim 2. When the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is unclear in describing and defining the claimed invention, the burden shifts to Appellant to provide a persuasive explanation on the record of why the language at issue is not actually unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Appellant provides no persuasive reasoning that clarifies why the claims are definite. We therefore affirm the Examiner’s indefiniteness rejection. B. 35 U.S.C. § 103(a) over Kitko, Giroud, and Braksmayer The issues with respect to this rejection are: (i) Does a preponderance of the evidence of record support the Examiner’s finding that Kitko, Giroud, and Braksmayer render the rejected 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. Kitko teaches “a hair care composition comprising: a combination of conditioning active comprising an insoluble silicone, a sucrose polyester having a melting point greater than about 30° C., an IBAR Appeal 2020-004437 Application 14/245,276 6 greater than about 5, an IV of about 3 to about 70; a cationic polymer; and an aqueous carrier” (Kitko 2:3–8). 2. Kitko teaches that: “Shampoo formulations of the present invention incorporate sucrose polyesters via . . . pre-emulsification” (Kitko 7:42–43). 3. Kitko teaches: The conditioning agents useful in the compositions of the present invention typically comprise a water insoluble, water dispersible, nonvolatile, liquid that forms emulsified, liquid particles. Suitable conditioning agents for use in the composition are those conditioning agents characterized generally as silicones (e.g., silicone oils, cationic silicones, silicone gums, high refractive silicones, and silicone resins), organic conditioning oils (e.g., hydrocarbon oils, polyolefins, and fatty esters) or combinations thereof. (Kitko 14:21–30; emphasis added). 4. Kitko teaches the “composition of the present invention comprises a cationic surfactant system” including “preferred mono-long alkyl quaternized ammonium salt cationic surfactants” (Kitko 26:16–17, 27:11–12). The Specification also teaches that “[p]referably, the cationic surfactant system is selected from: mono-long alkyl quaternized ammonium salt” (Spec. 17:5–6). 5. Kitko teaches: Preferably, the above cationic surfactants, together with high melting point fatty compounds and an aqueous carrier, form a gel matrix in the composition of the present invention. The gel matrix is suitable for providing various conditioning benefits such as slippery feel during the application to wet hair and softness and moisturized feel on dry hair. (Kitko 28:50–55). Appeal 2020-004437 Application 14/245,276 7 6. Braksmayer teaches compositions that “are commonly used in a variety of applications including, for example, creams, lotions, hair preparations, cosmetics” that “comprise a mixture of: (a) a metathesized unsaturated polyol ester; and (b) a polyol ester” (Braksmayer ¶¶ 2, 5). 7. Braksmayer teaches “the petrolatum-like compositions further includes one or more stabilizers. Representative stabilizers include . . . emulsifiers” (Braksmayer ¶ 90). 8. Braksmayer teaches “oil-in-water emulsions comprise a dispersed phase that comprises a mixture comprising: (i) a hydrogenated metathesized unsaturated polyol ester; and (ii) a polyol ester” (Braksmayer ¶ 93). 9. Braksmayer teaches in “exemplary embodiments, the hydrogenated metathesized polyol ester is present in an amount from about 5% wt. to about 50% wt.” (Braksmayer ¶ 79). 10. Braksmayer teaches “the dispersed phase of the emulsion has a particle size of about 1 μm or less. A small particle size promotes thorough, homogeneous incorporation with other ingredients that may be present in a formulation comprising the emulsion” (Braksmayer ¶ 95). 11. Braksmayer teaches “[e]mulsions of the invention may be used . . . [in] hair care products as a moisturizer or moisture barrier coating” (Braksmayer ¶ 17). 12. Giroud teaches “polymers according to the invention have advantageous cosmetic properties, for example during application in a formulation of hair conditioner type in combination with conditioning agents; specifically, it has been found that the hair disentangles easily during rinsing, and is soft” (Giroud ¶ 15). Appeal 2020-004437 Application 14/245,276 8 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). Analysis We adopt the Examiner’s findings of fact and conclusion of law (see Non-Final Act. 8–13; FF 1–12) and agree that the combination of Kitko, Giroud, and Braksmayer renders claim 1 obvious. We address Appellant’s arguments below. Appellant contends the references do not disclose a “pre-emulsified” emulsion wherein the personal care composition comprises from about 0.25% to about 80% of a pre-emulsified emulsion comprising from about 0.005% to about 80% of one or more materials selected from the group consisting of metathesized unsaturated polyol esters and fatty esters with a molecular weight greater than or equal to 1500 and mixtures thereof. (Appeal Br. 14). Appellant asserts that Kitko “discloses a product that is an emulsion vs. the present invention wherein the pre-emulsified metathesized unsaturated polyol esters and fatty esters is a component of the final personal care composition product” (id. at 14–15). We find the argument related to the “pre-emulsified emulsion” limitation unpersuasive. Appellant does not identify any structural difference in the hair care composition caused by a method of preparation of the composition by using a “pre-emulsified emulsion.” The identification of Appeal 2020-004437 Application 14/245,276 9 the emulsion as being “pre-emulsified” is a process limitation with respect to the emulsion that makes up a part of the hair care composition. The weight of authority holds that the patentability of product-by-process claims is not dependent on process limitations. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself”; “[t]he patentability of a product does not depend on its method of production”; and “[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”) Therefore, in the absence of any evidence that the obvious hair care composition differs structurally from the product made using the “pre-emulsified emulsion” of claim 1, we conclude that the phrase “pre-emulsified emulsion” does not impart a compositional difference to the claimed product as compared to the emulsion made obvious by Kitko and Braksmayer . Also, Braksmayer teaches hair preparations that “comprise a mixture of: (a) a metathesized unsaturated polyol ester; and (b) a polyol ester” (FF 6) where the “oil-in-water emulsions comprise a dispersed phase that comprises a mixture comprising: (i) a hydrogenated metathesized unsaturated polyol ester; and (ii) a polyol ester” (FF 8). Thus, Braksmayer suggests a hair composition comprising an emulsion composed of the required components already in emulsified form (FF 8). Moreover, while Kitko’s hair preparations do not use polyol esters, Kitko does teach the use of sucrose polyesters via pre-emulsification (FF 2–3) and, as noted above, teaches inclusion of cationic surfactants including mono-long alkyl quaternized ammonium salts in the formulation (FF 4–5). Appeal 2020-004437 Application 14/245,276 10 We also agree with the Examiner that “arguments concerning the nature of the composition of Kitko (an emulsion) versus the instant claims whereby an emulsion is incorporated into a larger product appears to attempt to argue limitations which have not been claimed, as nothing of the instant claims precludes the overall haircare composition from being an emulsion” (Ans. 12). “[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant also contends there is no disclosure in Kitko et al. in view of Giraud et al. and Braksmayer et al of a pre-emulsified emulsion, which is one of the components of the composition, having an average particle size of about 20 nanometers to 20 microns directed to a pre- emulsified” emulsion wherein the personal care composition comprises from about 0.25% to about 80% of a pre-emulsified emulsion comprising from about 0.005% to about 80% of one or more materials selected from the group consisting of metathesized unsaturated polyol esters and fatty esters. (Appeal Br. 15). We are not persuaded. Braksmayer teaches a composition where “the dispersed phase of the emulsion has a particle size of about 1 μm or less” (FF 10), thereby suggesting a range falling within the 10 nm to 20 micron range recited in claim 1. Braksmayer further teaches an emulsion composed of “(a) a metathesized unsaturated polyol ester; and (b) a polyol ester” where the “metathesized polyol ester is present in an amount from about 5% wt. to about 50% wt.” (FF 6, 9). Because claim 1 only requires “one or more materials,” the overlapping ranges of particle size and amount of one material, metathesized unsaturated polyol ester, as disclosed by Braksmayer renders these two ranges obvious (FF 6, 9, 10). In “cases involving Appeal 2020-004437 Application 14/245,276 11 overlapping ranges, [courts] have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Appellant contends that Table 2 “demonstrates that the Comparative Example with no pre-emulsion Soy oligomer Emulsion (Ex.4) does not provide the improved formulation of the Inventive formulations containing the pre-emulsion Soy oligomer Emulsion (Ex.4)” (Appeal Br. 16–17). We are not persuaded that Table 2 supports a difference between “pre- emulsion” and “emulsion” for the claimed compositions for several reasons. First, neither Table 2 nor the Specification identifies the composition of the recited “Soy oligomer Emulsion (Ex. 4)” or the “Soy oligomer.” Consequently, the record does not demonstrate whether the “Soy oligomer” is composed of either metathesized unsaturated polyol esters or fatty esters with a molecular weight greater than or equal to 1500 as required by claim 1. Indeed, Appellant does not even address this point in the Appeal Brief. Second, different amounts of “soy oligomer” and “soy oligomer emulsion” were compared, with only 0.5 of soy oligomer and either 2.5 or 5.0 of soy oligomer emulsion (see Spec., Table 2). Thus, any differences in any of the resultant properties may be due to the different amounts of these components rather than representing a real difference in properties when equal amounts are used. Third, as the Examiner points out not only is the data presented insufficient to establish a statistical difference between what is asserted to be the two “inventive” compositions and the “comparative,” as the values of “Wet combing,” “Dry Combing,” “Less coated wet feel,” and “Width change” . . . appear to be average values presented with neither standard deviations nor statistical analyses to Appeal 2020-004437 Application 14/245,276 12 support the statistical significance of the purported difference between analyses, but absolutely no indication of how the “Comparative” composition represents the closest prior art is provided. (Ans. 14). As Huang explains, unexpected results must “produce a new and unexpected result which is different in kind and not merely in degree from results of the prior art.” In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). Moreover, any result with the “soy oligomer emulsion” is not commensurate in scope with the claim range which encompasses about 0.005 to 80% of the metathesized unsaturated polyol esters or fatty esters and only two points, at most, within the range were tested. There is no indication that these two points are representative of the scope of the large range claimed. Unexpected results must be “commensurate in scope with the degree of protection sought by the claimed subject matter.” Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Appellant contends “the piecemeal reconstruction of an invention by assertedly finding its individual elements in disparate documents and then combining them to arrive at the invention is not the standard of § 103. Such hindsight reconstruction of the invention is impermissible” (Appeal Br. 17). Appellant further contends “it can be important to identify 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” (id. at 18). While we are fully aware that hindsight bias may plague determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that the “combination of familiar elements according to known methods is likely Appeal 2020-004437 Application 14/245,276 13 to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Here, Kitko teaches hair care compositions (FF 1) composed of a pre-emulsified component as a conditioning active (FF 2), emulsified fatty esters as conditioning agents (FF 3), and a cationic surfactant system combined with the high melting point fatty compounds to form a gel matrix (FF 4–5). Braksmayer also teaches hair care compositions composed of emulsified metathesized unsaturated polyol ester; and (b) a polyol ester (FF 6, 8) with overlapping amounts and overlapping sizes (FF 9–10)as a moisturizer (FF11), i.e., conditioning agent. We agree with the Examiner that it would have been obvious to combine Kitko and Braksmayer because both references are concerned with moisturizing ingredients for use in hair care products (FF 5, 11) and not only are both references drawn to hair care formulations comprising moisturizers, but Braksmayer teach specific moisturizers including the hydrogenated, metathesized unsaturated polyol esters and percentages as set forth by the instant claims, rendering their use in this context again nothing more than the selection of a known moisturizing agent and percentages thereof known to be used in hair care formulations. (Ans. 7). We agree an ordinary artisan would have reasonably incorporated Braksmayer’s moisturizing emulsion of metathesized unsaturated polyol ester and polyol ester (FF 8) into Kitko’s hair care preparation to improve moisturization of the final product. Conclusion of Law (i) A preponderance of the evidence of record supports the Examiner’s finding that Kitko, Giroud, and Braksmayer render the rejected claims obvious. (ii) Appellant has not provided evidence of unexpected results that Appeal 2020-004437 Application 14/245,276 14 outweighs the evidence supporting the prima facie case of obviousness. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 8–10, 13–18, 20–24, 26 112(b) Indefiniteness 1–3, 5, 8– 10, 13–18, 20–24, 26 1–3, 5, 8–10, 13–18, 20–24, 26 103(a) Kitko, Giroud, Braksmayer 1–3, 5, 8– 10, 13–18, 20–24, 26 Overall Outcome 1–3, 5, 8– 10, 13–18, 20–24, 26 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