The Procter & Gamble Company

Patent Trials and Appeals BoardMay 3, 2021

2020004463 (P.T.A.B. May. 3, 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. 14/506,209 10/03/2014 Qing STELLA 13571 7381 27752 7590 05/03/2021 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER BABSON, NICOLE PLOURDE ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 05/03/2021 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 QING STELLA, JOHN DAVID CARTER, ERIC SCOTT JOHNSON, MICHAEL STEPHEN MAILE, SEAN MICHAEL RENOCK, and DIPESH MUKESH PATEL Appeal 2020-004463 Application 14/506,209 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and JAMIE T. WISZ, Administrative Patent Judges. WISZ, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3 and 6–29. 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. Appeal Br. 1. Appeal 2020-004463 Application 14/506,209 2 CLAIMED SUBJECT MATTER The Specification describes “a method of improving volume and combability using shampoo compositions containing gel matrix and a pre- emulsified emulsion of a conditioning agent or mixture of conditioning agents selected from the group comprising methathesized unsaturated polyol esters, sucrose polyesters, fatty esters and mixtures thereof, an anionic surfactant, and an aqueous carrier.” Spec. 1. Claim 1, the only independent claim, is illustrative of the claimed subject matter and is reproduced below: 1. A method of achieving hair volume and combability comprising applying to hair a personal 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; and 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; b) from about 5% to about 50% of one or more anionic surfactants, by weight of said personal care composition; c) from about 5% to about 40% of a gel matrix comprising: (i) from 0.1% to 30% of one or more fatty alcohols, by weight of the gel matrix; (ii) from 0.1% to 15% of one or more surfactants, by weight of the gel matrix; and Appeal 2020-004463 Application 14/506,209 3 (iii) from 20% to 95% of an aqueous carrier, by weight of the gel matrix; d) at least about 20% of an aqueous carrier, by weight of said personal care composition; wherein the hair has a dry static friction index in the range of about 1.05 - 3 and a dry and wet combing index of larger than or equal to about 1.5. Appeal Br. 20–21 (Claims App.). REJECTIONS The Examiner rejected claims 1–3, 6–20, and 23–29 under 35 U.S.C. § 103 as being unpatentable over Kitko2 in view of Braksmayer.3 The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103 as being unpatentable over Kitko in view of Braksmayer, and further in view of Schwartz.4 The Examiner rejected claims 1–3 and 6–29 for nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 9,655,8215 in view of Kitko. The Examiner provisionally rejected claims 1–3 and 6–29 for nonstatutory double patenting as being unpatentable over claims 1–30 of Application No. 14/506,2296 in view of Kitko. 2 Kitko et al., US 2009/0246236 A1, published Oct. 1, 2009 (“Kitko”). 3 Braksmayer et al., US 2009/0220443 A1, published Sept. 3, 3009 (“Braksmayer”). 4 Schwartz et al., US 2004/0223941 A1 (“Schwartz”). 5 Carter et al., US 9,655,821 B2, issued May 23, 2017 (“the ’821 patent”). 6 Stella et al., US Application No. 14/506,229, filed Oct. 3, 2014 (“the ’229 application”). Appeal 2020-004463 Application 14/506,209 4 ISSUES AND ANALYSIS Rejection of claims 1–3, 6–20, and 23–29 under 35 U.S.C. § 103 as being unpatentable over Kitko in view of Braksmayer The Examiner finds that Kitko teaches methods of treating hair by applying a composition comprising an emulsion of sucrose polymers and an emulsifier wherein the particle size is from 0.05–35 microns, 0.1–10 microns, or 0.3–10 microns and that the sucrose polymers are in the total composition at 1%, 2%, 1.2%, 2.5%, 0.15%, 0.5%, 3.57%, and 3%. Final Act. 4 (citing Kitko abstract, ¶¶ 7, 34–49, Examples). The Examiner also finds that Kitko teaches that the composition comprises 5–50%, 12–40%, 8– 30%, 10–25%, or 12–22% of one or more anionic surfactants. Id. (citing Kitko ¶¶ 35–44). The Examiner further finds that Kitko teaches that the composition comprises a gel matrix comprising a fatty alcohol, cationic surfactant, and aqueous carrier and that the fatty alcohol is present at 0.1–40%, 1–30%, 1.5– 16%, or 1.5–8%, the cationic surfactant is present at 0.1–10%, 0.5–8%, 1– 5%, or 1.4–4%, and the aqueous carrier is present at 20–99%, 30–95%, or 80–95% based on the total composition. Id. (citing Kitko ¶¶ 159, 165–169, 172, 173). According to the Examiner, “[i]t would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the gel matrix concentration and the ingredients therein relative to the total hair composition through routine experimentation in order to optimize the resulting product.” Id. at 4–5. The Examiner also finds that Kitko teaches that the composition comprises 20–95% or 60–85% of an aqueous carrier and that the composition may further include conditioning agents, inducing silicones and Appeal 2020-004463 Application 14/506,209 5 hydrocarbons at 0.05–20%, or 0.08–1.5%, or 0.1–1 %. Id. at 5 (citing Kitko abstract, ¶¶ 7, 54, 68, 109–111, 169). The Examiner acknowledges that Kitko is silent regarding the dry static friction index and wet combing index but finds that Kitko “discuss[es] the dry and wet combing body values and testing” and teaches that “the hair care composition of the present invention delivers both wet and dry conditioning benefits, as indicated by wet/dry combing test data.” Id. (citing Kitko ¶¶ 24, 31–33, 201, 202). The Examiner also acknowledges that Kitko does not teach metathesized unsaturated polyol esters but finds that this deficiency is cured by Braksmayer which “teach[es] metathesized unsaturated polyol esters as a substitute for petrolatum-like ingredients in products including hair care compositions.” Id. (citing Braksmayer abstract, ¶¶ 15–17, 91, 106, claim 61). The Examiner further finds that Braksmayer “teach[es] that the metathesized unsaturated polyol esters are desired as they are renewable, as opposed to petroleum-based products, and are capable of providing significant increased skin hydration and improvement in skin barrier.” Id. at 6 (citing Braksmayer ¶¶ 2, 106, 142, 144). According to the Examiner, it would have been obvious for one of ordinary skill in the art at the time of the instant invention to include the metathesized unsaturated polyol esters of Braksmayer et al. in the composition of Kitko et al. As both the compositions of are useful as hair care compositions; it would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. Id. Appeal 2020-004463 Application 14/506,209 6 The Examiner also finds that Kitko teaches that their “composition may further include conditioning agents, inducing silicones and hydrocarbons (e.g. paragraph 0068, 0109-0111) and [Braksmayer] (e.g. paragraph 0002) teach[es] their products as renewable alternatives to petroleum based ingredients and provide conditioning and moisturizing effects.” Id. at 6–7. The Examiner concludes that “it would have been obvious to one of ordinary skill in the art at the time of the instant invention to substitute the hydrocarbon conditioning agents of [Kitko] with the metathesized unsaturated polyol esters of Braksmayer” and would have predicted success “as both the conditioning agents and the metathesized unsaturated polyol esters provide a similar benefit and function in a hair composition.” Id. at 6–7. The Examiner also finds that one of skill “would have been motivated to select [the metathesized unsaturated polyol esters] in order to obtain the renewability as well as the increased skin hydration and improvement in skin barrier, as taught by Braksmayer.” Id. at 7. Appellant asserts that Kitko in view of Braksmayer does not disclose a “pre-emulsified” emulsion but “only discloses sucrose polyesters and is silent with regard to pre-emulsified metathesized unsaturated polyol esters and fatty esters.” Appeal Br. 10. According to Appellant, “[o]ne of skill in the art would not look to [Kitko] which only discloses sucrose polyesters and be motivated to combine with [Braksmayer] and arrive at the present invention” of having a pre-emulsified emulsion. Id. Appellant contends that, “[i]n contrast, [Kitko] discloses that the conditioning compositions can be in the form of rinse-off products or leave on products, and can be formulated in a wide variety of product forms, including, but not limited to creams, gels, emulsions, mousses and sprays.” Id. (citing Kitko ¶ 195). Appeal 2020-004463 Application 14/506,209 7 Appellant further contends that the term “pre-emulsion” is defined in the Specification as “any stable emulsion or dispersion of a conditioning material (or other material) such as oil, viscous liquid, viscoelastic liquid, or solid in an aqueous medium, separately prepared and used as one of the components of a personal care composition.” Id. at 12–13 (citing Spec. 4). According to Appellant, Kitko in view of Braksmayer “does not disclose a ‘preemulsion’ that is separately prepared and used as one of the components of a personal care composition.” Id. at 13 (bolded emphasis omitted). Furthermore, according to Appellant, the Examiner’s findings that it would have been obvious to one of ordinary skill in the art to substitute the hydrocarbon conditioning agents of Kitko for the metathesized unsaturated polyol esters of Braksmayer are “mere conclusory statements with no basis other than the [Final] Office Action opinion” and use impermissible hindsight. Id. at 11–12. According to Appellant, “the Final Office Action fails to show that a skilled artisan would have had any motivation to modify [Kitko] in view of [Braksmayer] as cited, in the manner suggested in the Final Office Action” because “there is no identified reason” that would have prompted a person of ordinary skill “to substitute the hydrocarbon conditioning agents of [Kitko] for the metathesized unsaturated polyol esters of Braksmayer just in view that both are compositions which are useful as hair care compositions.” Id. (emphasis omitted). Lastly, Appellant asserts that the Specification provides evidence of unexpected results in Table 13 and that “[i]t is surprising to find that the combination of soy oligomer and gel matrix created synergy to significantly enhance wet and dry combing while maintaining higher dry static friction index (Ex. 23 vs. Ex. 22, Ex. 43).” Id. at 14 (citing Spec. 59 (Table 13)). Appeal 2020-004463 Application 14/506,209 8 We find that the Examiner has the better position. Kitko and Braksmayer disclose “pre-emulsified emulsion[s]” as that term is used in the Specification. Kitko discloses that “[s]hampoo formulations of the present invention incorporate sucrose polyesters via either pre-emulsification or crystallization in-situ.” Kitko ¶ 34 (emphasis added). Furthermore, Braksmayer teaches that the emulsions disclosed therein may be used in hair care products and that “[t]he emulsions of the invention may be incorporated into formulations by simple mixing. The fine particle size provides thorough and homogeneous incorporation with other formulation ingredients.” Braksmayer ¶¶ 106–107. We agree with the Examiner that the disclosure in Braksmayer “describe[s] pre-emulsions to be added to other formulations and meets Appellant[’s] definition of ‘pre-emulsion.’” Ans. 4. We also agree with the Examiner that it would have been obvious to one of ordinary skill at the time of the invention to include the unsaturated polyol esters of Braksmayer in the composition of Kitko. Braksmayer teaches emulsions comprising metathesized unsaturated polyol esters and disclose that these metathesized unsaturated polyol esters can be used as substitutes for petrolatum-like ingredients in products such as hair care compositions. Braksmayer ¶¶ 15–17, 91, 106. Furthermore, one of ordinary skill in the art would have been motivated to use the metathesized unsaturated polyol esters of Braksmayer because Braksmayer discloses that these compositions are renewable, as opposed to petroleum-based product, and are capable of providing significant increased skin hydration. Braksmayer ¶¶ 2, 106, 142, 144. Therefore, one of ordinary skill in the art would have been motivated to use the metathesized unsaturated polyol esters of Braksmayer in the Appeal 2020-004463 Application 14/506,209 9 compositions of Kitko due to their renewable nature and would have had a reasonable expectation of success because both Kitko and Braksmayer are directed to hair compositions having a conditioning effect. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Here, the use of metathesized unsaturated polyol esters of Braksmayer in the compositions of Kitko is no “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). With respect to Appellant’s asserted evidence of unexpected results, we agree with the Examiner that Appellant has not compared their results to the closest prior art. “To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). In this case, Kitko teaches the inclusion of the sucrose polyester Sefose and a gel matrix in hair care compositions, which provide conditioning and effect the wet and dry combing ease. Kitko ¶¶ 24, 31–34, 199–202. Appellant has not shown how their results compare to the compositions disclosed in Kitko. Furthermore, the data presented by Appellant is not commensurate in scope with the claims. “The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains.” In re Dill, 604 F.2d 1356, 1361 (CCPA 1979). Claim 1 is fairly Appeal 2020-004463 Application 14/506,209 10 broad in that it recites, for example, a composition comprising “from about 0.25% to about 80% of a pre-emulsified emulsion comprising from about 0.005% to about 80%” of the metathesized unsaturated polyol ethers or fatty esters. Here, Appellant presents data to show unexpected results for only a single example (Ex. 23). See Appeal Br. 13–14. This limited set of data is not enough to show that any unexpected results would occur for other compositions falling within the scope of the claim. Therefore, we affirm the Examiner’s rejection of claim 1 as being obvious over Kitko in view of Braksmayer. Claims 2, 3, 6–20, and 23–29 are not argued separately apart from the independent claim, and, therefore, fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Rejection of claims 21 and 22 under 35 U.S.C. § 103 as being unpatentable over Kitko in view of Braksmayer, and further in view of Schwartz The Examiner’s findings with regard to Kitko and Braksmayer are discussed above. The Examiner acknowledges that neither Kitko nor Braksmayer teaches the presence of layered zinc-containing material or zinc carbonate. Final Act. 10. However, the Examiner finds that this deficiency is cured by Schwartz which teaches “zinc-containing layered materials, comprising basic zinc carbonate, for use as an anti-dandruff agent in hair care products.” Id. (citing Schwartz ¶¶ 3, 17, 30–36, 50). The Examiner also finds that Schwartz “teach[es] that it has surprisingly been found that anti-dandruff efficacy can be dramatically increased in topical compositions by the use of salts of pyrithione, such as zinc pyrithione in combination with zinc-containing layered materials.” Id. (citing Schwartz ¶12). The Examiner finds that it would have been obvious for one of ordinary skill in the art to include a layered zinc-containing material, Appeal 2020-004463 Application 14/506,209 11 including basic zinc carbonate, in the composition of Kitko and Braksmayer because the compositions of Kitko “include anti-dandruff agents including zinc pyrithione” and “[o]ne of ordinary skill in the art would have been motivated to include the layered zinc-containing materials of [Schwartz] as they are taught to work surprisingly well in combination with zinc pyrithione.” Id. The Examiner further finds that “[o]ne would have predicted success as all the references are drawn to hair care compositions including shampoos and conditioners.” Id. In response, Appellant primarily makes the same arguments as those put forth for the obviousness rejection over Kitko and Braksmayer. See Appeal Br. 15–19. For the reasons discussed above, we are not persuaded by those arguments. Appellant also asserts that there is no identified reason that would have prompted a person of ordinary skill in the art “for a random addition of a layered zinc-containing material, just in view that all are compositions which are useful as hair care compositions” and that this is hindsight reconstruction. Id. at 19. We find that the Examiner has the better position. Schwartz discloses the use of zinc-containing layered material as an anti-dandruff agent in hair care products and that the anti-dandruff efficacy can be increased by the use of salts of pyrithione, such as zinc pyrithione, in combination with these zinc-containing layered materials. Schwartz ¶¶ 3, 17, 30–36, 50. The compositions of Kitko include anti-dandruff agents such as zinc pyrithione. Kitko ¶¶ 12, 123–125, 140, 151. Therefore, it is not impermissible hindsight to conclude that one of ordinary skill in the art would have been motivated to include the layered zinc-containing materials of Schwartz in the compositions of Kitko in order to enhance their anti-dandruff efficacy and Appeal 2020-004463 Application 14/506,209 12 would have had a reasonable expectation of success in doing so. Thus, we affirm the Examiner’s rejection of claims 21 and 22 as obvious over Kitko in view of Braksmayer, and further in view of Schwartz. Rejection of claims 1–3 and 6–29 for nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 9,655,821 in view of Kitko The Examiner finds that claims 1–3 and 6–29 are not patentably distinct from claim 26 of U.S. Patent No. 9,655,821 in view of Kitko. Final Act. 12. Appellant presents no arguments with respect to this rejection. See Appeal Br. 1–19. Therefore, we affirm. Rejection of claims 1–3 and 6–29 for nonstatutory double patenting as being unpatentable over claims 1–30 of Application No. 14/506,229 in view of Kitko The Examiner finds that claims 1–3 and 6–29 are not patentably distinct from claims 1–30 of Application No. 14,506,229 in view of Kitko. Final Act. 13. We note that the ’229 application issued as U.S. Patent No. 10,806,688 on October 20, 2020. Therefore, this is no longer a provisional rejection. Appellant presents no arguments with respect to this rejection See Appeal Br. 1–19. Therefore, we affirm. CONCLUSION For the reasons described herein and those already of record, we affirm the Examiner’s rejection of claims 1–3 and 6–29. Appeal 2020-004463 Application 14/506,209 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–20, 23–29 103 Kitko, Braksmayer 1–3, 6–20, 23–29 21, 22 103 Kitko, Braksmayer, Schwartz 21, 22 1–3, 6–29 Nonstatutory Double Patenting US 9,655,821 B2 1–3, 6–29 1–3, 6–29 Nonstatutory Double Patenting US Application No. 14/506,229 1–3, 6–29 Overall Outcome 1–3, 6–29 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