Yun Shao et al.

Patent Trials and Appeals Board

Jan 14, 2022

2021001976 (P.T.A.B. Jan. 14, 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. 13/391,590 02/21/2012 Yun Shao T8810-00-US-01-PC 7771 23909 7590 01/14/2022 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER GREENE, IVAN A ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 01/14/2022 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): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUN SHAO, DAVID SCHLOSSMAN, NERINGA KONTRIMIENE, and ARIEL HASKEL Appeal 2021-001976 Application 13/391,590 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, 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 19-26. 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 Colgate-Palmolive Company as the real party-in-interest. Appeal Br. 2. Appeal 2021-001976 Application 13/391,590 2 CLAIMED SUBJECT MATTER The Specification describes a desire to create a pigment that can adhere to skin, which can be delivered from a cleaning composition. Spec. ¶ 3. The Specification also describes a composition comprising a pigment particle that is coated with Polyquaternium-67 and methods of increasing gloss on a substrate comprising applying the composition to the substrate. Id. at ¶ 4. Independent claim 19, the only independent claim, is illustrative of the claimed subject matter and is reproduced below: 1. A method for preparing a body wash, shower gel, liquid hand soap or bar soap composition comprising a pigment particle pre-coated with a Polyquatemium-67, the method comprising the steps of: (a) preparing a pigment particle coated with Polyquatemium-67, by: (i) dissolving the Polyquatemium-67 in water in a vessel to form a mixture; (ii) adding the pigment particle to the mixture in step (i); (iii) drying the mixture from step (ii); (iv) cooling the dried mixture thereby producing the pigment particle coated with Polyquatemium-67; and (v) optionally sieving the mixture from step (iv) to remove agglomerate to produce a sieved powder; and (b) combining the coated pigment particle or sieved powder with one or more components of the body wash, shower gel, liquid hand soap or bar soap selected from anionic Appeal 2021-001976 Application 13/391,590 3 surfactants, amphoteric surfactants, nonionic surfactants, suspending agents, oil and petrolatum. Appeal Br. 12 (Claims App.). REJECTION The Examiner rejected claims 19-22 and 25-26 under 35 U.S.C. § 103 as being unpatentable over Mellul2 in view of Colaco,3 Kreeger,4 SoftCAT SK,5 and Jordan,6 and as evidenced by Leverett.7 The Examiner rejected claims 23 and 24 under 35 U.S.C. § 103 as being unpatentable over Mellul in view of Colaco, Kreeger, SoftCAT SK, and Jordan, and further in view of Hesse.8 The Examiner rejected claims 19-22 and 25-26 under 35 U.S.C. § 103 as being unpatentable over Wagner9 in view of Mellul, Colaco, Kreeger, SoftCAT SK, and Jordan, and as evidenced by Leverett. The Examiner rejected claims 23 and 24 under 35 U.S.C. § 103 as being unpatentable over Wagner in view of Mellul, Colaco, Kreeger, SoftCAT SK, and Jordan, and further in view of Hesse. 2 Mellul et al., US Pat. No. 6,083,491, issued Jul. 4, 2000 (“Mellul”). 3 Colaco et al., US 2009/0013481 A1, published Jan. 15, 2009 (“Colaco”). 4 Kreeger et al., US 2007/0031362 A1, published Feb. 8, 2007 (“Kreeger”). 5 SoftCAT SK Polymers, published April 2005 (“SoftCAT SK”). 6 Jordan et al., Effect of Hydrophobic Substitution on Cationic Conditioning Polymers, American Chemical Society, Symposium Series, Cosmetics Nanotechnology, Chapter 2, 59-71, 2007 (“Jordan”). 7 Jesse Leverett, US Pat. No. 6,132,739, issued Oct. 17, 2000 (“Leverett”). 8 Hesse et al., US Pat. No. 4,205,997, issued June 3, 1980 (“Hesse”). 9 Wagner et al., US 2005/0192188 A1, published Sept. 1, 2005 (“Wagner”). Appeal 2021-001976 Application 13/391,590 4 ISSUES AND ANALYSIS Rejection of claims 19-22 and 25-26 under 35 U.S.C. § 103 as being unpatentable over Mellul in view of Colaco, Kreeger, SoftCAT SK, and Jordan, and as evidenced by Leverett The Examiner finds that Mellul teaches cosmetic compositions including pigments coated with a cationic polymer to provide good adhesion to the skin and also teaches quaternary cellulose polymers such as JR 125 (i.e., Polyquaternium-10) as suitable coating agents. Final Act. 4 (citing Mellul title, abstract, 11:40). The Examiner further finds that Mellul teaches steps (i) to (iii) of claim 19. Id. (citing Mellul 12:62-67, 13:1-4). While the Examiner finds that Mellul does not expressly teach step (iv) of claim 19, which recites “cooling the dried mixture thereby producing” the coated particles, the Examiner finds that, because Mellul teaches heating, “one of ordinary skill would clearly have subsequently cooled the mixture for handling purposes.” Id. (citing MPEP § 3144.01). The Examiner acknowledges that Mellul does not expressly teach that the pigments are coated with Polyquaternium-67 nor does it teach combining the coated pigment particle or sieved powder with one or more components of the body wash, shower gel, liquid hand soap or bar soap selected from anionic surfactants, amphoteric surfactants, nonionic surfactants, suspending agents, oil and petrolatum, but finds that these elements are taught by other references. Id. at 6. Specifically, the Examiner finds that Colaco “teaches compositions containing pigments combined with a quaternary ammonium compound that can effectuate adsorption to anionic substrates, including methods of use” and also teaches that “their compositions further include a surfactant and oils, among other ingredients” as well as teaching the inclusion of anionic surfactants. Id. (citing Colaco ¶¶ 27, 42, 48, claims 5, Appeal 2021-001976 Application 13/391,590 5 12, 20). The Examiner further finds that Colaco teaches that “their compositions can be formulated as soap-like products such as body cleansers (i.e.[,] a body wash), and other soap-like products.” Id. at 7 (citing Colaco ¶¶ 27, 34) (emphasis omitted). The Examiner also finds that Colaco teaches polymethylmethacrylate iron oxide particles homogenized with polyquaternium-10 (“PQ-10”). Id. at 8 (citing Colaco ¶ 56). The Examiner further finds that Kreeger teaches cellulose ether polymers including Polyquaternium-67 and “teaches that the polymer coating is, in part, directed at increasing retention of the polymers on a solid surface such as hair or skin.” Id. at 8-9 (citing Kreeger claim 18, ¶¶ 4, 6). Kreeger further teaches that “[t]he most preferred end use application for cellulose ether derivatives of the present invention is as a component in hair or skin care compositions, such as shampoos, conditioners, hand or body lotions, soaps, and body wash formulations.” Id. at 9 (citing Kreeger ¶ 57). The Examiner also finds that the product literature for SoftCAT SK Conditioning Polymers (INCI Name: Polyquaterniun-67) teaches that the SOFTCAT SK Polymers have an “excellent ability . . . to deposit sunflower seed oil compared to [Polyquaternium-10].” Id. (citing SoftCAT SK, 2). The Examiner also finds that Jordan teaches that PQ-67 polymers were investigated in body wash systems and the “effect of molecular weight on deposition of sunflower seed oil onto Vitro-skin” was analyzed. Id. at 10 (citing Jordan, 67, Fig. 10). Lastly, the Examiner cites to Leverett which discloses that, “[s]ince human skin typically has a negative charge (and since opposite charges attract), the cationically-coated pigments tend to adhere to the anionic charge of the skin. This adherence enhances the transfer Appeal 2021-001976 Application 13/391,590 6 resistance so that the pigments will stay in place for longer periods.” Id. (citing Leverett, 6:63-67). The Examiner concludes that: It would have been prima facie obvious to one of ordinary skill in the art at the time the claimed invention was made to produce a cleansing composition comprising the steps of (i) dissolving a polymer in solution in a vessel to form a mixture; (ii) adding the powder to be coated (e.g.[,] a pigment particle) to the mixture in a vessel to form a mixture; and (iii) drying the mixture from step (ii) and subsequently cooled the mixture for handling purposes, as suggested by MULLUL, the a pigment particle pre-coated with the cationic polymer polyquaternium-67 because the prior art teaches catatonically coated pigment particles as benefit agents which adhere upon application to a surface such as the anionic skin (LEVERETT & MULLUL), and further directly suggests Polyquaternium polymers as suitable species for pre-coating pigment/filler particles, for example COLACO teaches PQ-10 coated pigments (Example 1) while KREEGER and the product literature for SoftCAT SK Conditioning Polymers each suggest PQ-67 as having superior properties to PQ-10. And while the body wash is considered an intended use, Jordan et al. clearly teaches that PQ-67 family of polymers were useful for body wash compositions and had increased deposition of hydrophobic substance (sunflower seed oil) in the skin of the user as compared with PQ-10 polymers. Id. at 11. The Examiner further finds that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because “it would have required no more than an ordinary level of skill in the art to which the invention pertains to produce a cleansing composition including a PQ-67 coated pigment/filler particle in accordance with the teachings of the cited prior art.” Id. at 12. Appellant asserts that “there is no legally sufficient motivation to combine the references in the manner suggested by the Examiner, and, even Appeal 2021-001976 Application 13/391,590 7 if so combined, there is no reasonable expectation of success in the combination” because Mellul and Leverett are both directed to cosmetics. App. Br. 6. According to Appellant, “Mellul is directed to cosmetic (make- up) compositions containing particles coated with a cationic polymer” and “Leverett describes make-up.” Id. Appellant contends that “[n]either reference contains any disclosure or suggestion whatsoever of the preparation of any cleansing formulation, much less a body wash, shower gel, liquid hand soap or bar soap.” Id. According to Appellant, make-up compositions are intended to stay in place once applied while wash-away compositions such as body washes are designed to adhere to dirt and be washed away. Id. Appellant contends that the coated pigment particles of the composition of the invention are retained on the skin while the rest of the body wash composition is washed away and Mellul does not suggest “the use of coated particles to effect adhesion of a single component (pigment particle) of a wash-away composition such as a body wash, or how to prepare such a composition.” Id. at 6-7. In the Reply brief, Appellant also argues that Mellul and Leverett are not analogous to the present claimed methods because “[t]he Examiner has not met the threshold requirement of establishing that the Mellul and Leverett stay-on makeup compositions relate to the specific problem of retaining a pigment particle on the skin in a composition that is designed to be washed away.” Reply 2. Appellant also asserts that Colaco “is overwhelmingly directed to deposition of benefit agents on hair” and only contains a single reference to “body cleansers.” Id. at 7 (citing Colaco ¶¶ 16, 18, 27). According to Appellant, “[t]here is nothing in Colaco or Mellul indicating that the Mellul Appeal 2021-001976 Application 13/391,590 8 process steps, used to prepare a particle for leave-on make-up, could be successfully used to create a coated particle that has the benefits espoused by Colaco.” Id. Lastly, Appellant contends that the other cited art does not disclose or suggest the use of a Polyquaternium-67 coated particle in a body wash, shower gel, liquid hand soap or bar soap composition and the discussion of experimental data in Kreeger is primarily directed to shampoo compositions. Id. at 8. Appellant further asserts that “both the Kreeger and SoftCAT studies are directed to the deposition of oil (specifically sunflower seed oil) contained in the formulation on in vitro skin” and that [n]either Kreeger nor SoftCAT disclose or suggest that Polyquaternium-67 polymers would be effective to pre-coat pigment particles and afford their deposition and retention on skin, and neither reference provides any legally sufficient motivation to utilize the Mellul process steps to create a PQ-67 coated pigment particle for use in a body wash, shower gel, liquid hand soap or bar soap as recited in the present claims. Id. at 8-9. We find that the Examiner’s position is supported by a preponderance of the evidence. We agree with the Examiner that “one of ordinary skill in the art would have recognized that deposition of benefit agents such as pigments would have been applicable to rinse off compositions such as a body wash, shower gel, liquid soap, or bar soap” because, for example, Colaco teaches the deposition of compositions containing pigments combined with quaternary ammonium compounds that can effectuate adsorption to anionic substrates like the human skin and also specifically teaches that “[t]he compositions of this invention may be utilized in any types of products that impart benefit agents to substrates, including . . . soap Appeal 2021-001976 Application 13/391,590 9 bars [and] foundations.” Reply 5-6. Based on this teaching, one of ordinary skill in the art would be aware that compositions useful for deposition of pigments to the skin using quaternary ammonium compounds can be included in soaps (i.e., wash-away compositions) as well as foundation (i.e., compositions that are intended to be retained on the skin). With regard to Appellant’s arguments that Mellul and Leverett are not analogous to the claimed methods, we do not find this non-analogous art argument persuasive. The test for non-analogous art is, first, whether the art is within the field of the inventor’s endeavor and, second, if it is not, whether it is “reasonably pertinent to the particular problem with which the inventor was involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably pertinent if, even though it may be in a different field” of endeavor, it logically would have commended itself to an inventor's attention in considering his problem “because of the matter with which it deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Even if we were to accept Appellant’s arguments that Mellul and Leverett are not in the same field of endeavor as the invention because they are not cleansing compositions, they are still “reasonably pertinent” to the problem of preparing compositions with coated pigments for deposition on the skin. A person of ordinary skill in the art at the time of the invention would have looked to the disclosures of Mellul and Leverett to determine steps for preparing such compositions. Further, as discussed above, one of ordinary skill in the art would also have been motivated to use the process of Mellul in a body wash composition based on the teachings of Colaco that compositions useful for deposition of pigments to the skin using quaternary ammonium compounds can be included in wash-away compositions, such as Appeal 2021-001976 Application 13/391,590 10 soaps, as well as in compositions that are intended to be retained on the skin, such as makeup. In response to Appellant’s argument that Colaco only contains a single reference to “body cleansers,” we note that Colaco also refers to other “soap- like products” as well as “soap bars.” Colaco ¶¶ 27, 34. However, even if we were to agree with Appellant that Colaco is primarily directed to the deposition of benefit agents on hair, it still includes disclosure of body cleansers, soap-like products, and soap bars. “[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered.” In re Lamberti, 545 F.2d 747 (CCPA 1976). With regard to Appellant’s argument that “[t]here is nothing in Colaco or Mellul indicating that the Mellul process steps, used to prepare a particle for leave-on make-up, could be successfully used to create a coated particle that has the benefits espoused by Colaco,” we agree with the Examiner that there is nothing in Mellul indicating that the process steps disclosed in Mellul could not be used in a soap-like product and Appellant has not presented any evidence that this is the case beyond mere assertions to that effect. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). To the contrary, Colaco teaches that compositions useful for deposition of pigments to the skin using quaternary ammonium compounds can be included in wash-away compositions, such as soaps, as well as in compositions that are intended to be retained on the skin, such as makeup. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appeal 2021-001976 Application 13/391,590 11 In response to Appellant’s arguments regarding PQ-67, we agree with the Examiner that Mellul expressly teaches coating pigments with PQ-10, and given that the polyquaternium polymers PQ-10 and PQ-67 are of the same class, it would have required no more than an ordinary level of skill to substitute PQ-67 for PQ-10 in the process of Mellul, a substitution that is suggested by SoftCAT SK. SoftCAT SK specifically discusses use of PQ-67 in skin cleansers and body wash formulations and discloses that PQ-67 has better ability to deposit sunflower seed oil to the skin as compared to PQ-10. See SoftCAT SK, 2. Based on this teaching, one of ordinary skill in the art would have been motivated to replace the PQ-10 disclosed in Mellul with the PQ-67 disclosed in SoftCAT SK in order to provide a body wash comprising a PQ-67-coated pigment for deposition on the skin and would have had a reasonable expectation of success in doing so. Based on the above, we affirm the Examiner’s rejection of claim 19 as being unpatentable over Mellul in view of Colaco, Kreeger, SoftCAT SK, and Jordan, and as evidenced by Leverett. Claims 20-22 and 25-26 are not argued separately apart from the independent claim, and, therefore, fall with claim 19. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-001976 Application 13/391,590 12 Rejection of claims 23 and 24 under 35 U.S.C. § 103 as being unpatentable over Mellul in view of Colaco, Kreeger, SoftCAT SK, and Jordan, and further in view of Hesse. Appellant relies on the same arguments discussed above for this rejection. See Appeal Br. 9. Thus, for the same reasons, we affirm the Examiner’s rejection of these claims. Rejection of claims 19-22 and 25-26 under 35 U.S.C. § 103 as being unpatentable over Wagner in view of Mellul, Colaco, Kreeger, SoftCAT SK, and Jordan, and as evidenced by Leverett. Appellant primarily relies on the same arguments discussed above for this rejection. See Appeal Br. 9-10. Appellant further contends that Wagner does not provide motivation to utilize the Mellul process steps to create a PQ-67 coated pigment particle for use in a body wash. Id. at 10. For the reasons discussed above, we find that one of skill in the art would be so motivated. Thus, for the same reasons, we affirm the Examiner’s rejection of these claims. Rejection of claims 23 and 24 under 35 U.S.C. § 103 as being unpatentable over Wagner in view of Mellul, Colaco, Kreeger, SoftCAT SK, and Jordan, and further in view of Hesse. Appellant relies on the same arguments discussed above for this rejection. See Appeal Br. 10-11. Thus, for the same reasons, we affirm the Examiner’s rejection of these claims. CONCLUSION For the reasons described herein and those already of record, we affirm the Examiner’s rejection of claims 19-26. Appeal 2021-001976 Application 13/391,590 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 19-22, 25-26 103(a) Mellul, Colaco, Kreeger, SoftCAT SK, Jordan, Leverett 19-22, 25-26 23, 24 103(a) Mellul in view of Colaco, Kreeger, SoftCAT SK, Jordan, Hesse 23, 24 19-22, 25-26 Wagner, Mellul, Colaco, Kreeger, SoftCAT SK, Jordan, Leverett. 19-22, 25-26 23, 24 Wagner, Mellul, Colaco, Kreeger, SoftCAT SK, Jordan, Hesse. 23, 24 Overall Outcome 19-26 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED