Alexandra Bazito et al.Download PDFPatent Trials and Appeals BoardSep 6, 201914128262 - (D) (P.T.A.B. Sep. 6, 2019) Copy Citation 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. 14/128,262 04/04/2014 Alexandra Bazito 3735USPCT 1797 67749 7590 09/06/2019 Ashland LLC WILLIAM J. DAVIS, ESQ. 1005 U.S. 202/206 Bridgewater, NJ 08807 EXAMINER HOLLOMAN, NANNETTE ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 09/06/2019 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): ntietcheu@ashland.com schen@ashland.com wdavis@ashland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ALEXANDRA BAZITO, LILIANA COLORE BRENNER, and MARIA REGINA BARTUCCIO RAPONI __________ Appeal 2018-004950 Application 14/128,262 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to a complex for improvement of distribution and retention of fragrances into keratinous matter. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as ISP Investments LLC (App. Br. 2). 2 We have considered and herein refer to the Specification of Dec. 20, 2013 (“Spec.”); Final Office Action of Mar. 22, 2017 (“Final Action”); Appeal Brief of Oct. 24, 2017 (“App. Br.”); Examiner’s Answer of Feb. 8, 2018 (“Answer”); and Reply Brief of Apr. 9, 2018 (“Reply Br.”). Appeal 2018-004950 Application 14/128,262 2 Statement of the Case Background The technology related to perfumes is very multifaceted. The olfactory perception is caused by the presence of odor molecules in the air, which are formed from the evaporation of volatile liquids that are included in the product composition. Thus, the nature, concentration and behaviors of these substances are important factors to be considered during the fragrance development and its inclusion into the various cosmetic bases. (Spec. 1:13–19). A “complex composition was developed which increases the perception of the fragrance for initial and long time when it is applied to the substrates, even when the cosmetic product is for the rinse” (id. 3:18– 21). The Specification teaches “when the mixture ‘complex + fragrance’ is incorporated in the cosmetic base, such as in a shampoo, micro emulsion particles are obtained, which guarantee an increase in contact area and thus providing greater interaction with the substrate” (id. 4:28–32). The Claims Claims 1, 2, 4, 7, 9–12, and 14–21 are on appeal. Claim 1 is the sole independent claim, is representative and reads as follows: 1. Complex for improvement of distribution and retention of fragrances into keratinous matter consisting essentially of: (A) a C10-C18 alkyl pyrrolidone present in an amount of 40 to 60% by weight, (B) at least one polyol compound having two hydroxyl groups, and/or three hydroxyl groups present in the amount of 40 to 60% by weight; and (C) optionally at least one fatty alcohol. Appeal 2018-004950 Application 14/128,262 3 The Rejection The Examiner rejected claims 1, 2, 4, 7, 9–12, and 14–21 under 35 U.S.C. § 103(a) as obvious over Janchitraponvej3 and Taylor4 (Final Act. 3–5). The Examiner finds Janchitraponvej teaches “shampoo compositions comprising coupling agents, such as lauryl pyrrolidone, propylene glycol, glycerol and mixtures thereof at a concentration of 0% to 20%; and a carrier, such as propylene glycol at a concentration of 5 to 25% . . . [and] conditioning compositions comprising 0.3% fragrance” (Final Act. 4). The Examiner acknowledges Janchitraponvej does “not disclose improvement of distribution and retention of fragrances” (Final Act. 4). The Examiner finds Taylor teaches a “personal care composition comprising 3% or less of a perfume that enhance perfume longevity by preparing a perfume 'accord' that comprises high proportion of individual perfume raw materials that are individually inclined to longevity” (Final Act. 4). The Examiner finds Taylor teaches “a composition comprising about 0.3 to about 15% of a structurants, such as fatty alcohols and lauryl pyrrolidone . . . [and] comprising 0.3%, 0.5% and 0.8% glycerin” (Final Act. 4). The Examiner finds it obvious to “have used the perfume of Taylor as the fragrance of Janchitr[a]ponvej motivated by the desire to increase the fragrance longevity at a lower cost and a desirable viscosity and latherability to consumers due to the lower total perfume level as taught by Taylor” (Final Act. 4). 3 Janchitraponvej et al., US 5,328,685, issued July 12, 1994. 4 Taylor et al., US 2007/0117729 A1, published May 24, 2007. Appeal 2018-004950 Application 14/128,262 4 The issue with respect to this rejection is: Does a preponderance of the evidence of record support the Examiner’s conclusion that Janchitraponvej and Taylor render the claims obvious? Findings of Fact 1. Janchitraponvej teaches “a clear conditioning composition and [] a method of treating hair that imparts improved conditioning properties to hair” (Janchitraponvej 1:5–7). 2. Janchitraponvej teaches a “coupling agent, or a mixture of coupling agents, is present in an amount of 0% to about 20% by weight of the composition[, e]xemplary, but nonlimiting nonionic surfactants include . . . lauryl pyrrolidone” (Janchitraponvej 14:1–9). 3. Janchitraponvej teaches the “optional polyhydric compound can be a glycol . . . [s]pecific examples include . . . propylene glycol” (Janchitraponvej 14:15–18). 4. Example 5 of Janchitraponvej discloses the use of 0.3 weight percent fragrance in the composition (see Janchitraponvej 15:67). 5. Taylor teaches “perfume longevity can be obtained by preparing a perfume ‘accord’ that comprises a high proportion of individual PRMs that are individually inclined to longevity. The longevity benefit can be obtained at a lower cost and a desirable viscosity and latherability to consumers due to the lower total perfume level” (Taylor ¶ 8). 6. Taylor teaches the composition can “further comprise a liquid crystalline phase inducing structurant, which when present is at concentrations ranging from about 0.3% to about 15%” (Taylor ¶ 57). 7. Taylor teaches the composition can comprise 0.3 or 0.5 weight percent glycerin (Taylor ¶ 89, Table 4). Appeal 2018-004950 Application 14/128,262 5 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 The Examiner contends that “when equal parts of components (A) and (B) are present within the composition, the ‘complex’ would contain an overlap of ranges, i.e. 50% alkyl pyrrolidone and 50% of at least one polyol compound and meet the claimed limitations” (Ans. 6). Appellants contend it appears that the Examiner is firstly creating a hypothetical “complex” from the described composition, even though there is no suggestion or motivation provided to create this hypothetical complex. Secondly, the Examiner next asserts that when equal amounts of components (A) and (B) are present in this hypothetical complex, then the concentrations of the components falls within the present claims. However, Appellant[s] respectfully assert[] there is no basis from which the Examiner has created this hypothetical “complex.” Further, the creation of this hypothetical “complex” ignores the teachings of the cited references by negating the additional components of the described compositions. (Reply Br. 3). We begin with claim interpretation, since before a claim is properly interpreted, its scope cannot be compared to the prior art or analyzed for patent eligibility. In claim 1, the term at issue is “[c]omplex . . . consisting essentially of” at least two elements, a pyrrolidone and a polyol, each in Appeal 2018-004950 Application 14/128,262 6 amounts of 40 to 60% by weight. That is, claim 1 requires formation of a composition containing at least 40% by weight of each of pyrrolidone and polyol, leaving no more than 20% for other constituents. This interpretation is consistent with the Specification, where Example 1 teaches formation of complex formulations, including a complex 2 in Table 2 that falls within the recitation of claim 1 (see Spec. 7). These complexes are then added to other formulations, including shampoo formulations, as shown in Example 2, Tables 5 and 6 of the Specification (see Spec. 8–9). Claim 1 therefore can be reasonably interpreted as limited to a composition comprising at least 40% by weight of each of pyrrolidone and polyol. Based on this claim interpretation, we agree with Appellants that neither Janchitraponvej nor Taylor teach or suggest a composition that includes 40% by weight of each of a C10-C18 alkyl pyrrolidone and a polyol having two or three hydroxyl groups. At best, Janchitraponvej teaches compositions that may include 20% by weight of each of these components (FF 2–3). The Examiner provides no persuasive reason to increase the amount of either component to 40% or suggest that such an increase would be routine optimization. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (“Where, as here, the prior art disclosure suggests the outer limits of the range of suitable values, and that the optimum resides within that range . . . the determination of optimum values outside that range may not be obvious.”) To the extent that the Examiner is arguing that the two components necessarily form some sort of complex within a larger composition (such as Appeal 2018-004950 Application 14/128,262 7 the composition of Taylor in Table 4) and that the resulting complex necessarily results in a concentration of the two components within such a hypothetical complex of at least 40%, the Examiner has provided no evidence to support this argument (see Ans. 4–5). “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). Just as Appellants would be unable to assert that a larger composition that comprised less than 40% by weight of either a C10-C18 alkyl pyrrolidone or a polyol having two or three hydroxyl groups falls within the scope of the claims based on an interaction between these components, so to the Examiner cannot rely upon such an interaction to establish obviousness. Conclusion of Law A preponderance of the evidence of record does not support the Examiner’s conclusion that Janchitraponvej and Taylor render the claims obvious. SUMMARY In summary, we reverse the rejection of claims 1, 2, 4, 7, 9–12, and 14–21 under 35 U.S.C. § 103(a) as obvious over Janchitraponvej and Taylor. REVERSED Copy with citationCopy as parenthetical citation