Ex Parte AKIBA et al

Patent Trial and Appeal Board

May 17, 2018

14898526 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/898,526 12/15/2015
7055 7590 05/21/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Mitsuhiro AKIBA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P48407 7792
EXAMINER
ELHILO, EISA B
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUHIRO AK.IBA, KENICHIRO SUZUKI,
MICHIHIRO GONDA, AND MASATOSHI ISOBE
Appeal2017-008174
Application 14/898,526
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and LILAN REN,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5 and 7-9. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a hair dyeing composition and methods for
making and using it. Claim 1 is illustrative:
1. A composition for hair dyeing comprising:
a colorant comprising:
a compound represented by formula (I)
shown below:
Appeal2017-008174
Application 14/898526
wherein
-
An
R1 , R2 and R3 each independently represent
a hydrogen atom, a linear or branched alkyl group
having from 1 to 6 carbon atoms, or a linear or
branched alkoxy group having from 1 to 6 carbon
atoms, and
An- represents an inorganic anion or an
organic an10n;
(I)
at least one auxiliary agent selected from the group
consisting of a moisturizer, a swelling agent, a penetrant, a
solvent, a pH regulator, a fragrance, and a thickener;
Hercouet
a cationic or nonionic surfactant; and
water.
The Reference
US 2007 /0006398 Al
The Rejection
Jan. 11, 2007
Claims 1-5 and 7-9 stand rejected under 35 U.S.C. § I02(a)(l) over
Hercouet.
OPINION
We reverse the rejection. We need address only claim 1, the
limitations of which are required by all claims. Claim 1 requires a colorant
having formula (I) and a cationic or nonionic surfactant.
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Appeal2017-008174
Application 14/898526
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. US.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Hercouet discloses a hair dyeing composition which can comprise at
least one cationic heterocyclic direct dye which can be Basic Yellow 28 or
Basic Yellow 29 (i1i1129, 139), both of which are within the Appellants'
claim 1 's formula (I) (Ans. 2-3; Spec. ,r,r 21, 22), and at least one adjuvant
which can be anionic, cationic, nonionic, amphoteric or zwitterionic
surfactants or mixtures thereof (i-f 228).
The Examiner states that "[o]nly [Hercouet's] Example 2 is used to
reject the claims" (Ans. 7). The Examiner finds that Example 2's oleyl
alcohol polyglycerolated with glycerol is a nonionic surfactant (Ans. 5, 7).
The Appellants challenge that finding, asserting that the oleyl alcohol
polyglycerolated with glycerol is an emulsifier (App. Br. 11 ). Accordingly,
we do not accept the Examiner's finding as fact. See In re Kunzmann, 326
F.2d 424, 425 n.3 (CCP A 1964).
Because the Examiner has not supported with evidence the finding
that Hercouet's Example 2's oleyl alcohol polyglycerolated with glycerol is
a nonionic surfactant, the Examiner has not established that Hercouet's
Example 2 discloses every limitation of the Appellants' claim 1.
Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 1-5 and 7-9 under 35 U.S.C. § I02(a)(l) over
Hercouet is reversed.
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Appeal2017-008174
Application 14/898526
It is ordered that the Examiner's decision is reversed.
REVERSED
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