Ex Parte Aylor et al

Patent Trial and Appeal Board

Feb 2, 2017

13507607 (P.T.A.B. Feb. 2, 2017)

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.
13/507,607 07/14/2012 Robert Benson Aylor AYLOR-US5 9965
7590
Robert B. Ay lor
9502 Bluewing Terrace
Cincinnati, OH 45241
EXAMINER
HEYER, DENNIS
ART UNIT PAPER NUMBER
1628
MAIL DATE DELIVERY MODE
02/02/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BENSON AYLOR
and LEIGH HEATHER MAKOVER1
Appeal 2016-004053
Application 13/507,607
Technology Center 1600
Before MELANIE L. McCOLLUM, RICHARD J. SMITH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
shampoo or skin conditioning product. The Examiner has rejected the
claims as anticipated or obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 Appellants identify themselves as the real parties in interest (App. Br. 1).
Appeal 2016-004053
Application 13/507,607
STATEMENT OF THE CASE
Claims 1—4, 6, 8, and 21 are on appeal (App. Br. 1 & 10-11).2
Claims 1, 4, and 8 are representative and read as follows:
1. A shampoo or skin conditioning product free of ingredients that
irritate the skin comprising an effective amount of mild vasodilator
compound that can penetrate the skin for either: A) treating a migraine
headache; or B) preventing loss of hair or aiding growth of hair; or
C. minimizing wrinkles or improving skin appearance and health, said
product being in a container in association with instructions either to apply
the product to the head and/or neck to treat a migraine headache; or to apply
the product to the head to inhibit loss of hair and promote hair growth; or to
apply the product to wrinkled or rough skin to minimize the wrinkles and
improve the appearance and health of the skin.
4. The product of Claim [1 wherein said compound is linalool]
wherein the product is a shampoo, contains from about 1/2% to about 5%
linalool and from about 1% to about 10% surfactant and is in a container in
association with instructions to use the product as a shampoo to alleviate or
prevent the harmful effects of a migraine headache.
8. The product of Claim [1 wherein said compound is linalool and the
product is a skin conditioning product for direct application to the head
including the back of the neck to treat migraine headaches] wherein the
product contains from about one to about five percent linalool and less than
about 10% surfactant.
Claims 1—3, 6, 8, and 21 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Hink et al. (US 4,933,371, June 12, 1990) (Ans. 2).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious over
Hink (id. at 9).
2 Claims 5, 7, 9, 10, 12—15, and 17—20 are also pending but have been
withdrawn from consideration (App. Br. 1).
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ANTICIPATION
The Examiner finds that “Hink teaches a method for controlling ticks
and fleas with compositions comprising the elected mild vasodilator
compound linalool” (Ans. 2). The Examiner also finds that “Hink teaches,
in a preferred method, the linalool is applied to the coat of an animal,
wherein the linalool is preferably applied as a shampoo, dip or spray” (id. at
3). In addition, the Examiner finds:
Hink teaches shampoo compositions containing either 1%
linalool (Example II) or 5% linalool (Example IV) .... The
amount of linalool taught by Hink in Examples II and IV are
effective in controlling ticks and fleas and, further, as evidenced
by the embodiment of instant Claims 8 and 21, are present in an
amount effective to treat migraine headaches.
(Id. ) The Examiner also finds that “Hink teaches the shampoo compositions
are applied on the skin and hair of an animal in a conventional manner” (id. ).
In addition, the Examiner finds that, “because the linalool compositions of
Hink contain ingredients in amounts suitable for application to the skin of an
animal. . ., the compositions of Hink are considered to be free of
ingredients that irritate the skin” (id. at 3 4).
The Examiner also finds that Hink “teaches ‘pump spray’
compositions, wherein said pump sprays are liquid compositions for use in a
hand-held container” (id. at 4). On the other hand, the Examiner finds:
Hink does not explicitly teach the shampoo compositions are in
a container as required by instant Claim 1. However, one of
ordinary skill would consider it implicit, using the broadest
reasonable interpretation of the term “container”, that Hink’s
teaching of shampoo compositions (e.g. in Example’s II and IV)
that are applied in a conventional manner and formed by
combining a shampoo base containing 6 components (i.e. the
shampoo base of Example I) and linalool and then applied to the
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skin . . . and hair o[f] an animal, require the composition, prior
[]to application, to be ‘contained’ and thus be present in a
“container”; absent evidence to the contrary.
(Id. at 5.)
With regard to claim 8, the Examiner additionally finds that the
“linalool pump spray composition[] of [Hink’s] Example IX comprises
5 percent linalool and 95 percent of a solution of water and SDA-40 by
weight and do[es] not appear to contain a surfactant, thus meeting the
limitation of amended instant Claim 8 (a composition containing less than
[] 10% surfactant)” (id. at 4).
Analysis
Upon review of the Final Rejection and Examiner’s Answer, we
conclude that the Examiner has set forth a prima facie case, which is
summarized above, that Hink anticipates claims 1 and 8.
Appellants argue: “The pump spray is not a shampoo. If the Hink et
al spray could be used as a shampoo, it would have to contain surfactant
which is not disclosed. Modification of the pump spray to obtain a shampoo
would not result in an ‘anticipation’ of the present claims.” (App. Br. 5.)
We are not persuaded.
We note initially that claim 1 recites a shampoo or skin conditioning
product. Hink specifically discloses that a “pump spray is a liquid for use in
a hand-held container for spraying directly onto the coat of an animal,
and/or onto bedding, carpets and other environmental surfaces” (Hink,
col. 5,11. 53—56 (emphasis added)). Even if we agree with Appellants that
the pump spray is not a shampoo, Appellants have not adequately explained
why the pump spray would not be considered a skin conditioning product.
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We acknowledge Appellants’ argument “that killing ticks and fleas
does not condition the skin” (Reply Br. 6). However, the Specification
discloses the use of its product, which contains a mild vasodilator that can
penetrate the skin, such as linalool, “for minimizing wrinkles, improving the
skin’s condition, and increasing hair growth and/or minimizing hair loss
where the compounds/products are applied” (Spec. 2: 21—28 & 3: 17
(emphasis added)). Thus, whether or not killing ticks and fleas conditions
the skin, the Specification supports the conclusion that Hink’s composition,
which comprises linalool (Hink, Abstract), conditions the skin.
Moreover, “in considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). In this case, we
agree with the Examiner that “one of ordinary skill would consider it
implicit, using the broadest reasonable interpretation of the term ‘container’,
that Hink’s teaching of shampoo compositions . . . require the composition,
prior []to application, to be ‘contained’ and thus be present in a ‘container’”
(Ans. 5). In particular, we conclude that Appellants have not demonstrated
that the Specification requires that the “container” is one that can be closed,
rather than any container within “the broader definition of. . . [an] object
used to hold something” (Reply Br. 5).
Appellants also argue “that the instructions for dosage and benefits
herein are functionally related to the product compositions” (App. Br. 2).
We are not persuaded.
“Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
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terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
In In re Ngai, the Court found that “[a]ll that the printed matter [did was to]
teach a new use for an existing product.” 367 F.3d 1336, 1339 (Fed. Cir.
2004). In that case, the Court found that “the printed matter in no way
depends on the kit, and the kit does not depend on the printed matter.” Id.
Similarly, in this case, the printed matter teaches a new use for an existing
product. Thus, we conclude that the evidence supports the Examiner’s
position that the instructions are not functionally related to the product
(Ans. 6—7).
With regard to claim 8, Appellants additionally argue: “[T]he
recitation of surfactant, even at. . . less than 10%, clearly requires that there
be some surfactant present. The ‘less than’ limitation does not include
‘none’.” (App. Br. 5.) We are not persuaded.
Claim 8 recites that the product contains “less than about 10%
surfactant” {id. at 10). Giving this limitation its broadest reasonable
interpretation, we agree with the Examiner that it reads on a composition
that does not contain any surfactant (Ans. 4 & 20).
Conclusion
The evidence supports the Examiner’s conclusion that Hink
anticipates claims 1 and 8. We therefore affirm the anticipation rejection of
claims 1 and 8. Claims 2, 3, 6, and 21 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
OBVIOUSNESS
In rejecting claim 4, the Examiner relies on Hink as discussed above
(Ans. 9). The Examiner notes that “Hink teaches linalool compositions
formulated as a ‘shampoo’ containing 20 - 70% by weight of a surfactant
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and a linalool composition formulation as a pump spray which does not
appear to contain any surfactant” (id. at 9-10). “As such, [the Examiner
finds that] the amount of surfactant in the ‘shampoo’ and ‘pump spray’
compositions of Hink fall outside the % surfactant range of from about 1%
to about 10% surfactant recited in amended Claim 4” (id. at 10).
However, the Examiner finds that “Hink also teaches . . . animal
linalool compositions formulated as ‘dips’” (id.). In particular, the Examiner
finds that “Hink teaches the preferred concentration of linalool in dips is 1 -
4% and can be combined with an inert vehicle or carrier including
conventional vehicles, surfactants, stabilizer, perfumes and the like” (id.).
The Examiner also finds that “Hink teaches the dip composition is
preferably provided as a concentrate consisting essentially of linalool in an
amount of at least about 10 percent by weight with at least about 10 percent
surfactant, preferably from about 10 percent to about 90 percent each of
linalool and a surfactant” (id. ). In addition, the Examiner finds that “Hink
teaches dilution of the concentrate should achieve a final linalool
concentration of about 0.1 percent to about 2.5 percent, preferably from
about 0.3 percent to about 1.5 percent,” which “overlaps with and thus
renders obvious the range (0.5 to 5%) recited in instant Claim 4” (id.). The
Examiner also finds that “Hink does not explicitly teach the amount of
surfactant in the diluted dip compositions,” but that, “because Hink teaches
the % linalool and surfactant [can be] the same in the concentrate prior to
dilution, the resulting % of surfactant. . . encompasses the same range as the
% linalool, which would overlap with and thus render obvious the instantly
claimed range of about 1% to about 10%” (id. at 11).
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In addition, the Examiner finds “that Hink’s teaching of a ‘dip’
composition clearly requires that the composition the animal is being
‘dipped’ into is ‘contained’ and thus is ‘in a container’” (id.).
Analysis
Upon review of the Final Rejection and Examiner’s Answer, we
conclude that the Examiner has set forth a prima facie case, which is
summarized above, that Hink suggests the product of claim 4.
Appellants argue:
The definition of “container” found by applicants is “con* tain* er
- object used to hold something: an object such as a box, jar, or
bottle that is used to hold something, especially when it is being
stored or transported” (emphasis added). The normal meaning
should be used unless there is some reason other than finding a
basis for rejection. The container of Hink[] et al. would not be
suitable for storing the product for storage or transport.
(App. Br. 7.) We are not persuaded.
“[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). Appellants’ definition of “container”
broadly defines the term as an “object used to hold something” (App. Br. 7).
We understand that the definition exemplifies a box, ajar, and a bottle and
states that “especially” it “is used to hold something . . . when it is being
stored or transported” (id.). However, Appellants have not pointed us to
anything in the Specification that requires such a narrow interpretation of the
term. Therefore, we are broadly interpreting the term as an “object used to
hold something” (id.). Given this interpretation, we agree with the Examiner
“that Hink’s teaching of a ‘dip’ composition clearly requires that the
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composition the animal is being ‘dipped’ into is ‘contained’ and thus is ‘in a
container’” (Ans. 11).
Appellants also argue that “the dip is not a ‘skin conditioning
product’” (App. Br. 7). However, we are not persuaded by this argument at
least because claim 4 recites that “the product is a shampoo” and therefore
does not require that the product be a “skin conditioning product” {id. at 10).
Conclusion
The evidence supports the Examiner’s conclusion that Hink suggests
the product of claim 4. We therefore affirm the obviousness rejection of
claim 4.
SUMMARY
We affirm the anticipation rejection of claims 1—3, 6, 8, and 21 and
the obviousness rejection of claim 4.
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).
AFFIRMED
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