Ex Parte Bistram

Patent Trial and Appeal Board

Oct 20, 2014

12174455 (P.T.A.B. Oct. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/174,455 07/16/2008 Vera BISTRAM 101216-103 8705
27387 7590 10/21/2014
LONDA, BRUCE S.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
CRAIGO, WILLIAM A
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
10/21/2014 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 VERA BISTRAM
____________

Appeal 2012-010529
Application 12/174,455
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1 and 3–18 (App.
Br. 2). Examiner entered rejections under 35 U.S.C. § 103(a) and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Real Party in Interest is KPSS-KAO Professional Salon (App. Br. 2).
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STATEMENT OF THE CASE
The claims are directed to a conditioning composition for hair, a
method for conditioning, and a method of producing a conditioning and
colour enhancing composition. Claims 1 is representative and is reproduced
in the Claims Appendix of Appellant’s Brief.
Claims 1, 3–9, 12, and 15–18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ohta2 and Carrascal.3
Claims 1, 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ohta, Carrascal, and Yaker.4
Claims 10 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ohta, Carrascal, and Noecker.5
Claims 1 and 3–18 stand rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claims 1, 4,
5, 7, 8, 12–15, and 17 of Molenda6 in view of Ohta and Carrascal.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 US 2003/0086897 A1, publ. May 8, 2003
3 US 7,135,045 B2, issued Nov. 14, 2006
4 US 6,423,101 B1, issued July 23, 2002
5 US 2005/0257333 A1, publ. Nov. 24, 2005
6 US 7,691,799 B2, issued Apr. 6, 2010
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FACTUAL FINDINGS (FF)
FF 1. Ohta “relates to . . . compositions to be blended in hair treating
agents” such as “hair conditioners” and “hair colorings” (Ohta 1 ¶ 1; Ans.
5).
FF 2. Ohta exemplifies a composition comprising dipropylene glycol, cetyl
trimethyl ammonium chloride, and dye intermediates (Ohta 58–59, Example
205; id. at 60 ¶ 753; Ans. 5–6).
FF 3. Examiner finds that Ohta fails to suggest “the dyes listed in
[Appellant’s] claim 1” and relies on Carrascal to make up for this deficiency
in Ohta (Ans. 7).
FF 4. Carrascal “relates to a hair dyeing composition . . . comprising at
least one direct acting hair dye” (Carrascal, col. 1, ll. 4–5; Ans. 7).
FF 5. Carrascal suggests that “[h]air colouring is a common practice for
ages” and that hair colouring compositions are known to include penetration
enhancers, such as “dipropylene glycol” (Carrascal, col. 1, ll. 11, 25–28, and
34–36; Ans. 8).
FF 6. Carrascal suggests that hair “[c]olouring composition[s] can contain
cationic amphiphilic conditioning ingredients,” such as “cetyl trimethly
ammonium chloride” (Carrascal, col. 4, ll. 4–5 and 39–40; Ans. 8).
FF 7. Carrascal suggests exemplary dyestuffs, including “Acid Red 92,
C.I.-No 45,410” and “D&C Orange No. 11, C.I.-No. 45,425” (Carrascal, col.
2, ll. 15 and 23; Ans. 7 and 21).
FF 8. Examiner finds that “both Ohta and Carrascal are directed to
compositions for treating hair, specifically, coloring and conditioning hair;
therefore the references are both directed to solving the problem of
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formulating compositions useful for coloring and conditioning hair” (Ans.
21).
FF 9. Examiner finds that the combination of Ohta and Carrascal fails to
suggest “the subject matter of . . . [Appellant’s] claims 13–14” and relies on
Yaker to make up for the deficiency in the combination of Ohta and
Carrascal (Ans. 12).
FF 10. Examiner finds that the combination of Ohta and Carrascal fails to
suggest “the compound of . . . [Appellant’s] claim 10” and relies on Noecker
to make up for the deficiency in the combination of Ohta and Carrascal
(Ans. 14).
ANALYSIS
Based on the combination of Ohta and Carrascal, Examiner concludes
that, at the time Appellant’s invention was made, it would have been prima
facie obvious to substitute Carrascal’s direct dye for Ohta’s indirect dye “in
order to provide a ‘ready to use’ composition that does not require mixing
with additional agents such as oxidizers prior to application” (Ans. 24). For
the foregoing reason, we are not persuaded by Appellant’s contention that
“Examiner failed to provide any reasoning for why a skilled artisan would
have substituted an oxidative dye precursor of Ohta with a direct dye of
Carrascal in order to achieve the present invention” (App. Br. 8; see also id.
at 5).
We recognize, but are not persuaded by, Appellant’s contention that
Ohta’s dye precursors “are vastly different than a direct dye of the present
invention” or as suggested by Carrascal (App. Br. 5; see Reply Br 2). Ohta
and Carrascal both suggest a base formula for a hair conditioning
composition comprising polypropylene glycol and at least one cationic
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Application 12/174,455

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surfactant (FF 1, 2, 4–6, and 8). There is no dispute on this record that the
polypropylene glycol and cationic surfactant suggested by Ohta and
Carrascal falls within the scope of Appellant’s claim 1 (see Reply Br. 2
(“The presently claimed invention is directed to a specific combination of oil
soluble direct dyes selected from a defined group of direct dyes, a
polypropylene glycol having a defined chemical formula, and a cationic
surfactant having a defined chemical formula”)). The difference between
Ohta and Carrascal is the choice of dye added to the base formula (FF 2 and
7). There is no dispute on this record that Carrascal suggests direct dyes
within the scope of Appellant’s claim 1 (see Reply Br. 2). Appellant fails to
provide persuasive evidence or argument to support a conclusion that it
would not have been prima facie obvious to a person of ordinary skill in this
art to select either a dye intermediate or a direct dye, as suggested by Ohta or
Carrascal respectively, for addition to the base formula suggested by both
Ohta and Carrascal, to achieve a predictable outcome (see Ans. 7 and 8–9).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results”).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that substituting Carrascal’s direct dye for Ohta’s dye
intermediate would require “an undue amount of experimentation to
optimize any such formulation” (App. Br. 6). In this regard, we recognize,
but are not persuaded by Appellant’s contention that Ohta, at best, is a
‘hodgepodge’ of various recitations of multiple compositions which is more
akin to a chemical supply catalog” (id.; Cf. FF 2 (Ohta exemplifies a
composition comprising dipropylene glycol, cetyl trimethyl ammonium
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chloride, and dye intermediates)). Further, for the foregoing reasons we are
not persuaded by Appellant’s contention that Examiner’s rejection is based
on hindsight reconstruction (Reply Br. 3).
Having found no deficiency in the combination of Ohta and Carrascal,
we are not persuaded by Appellant’s contention that Yaker or Noecker fails
“to remedy any of the deficiencies of Ohta and Carrascal” (App. Br. 8).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ohta and Carrascal is affirmed. Claims 3–9, 12,
and 15–18 are not separately argued and fall with claim 1.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ohta, Carrascal, and Yaker is affirmed. Claims 11,
13, and 14 are not separately argued and fall with claim 1.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ohta, Carrascal, and Noecker is affirmed. Claim 17
is not separately argued and falls with claim 10.

Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence support Examiner’s rejection
under the judicially created doctrine of obviousness-type double patenting?

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FACTUAL FINDINGS (FF)
FF 11. Molenda claims a conditioning composition comprising at least one
cationic surfactant, which may further comprise at least one organic solvent
and at least one direct dye (Molenda, claims 1, 12, and 13; Ans. 17–19).
FF 12. Molenda discloses that an organic solvent may be polypropylene
glycol (Molenda, col. 5, ll. 21–23 and 32).
FF 13. Molenda discloses that a suitable cationic surfactant may be cetyl
trimethyl ammonium chloride (id. at col. 4, ll. 20–22 and 55–56).
FF 14. Molenda discloses that a suitable dye may be Acid Red 92, e.g., CI
45,410 (Molenda, col. 12, ll. 7–8 and 13; see FF 7).
FF 15. Examiner relies on “Ohta and Carrascal as discussed above” (Ans.
19; FF 1-8).
ANALYSIS
Based on the combination of Molenda, Ohta, and Carrascal, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious
[T]o combine the prior art elements of Molenda, Ohta, and
Carrascal according to known methods to yield the predictable
result of a composition . . . as instant claimed with the
expectation of success . . . in order to provide an improved or
alternative composition for hair care treatments.
(Ans. 19.) We recognize, but are not persuaded by Appellant’s contention
that “Molenda fails to claim a composition comprising the claimed direct
dyes and the claimed polypropylene glycols” (App. Br. 9; Cf. FF 11–14). It
would have been prima facie obvious to select polypropylene glycol and a
direct dye within the Markush set forth in Appellants’ claim 1, because
Molenda identifies these ingredients by name (FF 12 and 14). Further, as
Examiner explains, the combination of Ohta and Carrascal with Molenda
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supports the selection of these reagents as both Ohta and Carrascal suggest
the use of polypropylene glycol and Carrascal suggests the use of a direct
dye within the scope of Appellant’s claim 1 for use in a hair treating
composition comprising a polypropylene glycol and a cationic surfactant
(Ans. 26–27; FF 1–8).
CONCLUSION OF LAW
The preponderance of evidence support Examiner’s rejection under
the judicially created doctrine of obviousness-type double patenting.
The rejection of claim 1 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1, 4, 5,
7, 8, 12–15, and 17 of Molenda in view of Ohta and Carrascal is affirmed.
Claims 3–18 are not separately argued and fall with claim 1.

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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