Ex Parte Bone et al

Board of Patent Appeals and Interferences

Jul 16, 2009

09727585 (B.P.A.I. Jul. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC BONE, HARUMI MORI,
and HIDETOSHI YAMADA
____________

Appeal 2009-005116
Application 09/727,585
Technology Center 1700
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Decided1: July 16, 2009
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-159. We have jurisdiction under 35 U.S.C.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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§ 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a composition for dyeing keratin fibers (e.g.,
hair). Claim 1 is illustrative (paragraph and indentation added):
1. A composition for dyeing keratin fibers comprising
(1) at least one colorant chosen from oxidation dyes and direct dyes,
and
(2) at least one nonionic compound of the formula
R-(OCH2CH2)n-OR', wherein R is chosen from C10-C30 alkyl groups,
and wherein R' is chosen from C10-C30 alkyl groups optionally substituted
with a hydroxyl group, and n is an integer ranging from 1 to 100.

The Examiner relies upon the following references as evidence of
unpatentability:
Cauwet 5,756,079 May 26, 1998
De la Mettrie 5,976,195 Nov. 02, 1999
(hereafter de la Mettrie).
De la Mettrie WO 99/17722 Apr. 15, 1999
(hereafter WO 722).

The Examiner rejects claims 1-26, 29-87 and 90-159 under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of de la Mettrie and
Cauwet.
The Examiner rejects dependent claims 27, 28, 88, and 89 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of de la
Mettrie, Cauwet, and WO 722.
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Appellants assert that “[e]ach claim . . . is separately patentable.”
(App. Br. 12). However, Appellants have not met the requirements for
presenting separate arguments as to any particular claim; see 37 C.F.R.
§ 41.37(c)(1)(vii) and also do not advance an argument that is reasonably
specific to any particular claim on appeal (see, App. Br. 12-24; Reply Br. 1-
5). Accordingly, we decide the appeal as to the first ground of rejection on
the basis of independent claim 1. Further, Appellants do not present any
additional arguments regarding dependent claims 27, 28, 88, and 89
separately rejected by the Examiner (Br. 24).
Accordingly, all the appealed claims stand or fall together, and we
will limit our consideration to the Examiner's rejection of claim 1.
ISSUE ON APPEAL
Have Appellants shown reversible error in the Examiner’s
determination that there is a sufficient reason to combine the commercially
available nonionic surfactant ELFACOS-GT 282 S exemplified in Example
3 of Cauwet in the hair dyeing composition of de la Mettrie?
We answer this question in the negative.
FINDINGS OF FACT (FF)
Appellants describe as their invention a composition that may be used
for dyeing hair “comprising” at least one nonionic compound of the formula
R-(OCH2CH2)n-OR' (Spec. 4:14-19; see also claim 1). Appellants’
Specification describes that this nonionic compound may be one “sold by the
company AKZO under the commercial name ELFACOS GT 282 S.” (Spec.
10:10-16).
One of ordinary skill in the art would have appreciated that a thick
(i.e., viscous) hair dye composition as applied is advantageous (Spec. 3:14-
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19) (“thickeners . . . have been used conventionally to localize the dye
product as applied on the hair”)).
Appellants do not dispute the Examiner’s finding that de la Mettrie
describes hair dying compositions comprising at least one colorant as
required by claim 1 (Ans. 3, 4; see generally App. Br.; Reply Br.).
Appellants also do not dispute that de la Mettrie describes that nonionic
surfactants may be used in the composition (id.).
Appellants do not dispute that Cauwet describes the use of the
commercially available nonionic surfactant compound ELFACOS GT 282 S
in a viscous shower gel composition (Cauwet, col. 8, Example 3; Ans. 5).
One of ordinary skill in the keratin fiber treating art art would have
known the function for which the commercially available compound
ELFACOS GT 282 S was used in keratin fiber treating applications.2
Cauwet describes viscous cosmetic compositions that may be used as
shampoos, bath or shower products and also can be used as dyeing
compositions for treating keratinous substances (see col. 5, ll. 34-35 and col.
6, ll. 60-64). It is further taught by Cauwet that the utilities of these
cosmetic compositions depend mainly on the concentrations of certain
surfactants (see, col. 5, ll. 26-36 and ll. 37-42; Ans. 8).
Accordingly, one of ordinary skill in the art would have recognized
that all the possible cosmetic compositions, as described or exemplified in
Cauwet, can be used for different utilities such as dyeing, conditioning,

2 ELFACOS GT 282 S was known to be useful as a “thickening agent” for
cosmetics, including shampoos. See, e.g., Beauquey, col. 5, ll. 37-39 (US
5,858,341 issued Jan. 2, 1999), assigned to L’Oreal, which is the real party
of interest named in this appeal (App. Br. 3).
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shampooing and washing of keratinous substances by manipulating the
concentrations of the certain surfactants in these compositions.
PRINCIPLES OF LAW
In considering the question of the obviousness of a claimed invention
in view of the prior art relied upon, we are guided by the basic principle that
the question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time of the invention. See Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807-08 (Fed. Cir. 1989); In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed
invention must be expressly suggested in any one or all of the references.”).
An obviousness rejection predicated on selection of one or more
components from numerous possible choices may be appropriate if the prior
art provides direction as to which of many possible choices is likely to be
successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1364 (Fed Cir. 2007); In re Arkley, 455 F.2d 586, 587-88 (CCPA
1972) (noting that “picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant must be
afforded an opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the subject matter which
he claims to the prior art”); cf. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (explaining that it is erroneous to conclude “that a patent claim
cannot be proved obvious merely by showing that the combination of
elements was ‘obvious to try’”); In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
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ANALYSIS
Appellants contend that there is “insufficient reasonable expectation
of success or motivation to combine the teachings of Cauwet with de la
Mettrie” (App. Br. 20, heading 2; see also App. Br. 12-24; Reply Br. 1-5).
Specifically, Appellants argue that Cauwet’s disclosure of the specific
nonionic compound of ELFACOS GT 282 S3 in the shower gel of Example
3 therein would not provide a sufficient reason to use it in a hair dyeing
composition (App. Br. 20; Reply Br. 1-5). We disagree for the reasons well
stated by the Examiner (Ans. 7-14). We add the following primarily for
emphasis.
Cauwet teaches that similar formulations of ingredients may be used
for shampoos, hair dyes and shower gels (see FF). ELFACOS GT 282 S
was a known commercially available thickening agent for cosmetic
formulations (id). Thus, there was ample reason for one of ordinary skill in
the art to expect that the commercially available thickening agent ELFACOS
GT 282 S used in the viscous shower gel Example 3 of Cauwet would also
have been useful as a thickening agent in a viscous hair dyeing composition.
It appears that Appellants are merely using a known nonionic compound
additive for its known function as a thickening agent in a cosmetic
application. See KSR, 550 U.S. 398 at 417 (The question to be asked is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.”).
Contrary to Appellants' belief, In re Baird, 16 F.3d 380, 382 (Fed. Cir.
1994) (see, e.g., App. Br. 16, 21) does not demand a conclusion of

3 There is no dispute that ELFACOS GT 282 S falls within the claimed
nonionic compound genus of claim 1 (Spec. 10:14-16).
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nonobviousness under the facts of this appeal. The court in In re Baird held
that a claim reciting a bisphenol A polyester was non-obvious over prior art
disclosing a generic formula encompassing “more than 100 million different
diphenols[,]” where the reference's disclosure of fifteen preferred
compounds did not include, or even suggest bisphenol A. Id. at 382-83.
The Court explained that “[a] disclosure of millions of compounds does not
render obvious a claim to three compounds, particularly when that disclosure
indicates a preference leading away from the claimed compounds.” Id. at
383.
In contrast, the applied references to de la Mettrie and Cauwet would
not have taught away from the open ended ingredient combination defined
by claim 1. To the contrary, an artisan would have had a reasonable
expectation of success as previously explained. For this reason, the Baird
decision is inapposite to the facts of this appeal.4
Accordingly, Appellants have not shown that the Examiner reversibly
erred in establishing a prima facie case of obviousness for the composition
of claim 1 based on de la Mettrie and Cauwet.
Where the Examiner establishes a reasonable basis to conclude that
the claimed invention is obvious, as here, the burden shifts to the Appellants
to rebut the prima facie case by providing evidence of unexpected results or
a showing that the prior art teaches away from the claimed invention in any

4 Cf. Ex parte Min-Hong Fu, 89 USPQ2d 1115 (BPAI 2008, precedential)
(Board found selection of a surfactant corresponding to that claimed as part
of an imaging member charge transport layer was not taught away from by
the applied prior art - rejected per se non-obviousness “approach” for
patentability determination of claimed subject matter including recited
surfactant species where prior art disclosure was generic and not taught
away from).
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material respect. See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). Appellants’ Briefs contains no more than attorney argument, which
is insufficient to meet this burden. Id. at 1471.
Accordingly, Appellants have not shown reversible error in the
Examiner’s determination that there is a sufficient reason to combine the
commercially available nonionic compound ELFACOS-GT 282 S
exemplified in Example 3 of Cauwet in the hair dyeing composition of de la
Mettrie.
ORDER
The rejection of claims 1-26, 29-87 and 90-159 under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of de la Mettrie and
Cauwet is affirmed.
The rejection of claims 27, 28, 88, and 89 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of de la Mettrie, Cauwet, and WO
722 is affirmed.
The decision of the Examiner is affirmed.

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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