Ex Parte Bräutigam et al

Patent Trial and Appeal Board

Jul 19, 2016

13088516 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/088,516 04/18/2011
27387 7590 07119/2016
LONDA, BRUCE S,
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD A VE, 8TH FLOOR
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Ina Brautigam
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.
101216-86/155DIV 8609
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAILDATE DELIVERY MODE
07/19/2016 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 INA BRAUTIGAM and SABINE FORSTER
Appeal2015-001304
Application 13/088,5161
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
SA WERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 11-13, 15-21, 24, 26, 27, 29, and 31. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 Appellants identify KAO GERMANY GMBH as the real party in interest.
Appeal Br. 2.
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Application 13/088,516
STATEMENT OF THE CASE
Claims 11-13, 15-21, 24, 26, 27, 29, and 31 stand rejected under
35 U.S.C. § 103(a) for obviousness over Kalbfleisch2 in view of Janhsmn3,
Bluenose4, and Beauty ofNew York5. We choose independent claim 27 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 27 provides:
27. A process for treating hair, the process comprising:
providing a two phase composition in a bottle equipped
with a pump spray, wherein contents of the bottle consist of the
two phase composition, wherein the two phase composition
consists of
(A) 15 to 50%, by weight calculated to the total
composition, oil phase and 50 to 85%, by weight calculated to
the total composition, an aqueous phase,
(B) at least one volatile oil, in the oil phase, at a
concentration of 90 to 100%, by weight, calculated to the
content of the oil phase,
(C) at least one fixing polymer, in the aqueous phase, at a
concentration of 0.1 to 20%, by weight calculated to the content
of the aqueous phase,
2 Axel Kalbfleisch et al., U.S. Patent Application Publication No. US
2002/0090346 Al (July 11, 2002) ("Kalbfleisch").
3 http://ciao.co.uk/ Aveda_Phomollient_Review_5540415 (2005)
(" J anhsmn").
4 http://ciao.co.uk/ Aveda_Phomollient_Review_5303314 (2002)
("Bluenose").
5 http://beautyofnewyork.com/ shopping/2FMP2903 07KC083 2 .htm (2006)
("Beauty of New Yor~').
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Application 13/088,516
(D) at least one water miscible organic solvent, in the
aqueous phase, at a concentration of 10 to 40% by weight
calculated to the content of the aqueous phase,
(E) at least one cationic surfactant, in the aqueous phase,
at a concentration of 0.05 to 2%, by weight calculated to the
content of the aqueous phase, and
(F) optionally, one or more additional ingredients
selected from the group consisting of natural oils, organic acids,
inorganic acids, alkaline solution, ultraviolet filters,
moisturizing agents, natural plant extracts, dyestuff, fragrance,
chelating agent and preservatives,
wherein the at least one water miscible organic solvent is
at least one monohydric alcohol, wherein the oil and aqueous
phases are optically separated at a zero shear rate, become
homogeneous upon shaking and return again to optically
separated two phases at a zero shear rate;
homogeneously mixmg the oil and aqueous phases of the
two phase composition by shaking; and
applying the two phase composition onto shampooed or
wetted hair by spraying the homogeneously mixed oil and
aqueous phases of the two phase composition from the bottle
equipped with the pump spray onto the shampooed or wetted
hair.
Appeal Br. 16-17.
FINDINGS OF FACT
1. The claimed invention is directed to a method for treating hair
with a two-phase composition having both an oil phase and an
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aqueous phase. Appeal Br. 16-17 (claim 27). According to the
Specification, Appellants found "that a two phase composition
comprising an oil phase and a water phase wherein two phases
are optically separated at zero shear rate and becomes
homogeneous upon shaking and returns again to optically
separated two phases upon release of agitation improves curl
retention of curly hair." Spec. 1.
2. As claimed, the method comprises the steps of: providing the two-
phase composition in a bottle equipped with a pump spray,
homogeneously mixing the two phases by shaking, and applying the
composition onto shampooed or wetted hair by spraying the
composition from the pump-spray bottle onto the hair. Appeal Br.
16-17 (claim 27).
3. In addition to oil and water, the two-phase composition consists of a
fixing polymer, a water miscible organic solvent, and a cationic
surfactant. Appeal Br. 16-17 (claim 27). The composition may also
contain one or more additional ingredients, i.e., natural oils, organic
acids, inorganic acids, alkaline solution, ultraviolet filters,
moisturizing agents, natural plant extracts, dyestuff, fragrance,
chelating agent and preservatives. Id.
4. Kalbfleisch teaches a two-phase hair-styling composition and
method "for imparting volume to a hairdo or for strengthening
the hair shafts of the hairdo." Kalbfleisch (Abstract).
Kalbfleisch tested the composition for curl retention in high
humidity by washing hair strands, winding the hair on spiral
curlers, treating the hair with the composition, drying the hair,
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and assessing the curl retention of the hair. Kalbfleisch i-fi-1 48-
49. Kalbfleisch also teaches that the composition is typically
applied to hair by taking up strands of head hair by hand and
then spraying the composition onto the hair shafts. Kalbfleisch
i145 ("[s]trands of head hair are taken up by the hand and
sprayed with the composition ... during a typical application.
An unstable foam then forms on the sprayed hair shafts").
5. Kalbfleisch teaches that the compositions contain an aerosol
propellant to create an aerosol foam spray. Id. at i135. The
composition is filled into conventional pressure-resistant
aerosol containers. Id. at i1 41. The filled aerosol container has
a "hair-spray spray head." Id. at i1 43.
6. Along with aerosol, Kalbfleisch's composition also includes:
water, i15, a foam-breaking agent such as a volatile silicone oil,
,-r,-r 6, 31, a surfactant, ,-r,-r 7, 23-'29, and a hair-fixing polymer,
i-fi-18, 13, 37. See also Final Off. Act. 5---6. Kalbfleisch also
teaches that the composition may include a co-solvent such as
ethanol. Kalbfleisch i1 33; see also Final Off. Act. 6.
7. Janhsmn provides a consumer review of the hair-styling foam
product "Aveda Phomollient Styling Foam." Janhsmn 1.
Janhsmn describes a method for applying the foam: the foam is
applied to wet hair, the hair is shaped, and then left to dry. Id.
Janhsmn states that the styling foam is packaged in a non-
aerosol bottle with a pump-spray head having a "spring inside
the top [that] whips up the liquid to create the mousse." Id.; see
also Final Office Act. 7. Janhsmn describes one of the "[p ]lus
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Application 13/088,516
points" for the product is its "environmental side." Id. at 2.
8. Bluenose provides another consumer review of the Aveda
Phomollient Styling Foam product. Bluenose 1-2. Bluenose
describes a "great thing" about the product is that "the bottle is
500ml and this is how much product you get." Id. at 1.
Bluenose implies that the aerosol-free product is a good value,
"unlike other mousses where you get a large can and half is
butane." Id. Bluenose also explains that the foam is packaged
in a plastic bottle, and that the "foam appears when you pump
the nozzle." Id. at 2.
9. Beauty of New York provides a description of the hair-styling
foam product "Dudley's Styling Foam Setting Lotion." Beauty
of New York 1. The styling foam is packaged in a pump-spray
bottle. Id. (photo); see also Final Office Act. 8 (finding that
Beauty of New York "teaches the bottle is a pump spray
bottle"). Beauty of New York provides directions for using the
styling foam: "Shampoo and condition the hair. Towel blot.
Shake Dudley's Styling Foam Setting Lotion well before using.
Apply to hair. Comb through hair for even distribution." Id.
LEGAL STANDARD
A claimed invention is unpatentable if the differences between it and
the prior art are "such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art." 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject
matter would have been obvious, the Board follows guidance in Graham v.
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John Deere Co., 383 U.S. 1 (1966) andKSRint'l Co. v. Teleflex, Inc., 550
U.S. 398 (2007). "Where a skilled artisan merely pursues 'known options'
from 'a finite number of identified, predictable solutions,' the resulting
invention is obvious under Section 103." In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1070 (Fed. Cir. 2012) (quotingKSR, 550U.S. at421).
DISCUSSION
On appeal, the Board "reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon." Ex parte Frye, 94 USPQ2d 1072, 1075-76
(BP AI 2010) (Precedential). Appellants raise five issues on appeal: (1)
whether the Examiner provided an adequate reason to remove the propellant
from Kalbfleisch's compositions, Appeal Br. 8-9; (2) whether the Examiner
improperly used hindsight in making the obviousness rejection, id. at 9-10;
(3) whether the prior art references, either alone or in combination, teach all
of the elements of the claims, id. at 10-12; (4) whether the prior art teaches
shaking (i.e., "homogenously mixing") the hair composition, id. at 12; and
(5) whether the claims require that the composition be applied directly to the
hair, id. We address each issue below.
(1) Reason to modify the prior art
As to the first issue, Appellants argue that the Examiner erred in
finding that a person of ordinary skill in the art would have been motivated
"to remove the aerosol propellant from Kalbfleisch's invention to achieve
the presently claimed composition that excludes aerosol propellant." Appeal
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Br. 8. To the contrary, in our view the Examiner articulated a reasoned
explanation as to why an ordinarily-skilled artisan would have been
motivated to remove the propellant from Kalbfleisch's invention.
Specifically, the Examiner explained that, prior to the claimed invention,
"the hair-styling foam art ... [was] provid[ing] and us[ing] hair-styling
foams which are free of aerosol propellant through use of a pump spray head
on the container." Ans. 4--5. The Examiner also explained that consumers
of hair-styling foams wanted environmentally-friendly hair-care products
(i.e., products that lacked propellant), as well as a good value for their
purchase. Id. at 6-7. The Examiner therefore concluded that "[t]he
motivation for removal of aerosol propellants and use of pump spray heads
was a desire to provide environmentally-friendly hair-care products and
appeal to frugal consumer[ s] who wanted their money to purchase a
container full of product and not [a] container half-full of butane." Id. at 7.
We find that a preponderance of the evidence supports the Examiner;s
rationale. First, Janhsmn evidences that consumers desired environmentally-
friendly hair-care products. In Janhsmn's review of the Aveda Phomollient
Styling Foam (a hair-styling mousse), Janhsmn described a "[p]lus point" for
the product as its "environmental side," in that the mousse does not require
propellant to be ejected from the bottle. Janhsmn 2; FF7. Second, Bluenose
evidences that consumers of hair-care products desired good value for their
money. In reviewing the same Aveda product, Bluenose states that
"[a]nother great thing is that the bottle is 500ml and this is how much
product you get unlike other mousses where you get a large can and half is
butane." Bluenose 1; FF8. Bluenose, because it was published in 2002, also
supports the Examiner's assertion that aerosol-free hair products were
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available for about five years before Appellants' invention, as does Beauty
of New York, another aerosol-free styling foam. FF8-9; see also Ans. 5.
Taken together, these teachings provided the ordinarily-skilled artisan with
"good reason to pursue the known options within his or her technical grasp,"
KSR, 550 U.S. at 421, that is, to remove the propellant from Kalbfleisch's
invention and follow the art "to provide and use hair-styling foams which
are free of aerosol propellant through use of a pump spray head on the
container," Ans. 4--5.
Appellants have not sufficiently rebutted the Examiner's reasoned
analysis. Appellants first argue that a skilled artisan would not have been
motivated to remove propellant from Kalbfleisch's invention because doing
so would render Kalbfleisch "inoperable for its intended purpose of
achieving good spraying and foaming properties by propelling the
composition from the pressure-resistant aerosol container onto hair via
aerosol propellant.'; Appeal Br. 8. In the Reply Brief~ Appellants elaborate
that "[i]f the aerosol propellant was removed ... , the composition stored
within Kalbfleisch's product would not be sprayable from the spray head."
Reply Br. 4.
We are not persuaded by Appellants' argument. "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference." In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The pertinent inquiry, instead, is
whether "a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention."
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). And here,
the Examiner has provided sufficient evidence that propellant-free styling
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foams were not only known in the art at the time of Appellants' claimed
invention, but also desired by consumers of those products. FF8-9.
Moreover, Appellants have not provided any objective evidence or
sound scientific reasoning supporting their inoperability theory. As the
Examiner found and Appellants do not dispute, Kalbfleisch teaches foam
compositions containing the same reagents in the same amounts recited in
representative claim 27. Ans. 4; see also FF6. Although Kalbfleisch does
not teach packaging the compositions in a propellant-free container, FF5, the
Examiner provided evidence that the prior art was, in fact, packaging hair-
styling foams in propellant-free containers and using a pump-spray head to
deliver the foams, Ans. 4--5. See also FF7-9. As the Examiner found and
we agree, both the "Aveda Phomollient Styling Foam" and the "Dudley's
Styling Foam Setting Lotion" used pump-spray bottles to spray styling
foams. FF7-9. No record evidence suggests that those bottles could not
achieve "good spraying and foaming properties.'' FF7-8 (describing foam
from pump-spray head). Moreover, no record evidence suggests that
exchanging a propellant-based canister with a pump-spray head-equipped
bottle would have been outside the ordinarily-skilled artisan's technical
abilities, KSR, 550 U.S. at 421, especially given that other hair-styling foams
used pump-spray heads, FF7-9.
Appellants next point out that "each and every embodiment of
Kalbfleisch's invention utilizes at least one aerosol propellant," and
conclude that "inclusion of aerosol propellant into Kalbfleisch' s pressure-
resistant aerosol container along with Kalbfleisch's composition is critical
and necessary to utilizing Kalbfleisch's invention for its intended use of
achieving good spraying and foaming properties by propelling the
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composition from the pressure-resistant aerosol container onto hair via
aerosol propellant." Appeal Br. 8. We interpret Appellants' statements as
an argument that Kalbfleisch teaches away from removing the propellant.
A reference teaches away when it "criticize[s], discredit[s], or
otherwise discourage[s] the solution claimed." In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Here, nothing in the prior art suggests that
Kalbfleisch's compositions "should not" or "cannot" be used with a pump-
spray bottle. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). And,
although Kalbfleisch teaches that "[e]specially good spraying and foaming
properties are obtained with a mixture of' certain propellants, i-f 35, teaching
one way of delivering a hair-styling foam does not amount to a teaching
away of another, known way of delivering that foam, even if that way would
have been somewhat inferior, Mouttet, 686 F.3d at 1334.
Finally, Appellants assert that "Kalbfliesch would not have provided
any motivation to a skilled artisan to remove the aerosol propellant,'' Reply
Br. 3--4, and that "[i]f Kalbfleisch intended for the possibility of removing or
excluding aerosol propellant from the aerosol container, Kalbfleisch would
have said so," id. at 4. Kalbfleisch's silence on the use of other means for
delivering the hair-styling product does not rebut the Examiner's prima facie
case of obviousness. As the Federal Circuit has explained, an obviousness
analysis does not require record evidence of an explicit teaching of a
motivation to combine in the prior art:
[T]he analysis that "should be made explicit" refers not to the
teachings in the prior art of a motivation to combine, but to the
court's analysis .... Under the flexible inquiry set forth by the
Supreme Court [in KSR], the district court therefore erred by
failing to take account of "the inferences and creative steps," or
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even routine steps, that an inventor would employ and by
failing to find a motivation to combine related pieces from the
prior art.
Ball Aerosol v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
Thus, contrary to Appellants' arguments, there is no requirement that
Kalbfleisch expressly teach using a propellant-free means for using the hair-
styling composition. Moreover, as already noted, the Examiner's
obviousness case does not depend upon Kalbfleisch alone, but on
Kalbfleisch in combination with Janhsmn and Bluenose, which do provide
reasons for propellant-free delivery. FF7-8.
For the reasons articulated above, Appellants have not sufficiently
rebutted the Examiner's evidence and reasoning. Thus, we are not
persuaded Appellants' argument that the Examiner has failed to articulate a
sufficient reason to combine the prior art references.
(2) Hindsight
Appellants also allege that the Examiner resorted to hindsight in
holding that the claimed invention would have been obvious. Appeal Br. 9-
10. We disagree. "When the Board does not explain the motivation, or the
suggestion or teaching, that would have led the skilled artisan at the time of
the invention to the claimed combination as a whole, we infer that the Board
used hindsight to conclude that the invention was obvious." In re Kahn, 441
F.3d 977, 986 (Fed. Cir. 2006). Here, as explained above, the Examiner
adduced a preponderance of the evidence showing that propellant-free hair-
care products were known in the art at the time of Appellants' claimed
invention, and that those products were desired by consumers of hair-styling
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compositions. Supra at 8-9. Thus, the Examiner did not rely on improper
hindsight in this case.
(3) Claimed Elements
Appellants assert next that the prior-art references, "taken singly or in
combination, fail to teach or suggest applying a two phase composition to
shampooed or wetted hair from a bottle equipped with a pump spray,
wherein contents of the bottle consist of the two phase composition, wherein
the two phase composition consists of' elements (A) through (F) of claim
27. Appeal Br. 10-11. We note that once an Examiner establishes a prima
facie case ofunpatentability, the burden of production shifts to the applicant
to present evidence or argument to the contrary. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Here, the Examiner made extensive factual
findings regarding the teachings of the prior art. Final Office Act. 4--9. We
agree with these findings and adopt them as our own. See also FF4-10. In
response, Appellants have not presented any particularized argument or
evidence. For example, Appellants do not attempt to show how the
Examiner erred in reading the prior art, nor do Appellants attempt to present
a different interpretation of the prior art. Ans. 7. Instead, Appellants merely
list the elements of claim 27, and assert that those elements are not in the
prior art. Appeal Br. 10-11. Based on the entirety of the record, therefore,
we conclude that the Examiner did not err in finding that the combined
prior-art references taught each and every element of claim 27.
(4) Shaking the hair composition
As to the next issue, Appellants point out that claim 27 requires
"homogeneously mixing ... the two phase composition by shaking," and
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that Kalbfleisch does not mention shaking. Appeal Br. 12. Appellants'
statements do not persuade us of Examiner error because "[ n ]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner did not
rely on Kalbfleisch to teach shaking, but instead relied on the combination of
references to show that the step of shaking a hair-styling product was well
known in the art. Specifically, Beauty of New York expressly teaches the
step of homogenously mixing a hair-styling foam before application to the
hair by shaking. FF9; see also Ans. 9. And although Appellants submit that
shaking Kalbfleisch's composition would have been unnecessary,
Appellants present no evidence or argument suggesting that an ordinarily-
skilled artisan would have been discouraged from shaking a composition
made obvious by the combination of prior art relied upon by Examiner. See
Appeal Br. 12; cf FF9; Ans. 9.
(5) Application of the claimed composition directly to the hair
Finally, Appellants states that claim 27 requires spraying the claimed
composition "from the bottle equipped with [a] pump spray onto the
shampooed or wetted hair." Appeal Br. 12. With respect to this issue,
Appellants and the Examiner appear to disagree as to whether the claims
require that the composition be applied "directly" onto the hair. Compare
Appeal Br. 12 with Ans. 10-11. We do not find it necessary to resolve this
dispute, however, because as the Examiner correctly found, both Kalbfleisch
and Beauty of New York teach direct application of a hair-styling foam onto
the hair. FF4, 9; see also Ans. 11. Again, a preponderance of the evidence
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supports the Examiner's findings. Specifically, Kalbfleisch teaches that
"[ s ]trands of head hair are taken up by the hand and sprayed with the
composition ... during a typical application. An unstable foam then forms
on the sprayed hair shafts." FF4. Similarly, Beauty of New York instructs
the user to "[s]hake Dudley's Styling Foam Setting Lotion well before using.
Apply to hair. Comb through the hair for even distribution." FF9. The
Examiner reasonably interpreted these passages of the prior art as teaching
the disputed step (i.e., "spraying ... from the bottle ... onto [the] ... hair").
Ans. 11. Appellants have not pointed to any error in the Examiner's
reasoning, nor do we find any.
SUMMARY
We affirm the rejection of claims 11-13, 15-21, 24, 26, 27, 29, and 31
under 35 U.S.C. § 103(a) on appeal.
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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