Ex Parte Brautigam et al

Patent Trial and Appeal Board

Jan 17, 2013

11001840 (P.T.A.B. Jan. 17, 2013)

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.
11/001,840 12/02/2004 Ina Brautigam 101216-46 1558
27387 7590 01/17/2013
LONDA, BRUCE S.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
HANLEY, SUSAN MARIE
ART UNIT PAPER NUMBER
1653
MAIL DATE DELIVERY MODE
01/17/2013 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 FRANK HERMES
__________

Appeal 2012-000386
Application 11/001,840
Technology Center 1600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hair
conditioning composition, which have been rejected for obviousness. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification states that “[i]t has surprisingly been found out that
by incorporating yoghurt powder into a hair cleansing and/or caring/
conditioning compositions such as shampoo, conditioner, rinse off treatment,
[or] leave-in treatment, properties of hair is improved dramatically in terms
Appeal 2012-000386
Application 11/001,840

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of smoothness, combability, shine, volume and body and elasticity” (Spec.
2).
Claims 1-3, 8, 11, 12, 17, and 18 are on appeal. Claim 1 is the only
independent claim and reads:
1. Conditioning composition for hair, comprising spray dried yoghurt
powder and at least one cationic polymer.

The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Quest International1 and Schmucker-Castner2
(Answer 4). The Examiner finds that “Quest International teaches a
conditioning composition . . . that is a homogenate comprising Yogurtene
(powdered yogurt)” and other ingredients, but not a cationic polymer (id. at
5). The Examiner finds that Schmucker-Castner discloses that
Polyquaternium-10 is a cationic conditioning agent for hair (id. at 6), and
concludes that it would have been obvious to include Polyquaternium-10 in
the conditioning composition of Quest International (id.).
Appellants do not dispute the Examiner’s prima facie case, but argue
that they have presented evidence of unexpected results that demonstrates
nonobviousness (Appeal Br. 5-7).
We agree with Appellants that the evidence of unexpected results is
sufficient to outweigh the evidence tending to show obviousness. Appellants
have provided declaratory evidence showing a comparison of a conditioning
composition comprising 0.5% by weight of yogurt powder and 0.5% by
weight of a cationic polymer (i.e., a composition encompassed by the claims)

1 Quest International, Yogurtene, COSMETIC INGREDIENTS 1/17 (June 2000)
2 Schmucker-Castner et al., US 6,635,702 B1, Oct. 21, 2003
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with otherwise identical compositions that contain either 1% by weight
yogurt powder and no cationic polymer or 1% by weight cationic polymer
and no yogurt powder. See the Declarations under 37 C.F.R. § 1.132 of
Frank Hermes (Appeal Br. Evidence Appendix). Collectively, the five
Hermes Declarations show comparisons of compositions containing each of
the following cationic polymers: Polyquaternium-10, Polyquaternium-11,
Polyquaternium-16, Polyquaternium-37, and hydroxypropylguar
hydroxypropyl trimonium chloride. The results consistently show the effect
of the claimed composition to be rated superior to the other compositions in
eleven out of thirteen categories, as well as “Preference.”
The Examiner acknowledges that the declarations show “superior
unexpected conditioning effects” (Answer 9). The Examiner, however, finds
the evidence of unexpected results insufficient to overcome the rejection
because “[t]he data in the declaration[s] is limited to the combination of a
single concentration for each of the cationic polymer and the yoghurt powder,
each at 0.5% by weight of the composition. Hence, the showing of
unexpected results is not commensurate in scope.” (id. at 8.)
We do not agree with the Examiner’s analysis of Appellants’ evidence.
While it is true that the claims are not limited to particular amounts of yogurt
powder and cationic polymer, the Examiner has not provided a reasonable
basis for concluding that the results shown in the Hermes Declarations are
not representative of what would be expected at other concentrations of
yogurt powder and cationic polymer. Providing evidence that is
commensurate in scope with the claims
does not mean that an applicant is required to test every
embodiment within the scope of his or her claims. If an
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applicant demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the conclusion
that other embodiments falling within the claim will behave in
the same manner, this will generally establish that the evidence
is commensurate with [the] scope of the claims.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
Here, Appellants have shown unexpected results for five different
embodiments encompassed by the claims; based on the five examples
provided, it is reasonable to expect that other embodiments falling within the
scope of the claims will behave similarly. The Examiner has not provided a
reasonable basis for concluding otherwise. The Examiner therefore has not
shown that the evidence of unexpected results is not commensurate in scope
with the claims.
In summary, we agree with the Examiner that the cited references
support a prima facie case of obviousness but Appellants have provided
evidence of unexpected results of sufficient weight to overcome the prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After
evidence or argument is submitted by the applicant in response [to the prima
facie case], patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of
argument.”).
SUMMARY
We reverse the rejection of claims 1-3, 8, 11, 12, 17, and 18 under 35
U.S.C. § 103(a).
REVERSED
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