Ex Parte Cockcroft et al

Board of Patent Appeals and Interferences

May 10, 2010

10415405 (B.P.A.I. May. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT COCKCROFT, ELEANOR BERNICE RIDLEY, and
VALERIE REYNOLDS
____________

Appeal No. 2009-005983
Application 10/415,405
Technology Center 1700
____________

Decided: May 10, 2010
____________

Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 3, 5, and 6, all of the claims pending in the
above-identified application. See page 2 of the Appeal Brief (“App Br.”)
filed September 19, 2008. We have jurisdiction under 35 U.S.C. §§ 6 and
134.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to “[a] method of preparing a
detergent composition for personal care comprising an aqueous solution of a
cationic copolymer” (claim 1 and Spec. 1). According to page 4 of the
Specification, “[t]he aqueous solution may comprise some unreacted
monomer resulting from the copolymerization of nonionic &cationic
monomers, for example less than 20 ppm.” Processes by which this aqueous
solution may be produced are known (Spec. 6). Details of the appealed
subject matter are recited in representative claim 11 reproduced from the
Claims Appendix to the Appeal Brief as shown below:
1. A method of preparing a detergent composition (formulation) for personal
care, which comprises incorporating into said composition an aqueous
solution of a cationic copolymer[,] said solution containing less than 20 ppm
residual monomer, wherein the cationic copolymer is formed from a cationic
monomer and a nonionic monomer selected from the group consisting of
(meth)acrylates having mono- or multi-hydroxy functional group(s) and
acrylamide and derivatives thereof, wherein said cationic copolymer has an
average molecular weight in the range 30,000 to 300,000 and the aqueous
solution has a concentration of 20 to 50% by weight and a viscosity of less
than 10,000 cP at 25°C, wherein said composition further comprises a
preservative.

1Appellants state that claims 1 through 3, 5, and 6 “will be argued together
as a group” (App. Br. 2 and 4). Therefore, for purposes of this appeal, we
select claim 1 from the claims on appeal and decide the propriety of the
Examiner’s § 103(a) rejection set forth in the Answer based on this claim
alone. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to
the same ground of rejection are argued as a group by appellant, the Board
may select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).

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As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following sole prior art reference at page 3 of the
Answer (“Ans.”) dated December 3, 2008:
Hirota WO 98/22088 May 28, 1998
Appellants request review of the Examiner’s rejection of claims 1
through 3, 5, and 6 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Hirota (App. Br. 4).
Appellants contend that Hirota does not teach or suggest a cationic
polymer as an essential component in a method to improve the viscosity and
rheology of the present detergent composition (App. Br. 4). Appellants also
contend that Hirota requires the presence of an anionic surfactant and a
glyceride component which are absent in the claimed detergent composition
(id). Further, Appellants contend that Hirota does not teach that its cationic
polymer contains less than 20 ppm residual monomers (App. Br. 5).
Finally, Appellants contend that Example 6 at pages 12-18 of the
Specification shows “the superior performance of hair care formulations
prepared according to the method of the instant claims in the area of
substantivity to hair, combing force, scale lifting and half head studies of
damaged hair” relative to the use of a commercially available cationic
polymer (App. Br. 5-6).
ISSUE AND CONCLUSION
The first critical question is: Does Hirota teach or suggest a detergent
composition or formulation for personal care comprising an aqueous
solution of the claimed cationic polymer and a preservative within the
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meaning of 35 U.S.C. § 102(b) or 103(a)? On this record, we answer this
question in the affirmative.
The second critical question is: Have Appellants demonstrated that
the showing in Example 6 at pages 12 through 18 of the Specification is
sufficient to rebut any inference of a prima facie case of anticipation or
obviousness? On this record, we answer this question in the negative.

RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence.
1. Appellants do not dispute the Examiner’s finding that Hirota teaches a
shampoo composition comprising an anionic surfactant, a glyceride
component, a preservative, and a suitable water-soluble cationic copolymer,
such as a cationic copolymer having a molecular weight of 30,000 to
2,000,000, preferably 100,000 to 1,000,000, made of diallyl quaternary
ammonium salt and acrylamide. (Compare Ans. 3 with App. Br. 4-5; see
also Hirota, pp. 2, 13-14, 16 and 22-23.)
2. Appellants do not dispute the Examiner’s finding that Hirota further
exemplifies shampoo compositions containing, inter alia, MERQUAT 550
(i.e., a copolymer of acrylamide and dimethyl diallyl ammonium chloride)
and having a solids content (ingredient concentration) of 34.5% by weight.
(Compare Ans. 3 with App. Br. 4-5; see also Hirota, pp. 22-23, Table 2,
Examples 5, 7, and 9 and Table 3, Examples 11, 12, and 14.)
3. Hirota’s exemplified shampoo compositions containing about 0.3% to
0.5% by weight of MERQUAT 550 (i.e., a copolymer of acrylamide and
dimethyl diallyl ammonium chloride) have a total ingredient concentration
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in water ranging from about 28.5 % to 36.4% by weight (pp. 22-23, Table 2,
Examples 5, 7, and 9 and Table 3, Examples 11, 12, and 14.)
4. Appellants do not dispute the Examiner’s finding that Hirota teaches
the claimed viscosity range. (Compare Ans. 3 and 5 with App. Br. 4-5; see
also Hirota, p. 21.)
5. Example 6 at pages 12 through 18 of the Specification relied upon by
Appellants compares a shampoo formulation having 0.25% of a cationic
polymer said to be within the claimed invention, 10% of sodium laureth
sulfate, 1.5% of cocamidopropyl betaine, 2% of cocamide MEA, 0.3% of
fragrance, 0.25% of sodium chloride, 0.5% of phenonip, water, and citric
acid with a shampoo formulation having 0.25% of Polyquaternium-7
(RTM), 10% of sodium laureth sulfate, 1.5% of cocamidopropyl betaine, 2%
of cocamide MEA, 0.3% of fragrance, 0.25% of sodium chloride, 0.5% of
phenonip, water, and citric acid.
6. Nowhere does Example 6 compare a shampoo composition
representative of the claimed invention with the shampoo composition
exemplified at Tables 2 and 3 on pages 22 and 23 of Hirota (Spec. 12-18).
7. Example 6 at page 18 of the Specification indicates that a shampoo
employing the cationic polymer said to be within the claimed invention
imparts slightly better results in terms of wet and dry combing and grip,
drying properties, and anti-static effect relative to a shampoo composition
employing Polyquaternium-7.
8. Example 6 at page 18 of the Specification also indicates that a
shampoo employing the cationic polymer said to be within the claimed
invention imparts slightly worse results in terms of curl retention, volume,
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build-up effect after 2 days, and manageability relative to a shampoo
composition employing Polyquaternium-7.
9. Example 6 at page 18 of the Specification further indicates that a
shampoo employing the cationic polymer said to be within the claimed
invention imparts identical results in terms of the time to build foam during
the pre-wash, the amount of foam formed during pre-wash, the amount of
foam formed during main wash, foam texture, skin sensation, rinseability,
drying time, shine, and build-up effect relative to a shampoo composition
employing Polyquaternium-7.
ANALYSIS AND PRINCIPLES OF LAW
There is no dispute that Hirota teaches a method of preparing a
shampoo composition (corresponding to the claimed detergent formulation
for personal care), which comprises combining an anionic surfactant, a
glyceride component, a preservative, and an aqueous solution of a suitable
water-soluble cationic copolymer, such as a cationic copolymer having a
molecular weight of 30,000 to 2,000,000, preferably 100,000 to 1,000,000,
made of diallyl quaternary ammonium salt and acrylamide. Nor is there any
dispute that Hirota exemplifies preparing shampoo compositions containing
aqueous solutions containing MERQUAT 550 (i.e., a copolymer of
acrylamide and dimethyl diallyl ammonium chloride) corresponding to the
claimed cationic copolymer and having the claimed viscosity and
concentration.
Although Hirota includes an anionic surfactant, a glyceride
component, and other components in its exemplified compositions
containing MERQUAT 550 corresponding to the claimed cationic
copolymer, the Examiner correctly states at page 5 of the Answer that the
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claims on appeal, by virtue of using the transitional term “comprising,” do
not exclude such additional unclaimed components. In re Baxter, 656 F.2d
679, 686-87 (CCPA 1981) (“As long as one of the monomers in the reaction
is [claimed] propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
The claimed detergent formulation for personal care, as is apparent from
pages 9, 10, 17 and 18 of Appellants’ own Specification, does not exclude
ingredients used in shampoo formulations.
Appellants contend that Hirota does not teach or suggest using a
cationic polymer as an essential component in a method to improve the
viscosity and rheology of the present detergent composition. The claims,
however, do not require the cationic polymer to be “essential” or limit the
claimed method to a method of improving the viscosity and rheology of a
detergent composition. Thus, this contention does not persuade us of
reversible error on the part of the Examiner because it is based on limitations
that do not appear in the claims on appeal. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant's arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”). In any event, as
found by the Examiner at pages 3-5 of the Answer and not disputed by
Appellants at pages 4-6 of the Appeal Brief, Hirota teaches that its
composition employs a cationic copolymer corresponding to the cationic
copolymer in the claimed detergent composition in an amount inclusive of
that exemplified at pages 17 and 18 of the Specification and obtains the
claimed viscosity requirement.
Appellants also contend that Hirota does not teach that its cationic
copolymer contains less than 20 ppm residual monomers. However,
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Appellants have not pointed to any evidence of record indicating that
MERQUAT 550 (commercially available cationic copolymer) is tainted with
at least that amount of unreacted monomer impurities. Thus, on the present
record, there is a reasonable basis for the Examiner to determine that
MERQUAT 550 is identical to or substantially identical to the cationic
copolymer included in the claimed detergent composition.2 As stated by the
predecessor to our reviewing court in In re Best, 562 F.2d 1252, 1255
(CCPA 1977):
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produce by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product…Whether the rejection is based on “inherency” under
35 USC 102, on “prima face obviousness” under 35 USC 103 ,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products
(emphasis added). [Footnotes and citations omitted.]

Appellants further contend at page 5 of the Appeal Brief that Example
6 at pages 12-18 of the Specification shows “the superior performance of
hair care formulations prepared according to the method of the instant claims
in the area of substantivity to hair, combing force, scale lifting and half head
studies of damaged hair” relative to the use of a commercially available
cationic polymer. Appellants, however, do not argue, much less aver, that

2 We also note that the claims on appeal, by virtue of using the transitional
term “comprising,” do not exclude such additional unclaimed components
including those containing monomers, in the claimed detergent composition.
Baxter, 656 F.2d at 686-87.
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this alleged superior performance is unexpected by one of ordinary skill in
the art. See In re Skoner, 517 F.2d 947, 948 (CCPA 1975) (Expected results
are evidence of obviousness just as unexpected results are evidence of
unobviousness); see also In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972)(The burden of demonstrating unexpected results is on the party
asserting them.). Nor do Appellants show that the showing in Example 6
demonstrates unexpected results relative to the closest prior art, the
compositions exemplified by Hirota, In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) and is reasonably commensurate in scope with the
degree of protection sought by a claim, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). In any
event, such a showing is not sufficient to rebut the prima facie case
established by the Examiner since a showing of unexpectedly superior
results is not relevant to a situation where a single prior art, as here, fully
describes the claimed features under 35 U.S.C. § 102(b). In re Malagari,
499 F.2d 1297, 1302 (CCPA 1974).
Accordingly, based on the totality of the record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of anticipation or
obviousness within the meaning of the hybrid rejection under 35 U.S.C.
§ 102 or § 103.
ORDER
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In view of the foregoing, 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

PL Initial:
sld

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