Ex Parte Everett et al

Patent Trial and Appeal Board

Jul 16, 2018

13099975 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/099,975 05/03/2011
49376 7590
Christopher M. Goff
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
07/18/2018
FIRST NAMED INVENTOR
David W. Everett
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.
27861-908 (1837US) 1906
EXAMINER
SULLENS, TA VIAL
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID W. EVERETT, RICHARD A. HARTHUN,
MACIEJ MURZYNSKI, and DANIELE ROSATI
Appeal2017-003398
Application 13/099,975
Technology Center 3700
Before KEN B. BARRETT, EDWARD A. BROWN, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David W. Everett et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision, as set forth in the Final Office
Action dated November 10, 2015 ("Final Act."), rejecting claims 1, 3, 4, 7-
1 The Appeal Brief identifies Spectrum Brands, Inc. as the real party in
interest. Appeal Br. 1.
Appeal2017-003398
Application 13/099,975
12, 14, 15, 18-20, 23, 25, and 27-30. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
SUMMARY OF THE INVENTION
"[Appellants'] disclosure is directed to a hair dryer comprising a
component having deposited thereon a composition for conditioning hair"
and "a method for conditioning hair." Spec. ,r,r 9-10. Claims 1 and 12 are
independent. Claim 1, reproduced below from page 17 (Claims Appendix)
of the Appeal Brief with paragraph structure added, is illustrative of the
claimed subject matter:
1. A dryer for conditioning hair of a user, the hair dryer
compnsmg
a protective grill having a hair conditioning composition
incorporated into the grill,
wherein the conditioning composition comprises
a cross-linked siloxane polymer and
a non-cross-linked silicone conditioning agent,
wherein the cross-linked siloxane polymer is prepared
from a mixture comprising
a first component comprising a high molecular
weight polydimethylsiloxane and a cross-linking agent,
and
a second component comprising a low molecular
weight polydimethylsiloxane, and
further wherein the grill is affixed within an exhaust end
of the hair dryer through which heated air passes when the hair
dryer is in operation.
REJECTIONS
Claims 29 and 30 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
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distinctly claim the subject matter which the applicant regards as the
invention.
Claims 1, 3, 4, 7, 8, 11, 12, 14, 15, 18-20, 23, 25, and 27-30 stand
rejected under 35 U.S.C. § I03(a) as being unpatentable over Hur (US
2005/0229424 Al, published Oct. 20, 2005), Tanaka (US 2010/0129301 Al,
published May 27, 2010), Langley (US 2009/0083986 Al, published Apr. 2,
2009), Schulz (US 5,811,487, issued Sept. 22, 1998), and Patil (US
2005/0089498 Al, published Apr. 28, 2005).
Claims 9 and 10 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hur, Tanaka, Langley, Schulz, Patil, and Blin (US
2007 /0020205 Al, published Jan. 25, 2007).
ANALYSIS
Indefiniteness Rejection
The Examiner determines that claims 29 and 30 are indefinite because
"[t]here is insufficient antecedent basis" for "the limitations 'the high
molecular weight polydimethylsiloxane', 'the first component', and 'the
cross-linking agent'." Final Act. 4. According to the Examiner, "it has not
been established that [the] conditioning composition incorporated into the
dryer/ drying method of independent claims 1 and 12 contains these
components, only that it is prepared from a mixture comprising the above
components." Id. Thus, the Examiner continues, "it is unclear whether the
resulting cross-linked siloxane polymer and non-cross-linked silicone
conditioning agent actually include the above components, or if these are
merely intermediary components as a result of the product-by-process as
claimed." Id. at 4--5; see also Ans. 14--15.
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Appellants traverse, arguing that "each of those three phrases is
previously presented and clearly delineated in claims 1 and 12, from which
claims 29 and 30 respectively depend." Appeal Br. 4. Appellants also argue
that the Specification provides "ample detail for one having ordinary skill in
the art to readily ascertain that the cross-linked siloxane polymer comprises
the high molecular weight polydimethylsiloxane (PDMS) and the cross-
linking agent." Id. at 4--5 (citing Spec. ,r,r 26-27, 32-34, 41). Appellants
also argue that "[ w ]hether or not the components are present in the final
composition ( which, Appellants note they are) is irrelevant to the question of
proper antecedent basis for claims 29 and 30." Reply Br. 2.
A claim is indefinite when it contains language that is "ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed invention." In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014); see also In re McAward, Appeal 2015-006416, 2017 WL 3669566,
*5 (PTAB Aug. 25, 2017) (precedential). The indefiniteness determination
is "based on the perspective of one of ordinary skill in the art in view of the
entire written description and developing prosecution history." Packard,
751 F.3d at 1312.
Here, claims 29 and 30 further define the first component of the
mixture recited in claims 1 and 12. Appeal Br. 21-22 (Claims App.).
Initially, we are puzzled why the Examiner finds the mixture of claims 1 and
12 to be definitely recited but finds the more specific recitation of the first
component thereof to call into question whether the conditioning
composition of claims 1 and 12 includes the components of the mixture.
Stated differently, even if we agree that claims 1 and 12 require "only that
the conditioning composition is prepared from a mixture comprising the ...
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components" (see Ans. 14 ), we fail to see any indefiniteness in further
defining the first component of the mixture. Moreover, we agree with
Appellants that whether the conditioning composition "contains the
components in question" (see id.) is irrelevant to the determination of
whether there is proper antecedent basis for claims 29 and 30. See Reply Br.
2. As the recitations of claims 29 and 30 properly and understandably refer
to the first component of the mixture recited in claims 1 and 12, the claims
possess sufficient antecedent basis.
In view of the foregoing, we do not sustain the rejection of claims 29
and 30 as being indefinite.
Obviousness Rejections
Rejection based on Hur, Tanaka, Langley, Schulz, and Patil
Appellants present arguments for claims 1, 3, 4, 7, 8, 11, 12, 14, 15,
18-20, 23, 25, and 27-30 collectively. Appeal Br. 5-11, 13-15. We select
claim 1 as representative, treating claims 3, 4, 7, 8, 11, 12, 14, 15, 18-20, 23,
25, and 27-30 as standing or falling with representative claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Hur discloses a hair dryer substantially as
recited in claim 1, including a grill having a hair conditioning composition
incorporated therein, but does not disclose that the composition comprises a
cross-linked siloxane polymer and a non-cross-linked silicone conditioning
agent. Final Act. 5---6 ( citing Hur ,r,r 35, 60, Abstract). The Examiner finds
that Tanaka teaches such a composition. Id. at 6 ( citing Tanaka ,r,r 4, 8); see
also Ans. 15 (citing Tanaka ,r,r 12, 16-18). The Examiner also relies on
Langley to establish that the application of silicone-based hair conditioners
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by means of a hair dryer is old and well-known in the art. Final Act. 6
(citing Langley ,r 28, Abstract). Thus, the Examiner reasons, it would have
been obvious to one of ordinary skill in the art to use Tanaka's conditioning
compound in the grill of Hur's hair dryer, because it would merely involve
combining known prior art elements according to known methods to yield
predicable results. Id. ( citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
415-21 (2007); Tanaka ,r,r 21-22).
The Examiner finds that Hur, as modified by Tanaka and Langley,
does not disclose a cross-linked siloxane polymer formed from a mixture as
recited in claim 1. Id. However, the Examiner relies on Schulz and Patil to
establish that "cross-linking high and low molecular weight siloxane
polymers and cross-linking polydimethylsiloxanes having different average
molecular weight[s] in conditioning compounds [is] old and well-known in
the art." Id. (citing Schulz, 1:10-18; Patil ,r 27). Thus, the Examiner
reasons, it would have been obvious to one of ordinary skill in the art to
prepare the cross-linked siloxane polymer "from a mixture comprising a first
component comprising a high molecular weight polydimethylsiloxane and a
cross-linking agent, and a second component comprising a low molecular
weight polydimethylsiloxane," because "the use of cross-linking agents with
siloxane polymers having different molecular weights, including
polydimethylsiloxanes, in conditioning compounds was known in the art"
and the selection of a known material based on its suitability for its intended
use has been held to be obvious. Id. at 6-7 (citations omitted). The
Examiner further determines that claim 1 is a product-by-process claim, and
reasons that the modification would also be obvious because determination
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of patentability is based on the product itself rather than the process by
which the product is made. Id. at 7-8.
Appellants traverse, first arguing that Hur
discloses a hair dryer including a vastly different composition
that would not lead one having ordinary skill in the art to look
to combine with references including either a cross-linked
siloxane polymer and/or a non-cross-linked conditioning agent
in order to arrive at a porous matrix coating with a
conditioning agent dispersed therein.
Appeal Br. 9-10 ( emphasis added). According to Appellants, incorporating
the polydimethylsiloxanes disclosed by the prior art into the composition of
Hur would result in the polydimethylsiloxanes being trapped together,
precluding migration of any conditioning agent incorporated therein. Id. at
10. Continuing, Appellants assert that "it would not be obvious to use the
disclosures of Patil and/or Schulz in the composition of Hur in order to
arrive at Appellants' claimed compositions." Id.
We are not persuaded by Appellants' arguments, which focus on "a
porous matrix coating with a conditioning agent dispersed therein." Claim
1, however, does not require such a porous matrix. See Appeal Br. 17
(Claims App.). Limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Similarly unpersuasive are Appellants' unsupported characterizations of the
cited references. See Appeal Br. 10; see also In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) ("An assertion of what seems to follow from common
experience is just attorney argument and not the kind of factual evidence that
is required to rebut a prima facie case of obviousness.") To the extent that
Appellants purport the claimed dryer provides "surprising[] and
unexpected[]" results (see, e.g., Appeal Br. 10), such assertions are
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unsupported by evidence, and, thus, fail to apprise us of error. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (citing In re Lindner, 457 F.2d
506, 508 (CCPA 1972)) ("It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements
... does not suffice.").
Appellants also argue that Tanaka is non-analogous, and, thus, cannot
properly be used in an obviousness rejection. Appeal Br. 11. Specifically,
Appellants contend that "Tanaka is non-analogous art because Tanaka is
directed to a skin care composition for treating wrinkling/anti-aging." Id.
We are not persuaded by Appellants' argument.
A reference qualifies as prior art for a determination under § 103
when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992).
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski,
796 F.2d 436, 442 (Fed. Cir. 1986)). The field of endeavor is determined
"by reference to explanations of the invention's subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention." Id. "A reference is reasonably pertinent [to a problem
an appellant attempts to solve] if ... it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem." Clay, 966 F.2d at 659. Regarding the
scope of analogous art:
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The Supreme Court's decision in KSR International Co. v.
Teleflex Inc., 550 U.S. 398 (2007), directs us to construe the
scope of analogous art broadly, stating that ''familiar items may
have obvious uses beyond their primary purposes, and a person
of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle." Id. at 402
( emphasis added).
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
Tanaka explains that "[p ]roducts contemplated by the phrase 'skin
care products' comprise, but are not limited to moisturizers, personal
cleansing products, occlusive drug delivery patches, nail polish, powders,
wipes, hair conditioners, skin treatment emulsions, shaving creams and the
like." Tanaka ,r 12 (emphasis added); see also Ans. 16 (citing Tanaka ,r 12).
Tanaka further explains a "safe and effective amount" of its product "refers
to an amount ... sufficient to significantly induce a ... positive hair
appearance or feel benefit." Tanaka ,r 17. Tanaka further explains that other
benefits of its product include "thickening of keratinous tissue ( e.g., ... the
keratinous layers of the ... hair shaft, to reduce ... hair ... atrophy)" and
"preventing loss of ... hair elasticity." Id. ,r 18.
Thus, like Appellants' disclosure, Tanaka pertains to conditioning
hair. Tanaka, therefore, is analogous art.
Appellants also argue that
the combination of cited references fails to disclose or suggest
each and every element of Appellants' invention and there is no
sufficient motivation or reason provided to modify/combine the
disclosure provided by Hur with the disclosure of Tanaka,
Langley, Schulz and/or Patil in order to arrive at the specific
hair dryer of Appellants' claim 1.
Appeal Br. 8. Appellants' arguments are presented in conclusory fashion
with no supporting evidence or persuasive technical reasoning, and thus fail
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to apprise us of error in the Examiner's findings or rationale. See Geisler,
116 F.3d at 1470.
In view of the foregoing, we sustain the rejection of claims 1, 3, 4, 7,
8, 11, 12, 14, 15, 18-20, 23, 25, and 27-30 as being unpatentable over Hur,
Tanaka, Langley, Schulz, and Patil.
Rejection based on Hur, Tanaka, Langley, Schulz, Patil, and Blin
Appellants present arguments for claims 9 and 10 collectively.
Appeal Br. 11-13. Per 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 9 as the
representative claim. Claim 9 depends indirectly from claim 1 and further
requires "wherein the conditioning composition comprises low molecular
weight polydimethylsiloxane, wherein the low molecular weight
polydimethylsiloxane is present in an amount of from about 5% to about
20% by weight of the composition." Appeal Br. 18 (Claims App.).
The Examiner relies on Blin to establish that the "[a]mount of high
and low molecular weight polydimethylsiloxane in a conditioning compound
... is a results effective variable for viscosity of the composition." Final
Act. 10 ( citing Blin ,r 213 ). Thus, the Examiner determines, it would have
been obvious "to provide a conditioning composition in the component of
Hur in view of [Tanaka] and [Langley] comprising from about 5% to about
20% by weight of low molecular weight polydimethylsiloxane" because "it
has been held that where the general conditions of a claim are disclosed in
the prior art, discovering the optimum or working ranges involves only
routine skill in the art." Id. ( citing In re Aller, 220 F.2d 454, 456 (CCP A
1955); In re Antonie, 559 F.2d 618 (CCPA 1977)).
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Appellants traverse, first arguing that "Blin fails to rectify [the]
deficiencies" of the references used to reject claim 1. Appeal Br. 12. This
argument is unpersuasive because, as explained above, Appellants do not
apprise us of any such deficiencies.
Appellants further argue that "Blin is non-analogous art" because
"Blin is directed to a product used in a lipstick, a mascara, a foundation or a
nail varnish." Id.; see also id. at 12-13. Initially, we note that Blin discloses
that its product may be in the form of "care creams for ... the hair." Blin
,r 275; see also Ans. 16 (citing Blin ,r 275). Thus, like Appellants'
disclosure, Blin pertains to conditioning hair and, therefore, is analogous art.
This argument is also unpersuasive because the Examiner does not use Blin
to reject claim 9; rather, the Examiner relies on Blin to evidence that the
amounts of high and low molecular weight polydimethylsiloxane in a
conditioning compound is a result-effective variable for affecting viscosity
of the composition. Final Act. 10. Appellants' arguments fail to address the
rejection as set forth by the Examiner, and, thus, fail to apprise us of error.
In view of the foregoing, we sustain the rejection of claims 9 and 10
as being unpatentable over Hur, Tanaka, Langley, Schulz, Patil, and Blin.
DECISION
The Examiner's decision to reject claims 29 and 30 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The Examiner's decision to reject claims 1, 3, 4, 7-12, 14, 15, 18-20,
23, 25, and 27-30 under 35 U.S.C. § 103(a) is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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