Ex Parte Flohr et al

Patent Trial and Appeal Board

Aug 30, 2016

12900066 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/900,066 10/07/2010
27752 7590 09/01/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Andreas Flohr
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.
CM3437MQ 7039
EXAMINER
BRANSON, DANIELL
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS FLOHR, THOMAS CHRISTIAN KRIPP,
and MATTHIAS MORAND 1
Appeal2015-002409
Application 12/900,066
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and RICHARD J.
SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hair
styling composition. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, "[t]he real party in interest is The Procter &
Gamble Company." (Br. 1.)
Appeal2015-002409
Application 12/900,066
STATEMENT OF THE CASE
Claims on Appeal
Claims 1--4 and 6-12 are on appeal. (Br. 1-3; Claims Appendix, Br.
8-9; and Appellants' June 26, 2013 Amendment 2-3.) Claim 12 is
illustrative and reads as follows:
1. A hair styling composition comprising, in a cosmetically acceptable
carrier selected from the group consisting of solution, emulsion, solid
carrier, suspension, dispersion, mousse, gel, wax or polyphasic composition,
from 0.65% to 3.3% of an elastomeric hair styling polymer comprising from
about 1 % to about 100% of polymerized units (A),
wherein said units (A), in their non-cross linked form, comprise at least one
carbon having an alpha-hydrogen relative to R3 and have the general formula
I
forn1ula I
wherein R3 is selected from the group consisting of:
(a) a carboxyl derivative, a thiocarboxyl derivative;
(b) a carbonyl derivative, a thiocarbonyl derivative, an imine
derivative;
( c) a hydroxyl derivative
( d) an aryl radical, a heteroaryl radical;
( e) a saturated cyclic radical;
(f) an alkoxy derivative;
(g) an amino derivative, an amide derivative, an imide derivative;
(h) a phosphorus derivative;
(i) a sulphur derivative;
2 We note that Appellants' claim 1 is not reproduced in their Brief.
Therefore, we direct attention to Appellants' June 26, 2013 Amendment 2-3,
wherein Appellants' claim 1 is reproduced.
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Appeal2015-002409
Application 12/900,066
U) a tin derivative;
(k) a silica derivative;
(1) a alkyne derivative;
(m) a heterocyclic also incorporating R2;
wherein Ri, R2, R4, and Rs are the same or different and are selected from
the groups consisting of hydrogen, C1-C22 saturated alkyl derivatives, C1-C22
unsaturated alkyl derivatives, hydroxyl derivatives, C1-C22 alkoxy
derivatives, carboxyl derivatives, thiocarboxyl derivatives, amino
derivatives, aminoalkyl derivatives, aminodialkyl derivatives, aminotrialkyl
derivatives, tetraalkylammonium derivatives, amide derivatives, imide
derivatives, sulfide derivatives, sulfoxide derivatives, sulfone derivatives,
phosphite derivatives, phosphone derivatives, phosphonate derivatives, tin
derivatives and silica derivatives, aryl derivatives, C1-C7 aryl derivatives,
heteroaryl derivatives, C 1-C7 heteroaryl derivatives, cyano derivatives,
alkynyl derivatives;
wherein indicia m, o, n are independent to each other with m 2: 0, o 2: 0 and
n > l ·and
- ' '
wherein direct covalent bonds are formed between the alpha carbons of two
different units (A) by break of the alpha-hydrogen-bond relative to R3 and
wherein said bonds comprise no intermediate molecule;
and wherein the direct covalent bond is formed in a second cross-linking
step after the polymer has been formed during the polymerization step, not
the bond between monomers forming an individual polymer chain.
(Br. 1-3.)
Examiner Rejection
Claims 1--4 and 6-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ikkai3 and Bollens.4 (Ans. 2.)
Appellants argue claims 1-4 and 6-12 as a group, and we therefore
limit our consideration to claim 1.
3 Ikkai et al., Novel Method of Producing Polymer Gels in Aqueous Solution
Using UV Irradiation, 25 Macromol. Rapid Commun. 1514-17 (2004)
("Ikkai").
4 Bollens et al., US 5,705,148, issued Jan. 6, 1998 ("Bollens")
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Application 12/900,066
FINDINGS OF FACT
We adopt as our own the Examiner's findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
FF 1. The Examiner finds that Ikkai teaches a composition
comprising water and elastomeric polymers, such as poly(acrylic acid).
(Ans. 3, citing Ikkai 1516, col. 2, ,-i 1.)
FF 2. The Examiner finds that Ikkai teaches cross-linking of the
polymers and that "the crosslinking step is carried out in a separate step than
polymerization of the monomers in the polymeric chain." (Id., citing Ikkai
Table 1 (Group D) and 1517, col. 1, ,-i 2.)
FF 3. The Examiner finds that Ikkai teaches that the polymers are
cross-linked by direct covalent bonds and that Ikkai suggests that direct
cross-linking occurs at the a carbons. (Id. at 4, citing Ikkai 1515, col. 1, ,-i 3
and col. 2 ,-i,-i 1, 2; 1516 col. 2, ,-i l; 1517, col. 1, ,-i 1.)
FF 4. Ikkai teaches that its method of producing polymer gels "solves
the problems associated with the previous techniques and enables one to
produce polymer gels more easily." (Ikkai 1515, col. 1, ,-i 1.)
FF 5. Ikkai teaches that one advantage of its method over other
gelation methods is that"[ n Jo cross-linker is necessary, that is, the polymer
gel obtained consists of a single kind of monomer." (Id.)
FF 6. Bollens teaches a shampoo composition (Example 7) and a
styling gel composition (Example 8), both of which include"[ c ]ross-linked
polyacrylic acid" sold under the trade name CARBOPOL 980. (Bollens,
col. 9, 11. 30-65.)
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Appeal2015-002409
Application 12/900,066
DISCUSSION
Issue
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
Analysis
The Examiner concluded that it would have been prima facie obvious
to one of ordinary skill in the art at the time of the invention "to substitute
the directly cross-linked polyacrylic acid polymer of Ikkai [] for the cross-
linked polyacrylic acid polymer utilized in the [shampoo and styling gel] of
Bollens [] because Ikkai [] specifically teaches the directly cross-linked
polyacrylic acid polymer [] is produced more easily which would have led to
a less expensive product." (Ans. 5.) Furthermore, the Examiner found that
(Id.)
the cross-linked polyacrylic acid polymer of Ikkai []is so
structurally similar to the cross-linked polyacrylic acid polymer
of [Bollens that] one of ordinary skill in the art would have
expected them to have similar properties and thus would have
had a reasonable expectation of success of exchanging the
polymer of Ikkai [] for the polymer of [Bollens].
We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Moreover, the Examiner has established a prima facie case of
obviousness and, as discussed below, Appellants have not overcome that
prima facie case.
As an initial matter, we agree with the Examiner that the method of
forming the polymer, including the pH of the reaction mixture, is not
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Appeal2015-002409
Application 12/900,066
pertinent to the issue of obviousness of the claimed cross-linked polyacrylic
acid composition that recites no pH value. (Ans. 8-9.) See In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) ("The patentability of a product does not
depend on its method of production.").
Declaration
Appellants rely on the Declaration of Andreas Flohr5 and the pH
values for Examples 7 and 8 of Bollens6 to argue that, at pH values above
4.5, poly(acrylic acid) comprises carboxylate groups and, therefore,
"Examples 7 and 8 ... do not comprise Poly(acrylic acid) but
Poly( acrylate)." (Br. 5; Deel. 5.) Appellants also argue that, as stated in the
Flohr Declaration, "Poly( carboxylate) cannot be cross-linked as per
[Appellants'] Invention" and "Gel-formation only happens for Poly(acrylic
acid) in its protonated form, thus at low pH." (Id.)
We understand Appellants' argument to be that Bollens does not teach
poly( acrylic acid), cross-linked polyacrylic acid, or that its shampoo
(Example 7) and styling gel (Example 8) are in the form of a gel. We are
not persuaded. The Flohr Declaration does not overcome the express
teachings of Bollens that the shampoo and styling gel examples include
"cross-linked polyacrylic acid" and that Example 8 is a styling gel. (FF 6.)
Furthermore, as the Examiner points out, the passage from the Flohr
Declaration regarding gel-formation at low pH relates to non-cross-linked
5 Declaration of Andreas Flohr under 37 C.F.R. § 1.132 ("Flohr Declaration"
or "Deel."). The Flohr Declaration is not paginated. Therefore, all reference
to page numbers of the Flohr Declaration refer to page numbers as if the
Declaration was number consecutively beginning with the first page.
6 Bollens indicates that the pH of Example 7 is 7.5. (Bollens col. 9, 1. 53.)
Andreas Flohr states that the pH of Example 8 is 6.8. (Deel. 3.)
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Appeal2015-002409
Application 12/900,066
poly(acrylic acid) polymers. (Ans. 9.) Moreover, the Flohr Declaration
clearly states that "thickening with [Carbopol 980] is best achieved at p[H]
values greater than 5.5 and below 10, just as set for Example 7 and achieved
for the Styling Gel of Example 8." (Deel. 4; Ans. 8-9.)
Motivation and Reasonable Expectation of Success
Appellants argue that the Examiner has not established a suggestion or
motivation to use the polymer of Ikkai in the hair styling composition of
Bollens, or to replace the polymers of Bollens with the polymers of Ikkai.
(Br. 5-7.) In addition, Appellants argue that the Examiner has not pointed
to a disclosure in Bollens "which would suggest a reasonable expectation of
success using the polymers of Ikkai." (Id. at 5-6.)
We are not persuaded. As the Examiner points out, "because Bollens
teaches using cross-linked poly( acrylic acid) polymer in a hair gel
composition" and because Ikkai teaches "many advantages to the use of their
directly cross-linked poly( acrylic acid) polymer in gelled compositions ... it
would have been obvious to one of ordinary skill in the art to use the
substantially similar directly cross-linked poly( acrylic acid) polymer of Ikkai
in a hair gel." (Ans. 9-10.) That is, the use of the cross-linked poly(acrylic
acid) of Ikkai in place of the cross-linked poly( acrylic acid) of Bollens
constitutes the mere substitution of one cross-linked poly( acrylic acid) for
another cross-linked poly( acrylic acid) known in the field, yielding
predicable results. See KSR, 550 U.S. at 416. Moreover, the resulting
combination (e.g. Bollens' styling gel using Ikkai's cross-linked poly( acrylic
acid)) is merely a "predictable use of prior art elements according to their
established functions." Id. at 417. The Examiner has thus established both a
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Appeal2015-002409
Application 12/900,066
motivation to combine the teachings of lkkai and Bollens, and a reasonable
expectation of success.
Hindsight
Appellants argue that the Examiner has engaged in "hindsight
reconstruction." (Br. 6-7.) We are not persuaded. It is well-established that
any judgment on obviousness is necessarily a reconstruction based upon
hindsight reasoning, "but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the claimed invention
was made and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). Appellants adduce no evidence that the
Examiner's findings were beyond the level of ordinary skill in the art at the
time of invention, nor do Appellants point to any of the Examiner's findings
that could have been taken only from Appellants' Specification.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 2--4
and 6-12 were not argued separately and fall with claim 1.
SUMMARY
We affirm the rejection of all claims 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. § l.136(a).
AFFIRMED
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