Ex Parte Giroud

Board of Patent Appeals and Interferences

Mar 12, 2010

10436242 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCK GIROUD
__________

Appeal 2009-006906
Application 10/436,242
Technology Center 1600
__________

Decided: March 12, 2010
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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Application 10/436,242

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STATEMENT OF THE CASE
Claim 1 is representative of the rejection before us and can be found in
the Appendix to the Brief.

Cited References
Wasserscheid EP 1182196 A1 Aug. 8, 2000
Sebag US 5,364,625 Nov. 15, 1994
Garnier US 6,548,051 B2 Apr.15, 2003
Nobuo JP 2002-003478 Sep. 1, 2002

Claims 1, 2, 10, 15-22, 25 and 26 are rejected under 35 U.S.C.
103(a) as being unpatentable over WASSERSCHEID et al (EP 1182196) in
view of NOBUO et al (JP 2002-003478), SEBAG et al (US 5,364,625) and
GARNIER et al (US 6,548,051). (Ans. 3.)

FINDINGS OF FACT
The Examiner’s fact findings can be found in the Answer at pages
3-5.
ISSUE
The Examiner argues that “[i]t would have been obvious to the person
of ordinary skill in the art at the time the invention was made to use
WASSWECHEID’s [sic] imidazolium salt compound in a shampoo or
conditioner composition and use it to clean and condition hair with all the
limitations of adding water; acetone; and thickeners to the composition; and
applying the composition at a temperature between 10 and 80°C. The
person of ordinary skill in the art would have been motivated to make those
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modifications, because NOBUO teaches imidazolium salt can be used as
surfactant and detergent in the field of cosmetics, and reasonably would
have expected success because SEBAG teaches a shampoo composition
comprised of imidazolium salt and other ingredients commonly used in the
field of shampoo and conditioners” (id. at 5).
Appellant contends that “Nobuo neither teaches nor suggests that
ionic liquids lacking an ether linkage such as MeImC4 possess surfactant
activity, or even that such liquids could be modified to possess surfactant
activity” (App. Br. 5).
The issue is: Has Appellant shown that the Examiner’s conclusion of
obviousness is not supported by the evidence?

PRINCIPLES OF LAW
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). “Often, it will be necessary . . . to look to interrelated teachings of
multiple [references] . . . and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed[.]” Id. at 418-19. “[T]his analysis should be made explicit” (id. at
418), and it “can be important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does” (id.).

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“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). Under § 103, “there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR at 418. Obviousness is determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellant claims a method for cleaning, conditioning or otherwise
treating keratin material by applying a specific imidazolium salt. The
Examiner argues that “[i]t would have been obvious to the person of
ordinary skill in the art at the time the invention was made to use
WASSWECHEID’s [sic] imidazolium salt compound in a shampoo or
conditioner composition and use it to clean and condition hair with all the
limitations of adding water; acetone; and thickeners to the composition; and
applying the composition at a temperature between 10 and 80°C. The
person of ordinary skill in the art would have been motivated to make those
modifications, because NOBUO teaches imidazolium salt can be used as
surfactant and detergent in the field of cosmetics, and reasonably would
have expected success because SEBAG teaches a shampoo composition
comprised of imidazolium salt and other ingredients commonly used in the
field of shampoo and conditioners.” (Ans. 5).
Appellant contends that “Nobuo neither teaches nor suggests that
ionic liquids lacking an ether linkage such as MeImC4 possess surfactant
activity, or even that such liquids could be modified to possess surfactant
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activity” (App. Br. 5). Appellant argues that Nobuo has nothing to do with
cosmetic methods. (See Reply Br. 1.) Appellant argues that Nobuo teaches
that surfactant properties relate to his claimed compounds having an ether
linkage, not to other compounds.
We conclude the Appellant has the better argument. While
Wasserscheid discloses the same compound, Wasserscheid does not disclose
cosmetic use of the compound or its particular use for the treatment of
keratin.
Nobuo generically discloses imidazolium salts as new ionic liquids
capable of solubilizing synthetic polymers, biopolymers and molecular
aggregates. Nobuo specifically mentions uses of such compounds in
electrolytic solutions for lithium batteries, and as solvent in the generation of
exomold or mold products. Paragraph 28 of Nobuo mentions that MeImC4
can dissolve low molecular weight compounds such as urea or catechol.
Paragraph 33 of Nobuo would appear to describe the function of the
particularly disclosed biomolecular membrane imidazolium ether linked
compounds as useful in cosmetics and detergents, without specific reference
to MeImC4.
However, the Examiner does not assert, and we do not find, that
Nobuo teaches the same compound as that claimed. The Examiner appears
to rely upon Nobuo as a linking reference which suggests some uses to
which imidazolium compounds may be applied (see Ans. 4).
While Sebag describes the use of specific imidazolium compounds as
bactericidal agents for use in cosmetics, the imidazolium compounds of
Sebag possess a sulfoxide group and a linear or branched alkyl radical
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having 12 to 18 carbon atoms, and thus differ in structure from MeImC4 and
the compound of Wasserscheid. (See Sebag, col. 1.)
The Examiner has not explained why one of ordinary skill in the art
would have specifically chosen the Wasserscheid compound simply based
upon its similarity to the MeImC4 compound of Nobuo from all the
disclosed compounds therein for use in a cosmetic, particularly in view of
the fact that Sebag would appear to disclose substantially different
imidazolium compounds with differing substituents for use in cosmetics. In
Kubin, the court made clear that “where a defendant merely throws
metaphorical darts at a board filled with combinatorial prior art possibilities,
courts should not succumb to hindsight claims of obviousness.” In re Kubin,
561 F.3d 1351, 1359 (Fed. Cir. 2009). This rejection is such a situation,
where the prior art gives an immense number of possible imidazolium
compounds which might be used in a variety of different uses, but no
guidance is provided which directs the use of the Wasserscheid compound as
a detergent or cosmetic.
Put another way, the Examiner has not identified a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.
In sum, the preponderance of the evidence does not support the
Examiner’s obviousness rejection.

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CONCLUSION OF LAW
Appellant has demonstrated that the preponderance of the evidence
does not support the Examiner’s obviousness rejection. The obviousness
rejection is reversed.

REVERSED

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