Ex Parte Hoffmann et al

Patent Trial and Appeal Board

May 13, 2016

13397491 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/397,491 02/15/2012
27387 7590 05/13/2016
LONDA, BRUCE S.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD A VE, 8TH FLOOR
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Martin Hoffmann
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.
101216-182 1057
EXAMINER
DELCOTTO, GREGORYR
ART UNIT PAPER NUMBER
1761
MAILDATE DELIVERY MODE
05/13/2016 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 MARTIN HOFFMANN and
DIANA LEUKEL-SCHAFER
Appeal2014-007315
Application 13/397,491
Technology Center 1700
Before TERRY J. OWENS, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal 1 under 35 U.S.C. § 134 from the Examiner's
decision2 twice rejecting claims 16, 17, 20-24, and 26-31. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as KAO Germany GmbH.
Appeal Brief filed February 18, 2014 ("App. Br."), 1.
2 Non-Final Office Action mailed July 17, 2013 ("Non-Final Act.").
Appeal2014-007315
Application 13/397,491
The claims are directed to a method for treating hair. Claim 16,
reproduced below, is illustrative of the claims on appeal.
16. A method comprising applying a composition to hair, said
composition comprising at least one anionic sulphate surfactant
at a concentration of 2 to 25% by weight calculated to the total
composition, and at least one amino acid surfactant of the
following structure
0 R2 R,
II I I_
Ri-c -N -CH -(CH2)n -X M
wherein R 1 is a saturated or unsaturated, straight or branched
alkyl chain with 7 to 17 C atoms, R2 is H or a methyl, R3 is H,
coo-M+, CH2Coo- Mor COOR, n is 0 to 2, Xis coo- or S03-
and M is independent from each other H, sodium or potassium,
at a concentration of 0.1 to 15%, by weight calculated to the total
composition, PEG-90 glyceryl isostearate
at a concentration of at least 1 % by weight, at least one non-ionic
surfactant according to the general formula R6-0-(RiO)n-Zx,
wherein R6 is an alkyl group with 8 to 18 carbon atoms, R4 is an
ethylene or propylene group, Z is a saccharide group with 5 to 6
carbon atoms, n is a number from 0 to 10 and x is a number
between 1 and 5, and at least one (poly)propylene glycol
according to the following formula
2
Appeal2014-007315
Application 13/397,491
H(OCH~CH1)u OH
I
CH3
wherein n has a value between 1 and 70, and wherein the
composition has a lower consistency at zero shear stress than in
the presence of shear stress.
App. Br. 10-11 (Claims Appendix).
On Appeal, the Examiner maintains the following rejections:
1. Claim 24 under 35 U.S.C. § 112, second paragraph, as indefinite;
2. Claim 24 under 35 U.S.C. § 112, fourth paragraph, as being of
improper dependent form; and
3. Claims 16, 17, 20-24, and 26-31under35 U.S.C. § 103(a) as
unpatentable over Molenda3 in view of Clausen.4
Examiner's Answer mailed April 17, 2014 ("Ans."), 4-5.5
Rejections 1 & 2
Appellants do not challenge the rejections under 35 U.S.C. § 112.
Thus, we treat any arguments that could have been made regarding the
rejections as waived and summarily sustain these rejections. See Hyatt v.
Dudas, 551 F. 3d 1307, 1314 (Fed. Cir. 2008).
3 Molenda, US 2006/0135393 Al, published June 22, 2006 (hereinafter
"Molenda").
4 Clausen et al., US 2004/0202635 Al, published October 14, 2004
(hereinafter "Clausen").
5 The rejection of claims 16, 17, 20-24, and 26-31 under 35 U.S.C. § 102(b)
(which the Examiner mistakenly refers to as under 35 U.S.C. § 103) over
Clausen and Molenda was withdrawn in the Examiner's Answer mailed
April 17, 2014. See Ans. 4.
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Appeal2014-007315
Application 13/397,491
Rejection 3
Appellants do not dispute the prima facie case of obviousness,
but instead argue that evidence presented in the Specification
(Spec. 27 (Example 3)) establishes that the presently claimed
invention exhibits surprising and unexpected results, effectively
rebutting the prima facie case. See App. Br. 7-8; see also Reply Brief
filed June 17, 2014 ("Reply Br."), 2-3. Specifically, Appellants argue
that the inventive composition having 3% by weight of PEG-90
glyceryl isostearate has improved shear thickening properties (also
known as rheoplex behavior), which would not have been reasonably
expected by one of ordinary skill in the art, when compared with a
similar composition that contains 2% by weight of sodium chloride.
See id.; see also Spec. 27 (Example 3). Although the inventive and
comparative compositions tested in Example 3 exhibit different shear
thickening properties, Appellants have not established sufficiently that
the differences would have been unexpected to the ordinary artisan.
"[A ]ny superior property must be unexpected to be considered as
evidence of non-obviousness." Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1371 (Fed. Cir. 2007); see also In re Greenfield, 571F.2d1185,
1189 (CCPA 1978) (arguments of counsel cannot take the place of
evidence).
In addition, the evidence presented in the Specification is not
commensurate in scope with the appealed claims. In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983) (concluding that unexpected results "limited to
sodium only" were not commensurate in scope with claims to a catalyst
having "an alkali metal"). The claimed composition is open to a number of
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Appeal2014-007315
Application 13/397,491
components (any anionic sulphate surfactant, a group of amino acid
surfactants, PEG-90 glyceryl isostearate, a group of non-ionic surfactants,
and (poly)propylene glycol) in varying concentrations. The composition in
Example 3 is limited to one embodiment containing one of each of the
required components in one specific amount. Appellants have not
established that the results obtained using the single embodiment in
Example 3 is representative of the results which would be obtained over the
broad scope of compositions covered by the claims.
DECISION
For the above reasons, the Examiner's rejection of claims 16, 17, 20-
24, and 26-31 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
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