Ex Parte Hoffmann et alDownload PDFPatent Trial and Appeal BoardMay 13, 201613397491 (P.T.A.B. May. 13, 2016) Copy Citation 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. 3 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 4 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 5 Copy with citationCopy as parenthetical citation