Ex parte Hoshowski

Board of Patent Appeals and Interferences

Aug 31, 1999

08105008 (B.P.A.I. Aug. 31, 1999)

Application for patent filed August 11, 1993. According1
to the appellant, the application is a continuation-in-part of
Application No. 07/950,825, filed September 24, 1992, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MYRA A. HOSHOWSKI
____________
Appeal No. 1995-4072
Application No. 08/105,0081
____________
ON BRIEF
____________
Before PAK, WALTZ and ROBINSON, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 1, 2, 4 through 22, 24 through 32 and
34 through
2
38 which are all of the claims pending in the application.
Claims 3, 23 and 33 were canceled subsequent to the final
Office action dated September 23, 1994, Paper No. 9.
The subject matter on appeal is directed to methods for
treating the hair. Claims 1, 19 and 29 are representative of
the subject matter on appeal and read as follows:
1. A method of treating the hair comprising:
(a) applying a sufficient amount of an aqueous,
transparent, leave-on hair conditioning composition to hair to
impart a physical or esthetic property to the hair, said
leave-on hair conditioning composition comprising:
(i) capsules having a diameter of about 425 to about
2800 microns, said capsules comprising:
(A) a water insoluble conditioning compound
encapsulated in
(B) a shell material;
(ii) a suspending agent to suspend the
capsules; and
(iii) a carrier comprising water;
(b) breaking the capsules while the capsules are in
contact with the hair to release the water insoluble
conditioning compound;
(c) while simultaneously disintegrating the shell
material into residual particles having a diameter of about 10
microns or less; and
(d) allowing the hair conditioning composition and the
residual particles of shell material to remain in contact with
the hair at least until the next hair shampooing.
19. A method of treating the hair comprising:
Appeal No. 1995-4072
Application No. 08/105,008
3
(a) applying a sufficient amount of an aqueous,
transparent, leave-on hair protectant composition to hair to
impart a physical or esthetic property to the hair, said
leave-on hair protectant composition comprising:
(i) capsules having a diameter of about 425 to about
2800 microns, said capsules comprising:
(A) a water insoluble hair protectant compound
encapsulated in
(B) a shell material;
(ii) a suspending agent to suspend the
capsules; and
(iii) a carrier comprising water;
(b) breaking the capsules while the capsules are in
contact with the hair to release the water insoluble hair
protectant compound;
(c) while simultaneously disintegrating the shell
material into residual particles having a diameter of about 10
microns or less; and
(d) allowing the hair protectant composition and
residual particles of shell material to remain in contact with
the hair at least until the next hair shampooing.
29. A method of treating the hair comprising:
(a) applying a sufficient amount of an aqueous,
transparent, leave-on hair dye composition to hair to impart
an esthetic property to the hair, said leave-on hair dye
composition comprising:
(i) capsules having a diameter of about 425 to about
2800 microns, said capsules comprising:
Appeal No. 1995-4072
Application No. 08/105,008
4
(A) a water insoluble hair dye
encapsulated in
(B) a shell material;
(ii) a suspending agent to suspend the
capsules; and
(iii) a carrier comprising water;
(b) breaking the capsules while the capsules are
in contact with the hair to release the water insoluble hair
dye;
(c) while simultaneously disintegrating the shell
material into residual particles having a diameter of about 10
microns or less; and
(d) allowing the hair conditioning composition and the
residual particles of shell material to remain in contact with
the hair at least until the next hair shampooing.
As evidence of obviousness, the examiner relies on the
following prior art:
Vanlerberghe et al. (Vanlerberghe) 5,021,200 Jan. 4,
1991
Noda et al. (Noda) 5,089,269 Feb. 18, 1992
(filed May 27, 1988)
Claims 1, 2, 4 through 22, 24 through 32 and 34 through
38 stand rejected under 35 U.S.C. § 103 as unpatentable over
the disclosure of Noda. Claims 29 through 32 and 34 through
38 stand rejected under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Noda and Vanlerberghe.
Appeal No. 1995-4072
Application No. 08/105,008
The Vanlerberghe reference is relied upon to show that2
it would have been obvious to employ a dye in the capsule
described in Noda.
5
We have carefully reviewed the claims, specification and
applied prior art, including all of the arguments advanced by
both the examiner and appellant in support of their respective
positions. This review leads us to conclude that the
examiner’s § 103 rejections are not well founded.
Accordingly, we will not sustain the examiner’s § 103
rejections for essentially those reasons set forth in the
Brief and the Reply Brief. We add the following for emphasis
and completeness.
The examiner has the initial burden of establishing a
prima facie case of obviousness regarding each and every
limitation recited in the appealed claims. To satisfy this
burden, the examiner primarily relies on the disclosure of
Noda. See Answer, pages 2 and 3. The examiner, however,2
does not demonstrate that the Noda reference teaches, or would
have suggested, (1) aqueous, transparent, leave-on hair
conditioning, protectant or dye compositions; (2) a carrier
comprising water; and (3) the residual particles
Appeal No. 1995-4072
Application No. 08/105,008
We determine that the appealed claims require all3
fragments resulting from the disintegration of capsules having
a diameter of about 425 to about 2800 microns be equal to or
less than 10 microns. This interpretation is consistent with
the description at pages 17 and 18 of the specification. Note
also that the arguments advanced by both the examiner and
appellant in the Answer, the Brief and the Reply Brief support
this interpretation.
6
(disintegrated fragments) resulting from the disintegration of
capsules having a diameter of about 425 to about 2800 microns
being equal to or less than about 10 microns . 3
The examiner, for example, refers to the descriptions at
column 18, line 45, and column 19, line 20, of the Noda
disclosure for an aqueous, transparent composition. See
Answer, page 5. However, nowhere do such descriptions provide
an aqueous transparent composition. The descriptions relied
upon by the examiner are directed to a transparent capsule
wall film, not the transparent composition.
The examiner also does not indicate where Noda describes
a carrier containing water. Nor does the examiner explain why
the use of water as a carrier in the composition described in
Noda would have been obvious to one of ordinary skill in the
art. The examiner simply ignores appellant’s argument
Appeal No. 1995-4072
Application No. 08/105,008
7
regarding a carrier containing water at page 5 of the Reply
Brief.
Further, although the examiner recognizes that Noda does
not describe the claimed residual particle sizes, it appears
that the examiner takes the position that such sizes are
inherent in the method described in Noda. See Answer, page 3.
The examiner attempts to equate Noda’s residual particles
creating “no feeling of foreign matter” with the claimed
residual particle sizes. However, there is no evidence that
residual particles which must produce “no feeling of foreign
matter” on people must necessarily be in the claimed particle
sizes (about 10 microns or less).
In view of the foregoing, we conclude on this record that
the examiner’s findings of fact are simply insufficient to
support a prima facie case of obviousness under 35 U.S.C. §
103. Accordingly, we reverse the examiner’s decision
rejecting claims 1, 2, 4 through 22, 24 through 32 and 34
through 38 under
35 U.S.C. § 103.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 1995-4072
Application No. 08/105,008
8
§ 1.136(a).
REVERSED
CHUNG K. PAK
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
DOUGLAS W. ROBINSON )
Administrative Patent Judge )
jrg
Appeal No. 1995-4072
Application No. 08/105,008
9
Milton Honig
Unilever United States Inc.
Patent Department
45 River Road
Edgewater, N.J. 07020