Ex Parte Ivanova

Patent Trial and Appeal Board

Jun 14, 2016

12084398 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/084,398 04/30/2008 Katya Ivanova
201 7590 06/16/2016
UNILEVER PATENT GROUP
800 SYLVAN A VENUE
AG West S. Wing
ENGLEWOOD CLIFFS, NJ 07632-3100
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.
J3813(C) 8239
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
patentgroupus@unilever.com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATYA IVANOVA1
Appeal2013-010065
Application 12/084,398
Technology Center 1600
Before ERIC B. GRIMES, LORA M. GREEN, and RICHARD J. SMITH,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a hair-
styling composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Claims 1, 2, 6, and 10-13 are on appeal. Claim 1 is illustrative and
reads as follows:
Claim 1. A styling composition in the form of a gel, lotion
or cream, comprising a silicone pressure sensitive adhesive
1 Appellant identifies the Real Party in Interest as Conopco, Inc., d/b/a
UNILEVER. (Br. 3.)
Appeal2013-010065
Application 12/084,398
comprising a silicone resin and a polydiorganosiloxane wherein
the composition comprises less than 0.5 wt% of water; and
further comprising a volatile solvent which is silicone and is
present at a level greater than 50%.
Br. 15 (Claims Appendix).
DISCUSSION
The Examiner has rejected claims 1, 2, 6, 10, 11, and 13 under 35
U.S.C. § 103(a) as obvious based on Ivanova,2 Cincotta,3 and Good. 4
(Ans. 2.) The Examiner has rejected claim 12 under 35 U.S.C. § 103(a) as
obvious based on Ivanova, Cincotta, Good, and Bahr. 5 (Ans. 5.) Appellants
have waived arguments based on Bahr (see Br. 8), so the same issue is
dispositive for both rejections.
The Examiner finds that I vanova discloses hair treatment compositions,
such as a cream or lotion, comprising the silicone pressure sensitive adhesive
(PSA) recited in claim 1. (Ans. 2.) The Examiner finds that "a preferred
silicone PSA emulsion is prepared by mixing the silicone PSA in a suitable
solvent to give a dispersed phase. The preferred solvent is a silicone." (Id.)
The Examiner also finds that Ivanova exemplifies compositions with
PSA:solvent ratios of 40:60 and 60:40, where one of the solvents exemplified
is PDMS (silicone). (Id.)
2 WO 2004/084846 Al, published Oct. 7, 2004.
3 US 2002/0155962 Al, published Oct. 24, 2002.
4 GB 2401316 A, published Nov. 10, 2004.
5 5,492,691, issued Feb. 20, 1996.
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The Examiner also finds that I vanova discloses that water can be
present, but does not have to be, although it is not clear whether any of
Ivanova's examples exclude water. (Id. at 3.) The Examiner cites Cincotta
as teaching nonaqueous hair styling compositions, and suggesting silicones
as a suitable solvent. (Id. at 3--4.) The Examiner cites Good as disclosing
cosmetic compositions comprising the same PSA taught by Ivanova in a
volatile silicone-based carrier. (Id. at 4.)
The Examiner concludes that, based on the cited references, it would
have been obvious to "to formulate a nonaqueous cream or lotion[] in order
to avoid the problems associated with aqueous compositions as taught by
Cincotta." (Id.) "[O]ne of ordinary skill in the art would have been
motivated to utilize a volatile solvent in order to decrease drying time as
taught by Cincotta." (Id. at 5.) Finally, the Examiner concludes that it
would have been obvious "to utilize a volatile silicone oil as it is a[] carrier
fluid taught by Good et al. for the same pressure sensitive adhesive [as]
Ivanova et al." (Id.)
We agree with the Examiner that the composition of claim 1 would
have been obvious to a skilled artisan based on the cited references. I vanova
discloses "a mousse, cream, lotion, tonic or spray leave on hair treatment
composition comprising a silicone pressure sensitive adhesive present as an
emulsion." (Ivanova 2:23-26.) Ivanova states that "[t]he term 'silicone
pressure sensitive adhesive' (SPSA) refers to pressure sensitive adhesives
comprising a silicone resin and a polydiorganosiloxane." (Id. at 3:21-23.)
Ivanova states that a "preferred silicone PSA emulsion can be
prepared by mixing the silicone PSA in suitable solvents" and "[p ]referably
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Application 12/084,398
at least one solvent will be a volatile solvent." (Id. at 9:25-30.) Ivanova
states that "[ o ]ne of more of the solvents is preferably a silicone." (Id. at
9: 3 1 to 10: 1.)
Ivanova states that "[t]he PSA/solvent mixture is optionally
emulsified in water using one or more surfactants." (Id. at 10: 1-2.)
Similarly, I vanova states that "[ c ]ompositions of the present invention can
also include water ... as a carrier for the PSAs, when used in an emulsion
form in addition to it being a carrier or a solvent for other components." (Id.
at 19:3---6.) Ivanova states that its compositions "can also include solvents,
as a carrier or solvent for the PSAs and other components. When present the
solvent will typically be present in amounts ranging from 30% to 98%,
preferably from 50% to 95% by weight." (Id. at 19: 12-16.)
Cincotta states that " [ m] ost hair styling compositions that are used to
hold hair in place are alcoholic (almost exclusively ethanol) ... or aqueous
based." (Cincotta i-f 13.) Cincotta states that ethanol-based compositions
have a dehydrating effect on the hair and scalp, while aqueous compositions
take too long to dry. (Id. at i-fi-114--15.) Cincotta discloses a hair styling
composition (e.g., a cream or lotion; id. at i-f 23) that comprises a
nonaqueous solvent, where preferred solvents include "polyhydric C2-C6
alcohols, which may include propylene glycol, glycerin, dipropylene glycol,
butylene glycol, pentylene glycols, hexylene glycols," etc. (Id. at i-f 21.)
Good discloses a cosmetic composition comprising a silicone PSA.
(Good i-f 5.) Good states that "[t]he silicone pressure sensitive adhesive is
generally dissolved in [a] volatile carrier, which can be a silicone or an
organic-based solvent." (Id. at i-f 11.)
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Application 12/084,398
We agree with the Examiner that it would have been obvious to
modify Ivanova's composition to exclude water, and to use a volatile
silicone as the solvent, at a level of more than 50%. Cincotta provides a
reason to exclude water from Ivanova's composition, because it teaches that
aqueous hair styling compositions take too long to dry. Good discloses
volatile silicones as carriers for a silicone PSA, and a person of ordinary
skill in the art would expect that a volatile solvent would provide faster
drying than an aqueous carrier. Thus, it would have been obvious to use
Good's volatile silicone as the solvent in Ivanova's composition, and
Ivanova suggests that the solvent in its composition is present at 30-98%,
preferably 50-95%.
Appellant argues that all of Ivanova's exemplified compositions are
aqueous-based and that a skilled artisan would recognize that the absence of
water in its list of ingredients in Example 3 is a typographical error. (Br.
10.) Appellant argues that, although Ivanova describes water as optional, "it
can certainly be argued that water is an optional ingredient only insofar as
used 'as a carrier for PSAs, when [such PSAa [sic] are] used in an emulsion
form' IN ADDITION to its use (non-optionally) as a carrier or solvent for
other components in the composition." (Id. at 11.)
These arguments are unpersuasive. Even assuming that I vanova does
not provide a working example of a composition that excludes water, the
reference's disclosure is not limited to its examples. "' [A] reference must be
considered not only for what it expressly teaches, but also for what it fairly
suggests."' In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (quoting In re
Burckel, 592 F.2d 1175, 1179 (CCPA 1979)). As discussed above, Ivanova
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discloses that volatile solvents are preferred, as are silicone solvents. (See
Ivanova 9:25 to 10: 1.) Ivanova states that emulsifying in water is optional
and that its compositions "can" include water when they are used in
emulsion form. (See id. at 10: 1---6.) Thus, Ivanova is fairly read to suggest
compositions that do not include water.
Appellant also argues that Cincotta does not disclose silicone solvents
(Br. 11-12), and Good does not remedy that deficiency (id. at 13). These
arguments are not persuasive because they fail to address what the combined
disclosures of Ivanova, Cincotta, and Good would have made obvious to a
person of ordinary skill in the art. See In re Young, 927 F.2d 588, 591 (Fed.
Cir. 1991) ("The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.").
Finally, Appellant argues that she "[u]nexpectedly ... found that such
silicone based compositions containing PSA provide tighter curl (page 18,
lines 3---6)." (Br. 9.) Appellant argues that "none of the references teach or
disclose a link between low water, high silicone compositions comprising
PSA and enhanced curl retention." (Id. at 10.)
This argument is also unpersuasive, for several reasons. The cited
passage states that hair treated with inventive Example 1 "had a tighter curl"
than hair treated with comparative Example A. (Spec. 18.) However,
Example 1 is a "Hair Pump Spray" (id. at 14), not a gel, lotion, or cream, as
recited in claim 1. (See also id. at 11 (listing gels, lotions, creams, and
sprays as different forms of the composition).) Thus, the evidence does not
show testing of the claimed composition. See In re Fenn, 639 F.2d 762, 765
( CCP A 19 81) ("Although it is well settled that comparative test data
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Application 12/084,398
showing an unexpected result will rebut a prima facie case of obviousness,
the comparative testing must be between the claimed invention and the
closest prior art."). Appellant has also not established that the comparative
Example A represents the closest prior art, which in this case would appear
to be the working examples in I vanova. See id.
Finally, Ivanova discloses that "[t]he pressure sensitive adhesives give
similar or better curl retention to that of the styling polymer." (Ivanova
42: 19-20.) Appellant has not shown an adequate basis for concluding that
the results shown in their Specification are, in fact, unexpected, particularly
in light of I vanova' s disclosure of a similar advantage in its product. We
note that the Specification does not characterize the results as "unexpected"
or "surprising." That characterization is found only in the Appeal Brief, and
"[a]ttomey's argument in a brief cannot take the place of evidence." In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) based on
Ivanova, Cincotta, and Good. Claims 2, 6, 10, 11, and 13 have not been
argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
We also affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious based on I vanova, Cincotta, Good, and Bahr. See Hyatt v. Dudas,
551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived. In the event of such a waiver,
the PTO may affirm the rejection of the group of claims that the examiner
rejected on that ground without considering the merits of those rejections.").
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SUMMARY
We affirm both of the rejections 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. § 1.136(a).
AFFIRMED
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