Ex Parte Iwata et al

Patent Trial and Appeal Board

May 10, 2016

12393311 (P.T.A.B. May. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/393,311 0212612009
27752 7590 05/12/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Toshiyuki IWATA
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.
AA752M 1519
EXAMINER
FRAZIER, BARBARA S
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
05/12/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TOSHIYUKI IWATA, KOJI TAKATA, YUNGI LEE,
THOMAS L. DAWSON, BRIAN K. FISHER,
ROBERTS. YOUNGQUIST, GARY R. FUENTES, JORGE M. SUNKEL,
and MARTHA JANE KOLODZIK1
Appeal2014-005878
Application 12/393,311
Technology Center 1600
Before ERIC B. GRIMES, LORA M. GREEN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hair
care composition. The Examiner rejected all of the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Hair with a full and/or thick appearance, besides being considered by
some to be more attractive than hair with a thin appearance, can be easier to
1 Appellants identify the Real Party in Interest as The Procter & Gamble Co.
(Br. 1.)
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Application 12/393,311
style than thin hair. (Spec. 1 :9-14.) The Specification discloses a hair care
composition that is said to provide improved hair diameter and improved
feel during and/or after usage, "while not-compromising the penetration of
the hair diameter increasing agent." (Spec. 3:1--4.) Thickeners can be
included "for better usage feel such that the composition does not drip
undesirably onto other areas of the body, onto clothing, or onto home
furnishings." (Spec. 9:24--26.) Substantially soluble silicone conditioning
agents can also be included to provide a "conditioning benefit and clean dry
feel." (Spec. 10:33-11:5.)
Claims 3---6, 8, 12, and 13 are on appeal. Claim 3 is the only
independent claim on appeal and reads as follows:
3. A hair care composition comprising:
(i) a hair diameter increasing agent comprising from about 0.1 % to
about 10% of a xanthine compound, from about 0.1 % to about 25%
of niacinamide, and from about 0.01 % to about 3% of a panthenol
compound; and
(ii) a carrier comprising water and monohydric alcohols having 1 to 6
carbons;
wherein the monohydric alcohol is present in the composition at a
level by weight of from about 10% to about 90%; and
(iii) an Acrylates/C10-3o Alkyl Acrylate Crosspolymer as a thickener,
wherein the hair care composition comprises less than 0.1 % of
substantially insoluble oily compounds
wherein the xanthine compound is selected from the group consisting
of caffeine, xanthine, I-methyl xanthine, theophylline, theobromine,
or mixtures thereof;
wherein said panthenol compound is selected from the group
consisting of D-panthenol, DL-panthenol, panthenyl triacetate,
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panthentine, panthenyl ethyl ether, pantoyl lactose, ethyl panthenol, or
mixtures thereof; and
wherein the composition further comprises a substantially soluble
silicone conditioning agent being a substantially soluble silicone
copolyol conditioning agent.
(Br. 9.)
There is a single rejection before us for review (Ans. 2), namely that
claims 3---6, 8, 12, and 13 are unpatentable under 35 U.S.C. § 103(a) for
obviousness over Gan2 as evidenced by WordNet, 3 in view ofEvans,4 and
Noser. 5 (Non-Final 3-7.)6
OBVIOUSNESS
In rejecting claims 3---6, 8, 12, and 13 for obviousness over Gan as
evidenced by WordNet, in view of Evans and Noser, the Examiner finds that
Gan discloses hair care compositions for stimulating follicle growth that also
aid in retaining and increasing the diameter of hair that is already present on
the scalp. (Non-Final 4.) The Examiner finds that Gan Example 4,
composition B, provides a composition including 0.2% caffeine (xanthine
compound), 0.2% tocopherol nicotinate, 0.2% panthenol, 69% denatured
2 Gan et al., US 2004/0171693 Al, published Sept. 2, 2004.
3 Denatured alcohol, WordNet,
http://www. wordnetweb. princeton. edu/perl/webwn? s=denatured%20alcoho 1,
(visited Mar. 8, 2011 ).
4 Evans et al., US 5,750,122, issued May 12, 1998.
5 Noser et al., US 2002/0034485 Al, published Mar. 21, 2002.
6 We note that Appellants properly appeal from the Examiner's non-
final rejection mailed June 20, 2013, since the claims on appeal have been
twice rejected. 35 U.S.C. § 134(a).
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alcohol (ethanol) 7 and water, as well as the silicone copolyol conditioning
agent PEG/PPG-20/15 dimethicone. (Non-Final 4.) The Examiner also
finds that composition B does not include a "substantially insoluble oily
compound" and, thus, meets the claimed requirement that the composition
comprises less than 0.1 % of substantially insoluble oily compounds. (Non-
Final 6-7.)
The Examiner finds that what is missing from Gan composition B as
compared to the claimed composition is niacinamide and a thickener that is
an Acrylates/C10-3o Alkyl Acrylate Crosspolymer. (Non-Final 5-7.) The
Examiner concludes that inclusion of these ingredients in Gan composition
B would have been obvious to one of ordinary skill in the art in light of
further teachings in Gan and the disclosure of Noser and Evans. (Non-Final
5---6.)
As to niacinamide, the Examiner finds that it would have been
obvious to one of ordinary skill in the art to substitute the tocopherol
nicotinate of Gan's composition B, which Gan's specification teaches is a
vasodilation enhancer, with niacinamide given that Noser shows functional
equivalency of niacinamide (also called nicotinamide) and tocopherol
nicotinate8 as a vasodilation substance in hair care compositions "for
preventing or at least reducing hair loss." (Non-Final 4--5.)
7 The Examiner finds, and Appellants do not challenge, that W ordN et
discloses denatured alcohol is ethyl alcohol (ethanol) that is unfit for
drinking but is still useful or other purposes. (Non-Final 4.)
8 Noser refers to tocopherol nicotinate as tocopherylnicotinate. (Noser i-f 33.)
Appellants do not dispute the Examiner's position (Non-Final 5) that
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The Examiner further finds that Gan teaches thickeners, like
conditioners, are non-active materials that are useful in improving the
condition of the hair or scalp, and may be included as ingredients in the
disclosed hair care compositions. (Non-Final 4.) In light of this teaching,
the Examiner concludes that it would have been obvious to one of ordinary
skill in the art to include a thickener in Gan's composition B, a composition
which includes another non-active material-the conditioner PEG/PPG-
20/15 dimethicone- to optimize the properties of the composition with a
reasonable expectation of success. (Non-Final 5-6.) The Examiner relies on
Evans regarding the obviousness of using the specifically claimed thickener.
The Examiner finds that Evans teaches acrylates/C10-3o alkyl acrylate
crosspolymers are useful thickeners in a composition that is useful for
treating hair or skin that comprises panthenol and a vehicle that is
compatible with panthenol, such as water and ethanol. (Non-Final 6.) In
light of the teachings of Evans, the Examiner concludes that it would have
been obvious to select an acrylates/C10-3o alkyl acrylate crosspolymer as the
thickener to be added to Gan composition B. (Non-Final 6.)
We agree with the Examiner's fact-findings and conclusion that claim
3 would have been obvious based on the cited references.
Appellants solely contest the Examiner's rejection of claim 3,
providing four reasons that the rejection is improper. First, Appellants
contend that impermissible hindsight was used to find motivation to use
niacinamide is also called nicotinamide, and that Vitamin E nicotinate,
tocopheryl nicotinate, and tocopherol nicotinate are synonymous.
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niacinamide in Gan's creatine compositions because "there are likely
thousands of materials 'suggested' by Gan as optionally useful," and "[n]one
of the many specifically mentioned ingredients include niacinamide." (Br.
5.) Appellants further contend that Noser is concerned with a hair care
composition that includes a different "key ingredient" than Gan, and
similarly to Gan, includes "several paragraphs discussing optional
ingredients that 'increase the effectiveness"' of its hair growth compositions
but does not suggest "a specific, non-essential vasodilator mentioned along
with others ... as an obvious substitution for a specific, non-essential material
broadly reference by Gan." (Br. 5---6.)
Second, Appellants contend that Evans is concerned with
compositions to provide conditioning benefits to the hair or skin, as
compared to Gan's compositions that are for hair growth benefits, and there
is no reason one skilled in the art would have considered Evans' teachings in
the first place, much less to pick the very specific "type of material
[claimed] from Evans' vast disclosure [of optional ingredients]." (Br. 6-7.)
Third, Appellants contend that just because "Gan's examples do not
expressly teach inclusion of a substantially insoluble oily compound is not
tantamount to teaching or suggesting that a composition should not contain
such a material in order to provide a benefit." (Br. 7.) Fourth, Appellants
contend that "the mere inclusion of [PEG/PPG-20/15 dimethicone] in one
example does not constitute a suggestion that these materials would be
particularly useful when combined with the other compositional aspects of
Appellants' claims." (Br. 7-8.)
We do not find any of Appellants' arguments persuasive.
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In particular, Gan and Noser do not merely broadly reference the
inclusion of vasodilators in hair growth promoting compositions. As the
Examiner found, Gan specifically illustrates a composition that includes
tocopherol nicotinate, in a creatine-containing composition that also includes
panthenol, caffeine and the conditioner PEG/PPG-20/15 dimethicone. (Gan
i-f 35 (Example 4, composition B).)
As Gan notes, the inclusion of such a vasodilating compound, which
compounds have "long been associated with an increase in hair growth,"
"can ... enhance the overall efficacy of [its] formulation." (Gan i-f 13.)
Noser, similarly, specifically notes that an additional increase in the
effectiveness of its growth promoting hair composition can be achieved with
the addition of a vasodilating substance, "which act[ s] on the same or
different sites essential for hair growth." (Noser i-f 32.) And, as the
Examiner finds, Noser further identifies niacinamide is functionally
equivalent to tocopherol nicotinate as a vasodilating compound for use in a
growth promoting hair composition. (Noser i-f 33.) In light of the foregoing,
we agree with the Examiner that it would have been obvious to use
niacinamide instead of tocopherol nicotinate in Gan composition B. An
express suggestion of the desirability of substituting known interchangeable
alternatives for one another is not needed to render substitution for their
desired function obvious. In re Fout, 675 F.2d 297, 301(CCPA1982).
Moreover, to the extent Appellants are contending that the use of
niacinamide provides an unexpected result, (Br. 6, pointing to the
Specification's disclosure that "Niacinamide is more preferred."), we find no
such evidence. We note that Appellants' own Specification discloses hair
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care compositions that include either tocopherol nicotinate or niacinamide
and regardless of which was included, the compositions "provide[ d]
improved hair diameter increase benefit" as well as "improved feel during
and/ or after usage, while not compromising the penetration of the hair
diameter increasing agent." (Spec. 16-17 (Example 3, A---C) and 17:10-14.)
The foregoing indicates there are no unexpected results of niacinamide over
Gan's use of tocopherol nicotinate. Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014) ("To be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior art, and
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention.").
Turning now to the inclusion of the claimed thickener, Appellants'
argument that Gan and Evans are nonanalogous art given that they address
different problems is not well-founded. Gan provides a composition for
promoting hair growth or preventing hair loss. However, as the Examiner
finds, Gan further teaches inclusion of non-active ingredients "that are useful
in improving the condition of the hair or scalp" and indicates that thickeners,
besides conditioners, are such an ingredient. (Gan i-f 1 7.)
Evans teaches a hair care composition to provide conditioning
benefits. It exemplifies hair tonic compositions that include panthenol,
water and ethanol (Evans 10:63-11:11) and teaches that crosslinked
copolymer thickeners can also be used in such a composition (Evans 5:24--
6:36). Evans expressly teaches that "examples of carboxylic acid polymer
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thickeners useful herein are ... acrylates/Cl0-30 alkyl acrylate
crosspolymers" (Evans 6:33-36).
The teachings of these references overlap in purpose and one of
ordinary skill in the art would have considered them analogous. Thus, the
Examiner appropriately relied on them as a basis for rejection. See e.g., In
re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) ("In order to rely on a
reference as a basis for rejection of the applicant's invention, the reference
must either be in the field of the applicant's endeavor or, if not, then be
reasonably pertinent to the particular problem with which the inventor was
concerned."). Furthermore, one of ordinary skill in the art would expect the
addition of a non-active thickener that would be useful in improving the
condition of the hair or scalp (Gan i-f 17) to the hair growth composition B of
Gan to not detrimentally affect the follicle-stimulating effect of the
composition. That is particularly true in light of the fact that Gan
composition B includes another non-active material disclosed as an optional
ingredient to improve the condition of the hair or scalp, i.e., the silicone
copolyol conditioning agent PEG/PPG-20/15 dimethicone.
Regarding the selection of the claimed Acrylates/C10-3o Alkyl Acrylate
Crosspolymer from the list of thickeners disclosed by Evans to be used in
the Gan composition, we agree with the Examiner's conclusion that one of
ordinary skill in the art would have had a reasonable expectation of success
in selecting that thickener. The choice is merely a "predictable use of prior
art elements according to their established functions." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007), and Appellants have not shown that
the selection of Acrylates/C10-3o Alkyl Acrylate Crosspolymer from the list of
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thickeners disclosed by Evans would alter the hair care composition of Gan
modified to contain niacinamide rather than tocopherol nicotinate.
Indeed, based on Appellants' own disclosure, it does not appear that
the presence of a thickener of any type would render the Gan composition
ineffective. In particular, Appellants disclose a composition of the invention
that does not include a thickener at all and yet provide "improved hair
diameter benefit." (Spec. 16, Example 3 (composition A).) Appellants also
disclose a composition that includes the thickener hydroxypropyl-
methylcellulose, and not the claimed Acrylates/C10-3o Alkyl Acrylate
Crosspolymer, and indicate the composition still provides an observed
"significant increase in hair diameter." (Spec. 14: 1-15:7.)
Turning to Appellants' argument regarding claim 3 's negative
limitation, we note that a negative limitation merely recites what a claim
lacks and, therefore, is broad by its very nature. Gan does not have to
provide that some benefit is achieved by including less than 0 .1 % of
substantially insoluble oily compounds in the composition. Gan
composition B does not teach including such an oil. Consequently, the
negative limitation is fully taught by Gan's composition B.
We find Appellants' argument regarding claim 3 's requirement to
include a substantially soluble silicone copolyol conditioning agent equally
unpersuasive. First, Appellants are incorrect that the Office Action admits
"the primary Gan reference fails to teach or suggest .. .inclusion of a
substantially soluble silicone copolyol conditioning agent." (Br. 4.) As the
Examiner finds (Non-Final 4), Gan Example 4, composition B includes the
claimed substantially soluble silicone copolyol conditioning agent. (Gan i-f
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35, (composition B includes PEG/PPG-20/15 dimethicone); cf Spec. 11:12-
34 ("silicone copolyols useful herein include ... 'PEG/PPG-20/23
dimethicone'").) Thus, the claimed limitation is explicitly found in the
primary reference that also explicitly teaches the composition includes
caffeine, panthenol, and a nicotinic acid derivative in a water and ethanol
carrier, as claimed.
Moreover, there is no evidence that this ingredient should be removed
from the composition if it were modified to include a thickener or if the
nicotinic acid derivative were substituted by the functionally equivalent
niacinamide. Evans, like Gan, notes that substantially soluble silicone
conditioning agents such as silicone copolyols can be used in hair care
compositions that include thickeners and that provide improved condition of
the hair or scalp. (Evans 6:55---60, 7:9-14.) Furthermore, nothing in Gan
indicates that including a thickener in Gan's composition B (as is a
suggested could be an included ingredient by Gan as discussed above) would
be incompatible with this silicone copolyol.
Accordingly, we affirm the Examiner's obviousness rejection of claim
3 over Gan as evidence by WordNet, in view of Evans and Noser.
Claims 4---6, 8, 12, and 13 have not been argued separately and,
therefore, fall with claim 3. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 3---6, 8, 12, and 13 under 35 U.S.C. § 103(a) for obviousness over
Gan as evidence by WordNet, in view of Evans and Noser.
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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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