Ex Parte Kinoshita et al

Patent Trial and Appeal Board

Feb 11, 2016

13057329 (P.T.A.B. Feb. 11, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/057,329 02/03/2011 Kouichi Kinoshita IWI-34205 2041
7609 7590 02/11/2016
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
EXAMINER
VENKAT, JYOTHSNA A
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
02/11/2016 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 KOUICHI KINOSHITA, REIJI MIYAHARA,
TAKASHI TESHIGAWARA, YUKO NAGARE,
and KENJI KUROKAWA
__________

Appeal 2013-006666
Application 13/057,329
Technology Center 1600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a hair
conditioning composition. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as the Shiseido Company,
Ltd. (see App. Br. 3).
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Statement of the Case
Background
“The present invention relates to a hair conditioning composition and
particularly relates to a concentrated hair conditioner that is diluted when
used” (Spec. ¶ 2). “[R]eduction in the water content of hair conditioner
leads to reductions in a lot of energy consumption[,] in quality maintenance,
production and transportation, and in product cost” (id. ¶ 5).
The Claims
Claims 10, 12–14, 19, 21, and 22 are on appeal.2 Independent claim
10 is representative and reads as follows:
10. A hair conditioning composition comprising:
(a) 10 to 90% by mass of one or more components
selected from straight chain alcohols having 16 or more carbon
atoms, straight chain fatty acids having 16 or more carbon
atoms, and/or derivatives thereof represented by following
formulas (I) and (II),

R1-O- (-(CH2)y-O-)x- H (I)

wherein R1 is a straight chain fatty acid residue having 16 or
more carbon atoms, and each of x and y is an integer of 1 to 3,

R2-COO-CH2-CH(OH)-CH2-Q (II)

wherein R2 is a straight chain fatty acid residue having 16 or
more carbon atoms, and Q is H or OH,
(b) 5 to 35% by mass of a cationic surfactant which is a
mono long-chain alkyl type quaternary ammonium salt, and

2 Claims 1–9, 11, 17, 18, 20, 23, and 27 were cancelled and claims 15, 16,
24, 25, 26, 28, and 29 withdrawn (see App. Br. 5).
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(c) erythritol, maltitol, and/or polyethylene glycol with a
molecular weight of 3,000 to 300,000,
wherein endothermic peak of a gel which is formed from
(a) and (b) in the composition is 50ºC or more as measured by a
differential scanning calorimeter (DSC) and
wherein the water content is 10% by mass or less, and
wherein a molar ratio of (a) to (b) is 2.5:1 or more and
less than 6.0:1.

The Issues
A. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as obvious
over Agarelli,3 and Snyder4 (Ans. 3–4).
B. The Examiner rejected claims 12–14, 19, 21, and 22 under 35 U.S.C.
§ 103(a) as obvious over Agarelli, Snyder, Carew,5 and Sorrentino6 (Ans. 4–
5).
A. 35 U.S.C. § 103(a) over Agarelli and Snyder
The Examiner finds that Agarelli teaches hair conditioning
compositions comprising “behenic alcohol, cetyl alcohol and this reads on
ingredient (a) drawn to fatty alcohol,” and “Ceraphyl 70, which is
Quaternium 70 [and] reads on [ingredient (b) drawn to] cationic surfactant”
and glycerin as a third ingredient (c) (Ans. 3). The Examiner finds that
Agarelli teaches that “the molar ratio[] of [ingredients] (a) to (b) is less than
2.5” (id.). The Examiner finds that Agarelli teaches overlapping amounts of
components (a) and (b) and that Example 6 exemplifies a water content that
“is less than 10%” (id.).

3 Agarelli et al., WO 2006/119042 A1, published Nov. 9, 2006.
4 Snyder et al., US 2003/0165454 A1, published Sept. 4, 2003.
5 Carew et al., WO 03/000205 A1, published Jan. 3, 2003.
6 Sorrentino et al., US 4,007,261, issued Feb. 8, 1977.
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The Examiner acknowledges that Agarelli does not teach substitution
of glycerin with “erythritol or maltitol or polyethylene glycol” (id. at 4).
The Examiner finds that Snyder teaches hair conditioning formulations, and
teaches “humectant, which can be glycerin, erythritol, or maltitol,” and also
teaches “polyethylene glycol claimed under (c) as viscosity modifiers” (id.).
The Examiner finds it obvious to prepare
compositions of [Agarelli] . . . by using fatty alcohols, cationic
surfactant and water which is less than 10% and change the
molar ratios of components a and b in example 6 since
[Agarelli] teaches the claimed weight percent of (a) and (b) and
combine with humectant, which is maltitol or erythritol or use
the viscosity modifier polyethylene glycol with the reasonable
expectation of success that humectants attract water to the hair
to keep the moisture content high in the hair and when the
moisture content is high then hair is not dry and it provides not
only moisturizing property to the hair, but the hair is also
manageable.

(Id.).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner’s conclusion
that Agarelli and Snyder render claim 10 obvious?
(ii) If so, have Appellants presented evidence of secondary
considerations, that, when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. The Specification teaches that “[e]xamples of the polyhydric
alcohol used in the present invention include erythritol, maltitol, sorbitol,
xylitol, and glycerin,” and provides that “the compositions using glycerin
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and polyethylene glycol with low molecular weight ([]average molecular
weight of 400) were agents having a semi-solid state at ambient temperature,
that were excellent in ease of handling” (Spec. ¶¶ 60, 104).
2. Table 1 of the Specification is reproduced below:

Table 1 teaches data from evaluating water absorbability of hair
conditioning composition and endothermic peak temperature, comprising,
inter alia, erythritol, maltitol, sorbitol, D-mannit, xylitol, glycerin,
polyethylene glycol 6000, and polyethylene glycol 400 (id. ¶ 102).
3. The Specification teaches that the hair conditioning
formulations were prepared by mixing and stirring
13.9% by mass of stearyl trimethyl ammonium chloride and
32.6% by mass of stearyl alcohol (molar ratio of both: 3) under
heating at 130º C and 53.5% by mass of each medium shown in
the following Table 1 previously melted were mixed under
heating until homogeneous. Thereafter, the mixture was
transferred to a container and cooled to room temperature to
give a hair conditioning composition. These hair conditioning
compositions are compositions in which general hair
conditioners are concentrated into one-tenth and can be diluted
with water or the like as a hair conditioning precursor
composition and used.

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(Id. ¶ 97).
4. Agarelli teaches “a lamellar oil-in-glycol gel that comprises (a)
at least one glycol, (b) at least one fatty alcohol, (c) at least one cationic
surfactant and optionally (d) at least one benefit agent” (Agarelli 4, ll. 2–4).
5. Agarelli teaches that “[s]uitable fatty alcohols are . . . those
having linear chains, such as stearyl, cetyl or behenic alcohol . . . . A
suitable amount of fatty alcohol in the lamellar gel of the present invention
ranges from about 0.1 to about 40%” (id. at 4, ll. 24–29).
6. Agarelli teaches that a “suitable amount of cationic surfactant in
the lamellar gel of the present invention ranges from about 0.001 to about
30%” (id. at 5, ll. 13–14).
7. Table 3 of Agarelli is reproduced below:

Example 6 in Table 3 discloses a composition that comprises 15% Prolipid
161 which is itself composed in part by behenic alcohol and cetyl alcohol,
8% Ceraphyl 70 (quaternium 70), 0.4% glycine, and less than 10% water by
mass. (Id. at 11, Table 3).
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8. Agarelli teaches that the composition of Example 14 that
comprised 15% Prolipid 161 (itself comprising behenic alcohol and cetyl
alcohol), 8% Ceraphyl 70 (quaternium 70), 55% glycine, and less than 10%
water by mass, was tested on the head as a conditioning formulation (id. at
11, Table 3; 15, ll. 9–13).
9. Agarelli teaches that that “[a]nother technical advantage of the
present invention is that the lamellar oil-in-glycol gel has a melting point
below about 46ºC, preferably from about 36ºC to about 46ºC” (id. at 7, ll. 9–
12).
10. Snyder teaches hair conditioning compositions (Snyder 2) and
teaches that “[p]referably, the compositions of the present invention contain
a humectant. The humectants herein are selected from the group consisting
of . . . glycerin . . . erythritol . . . maltitol . . . [and] polyethylene glycols”
(Snyder ¶¶ 168–169).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3–4; FF 1–10) and agree that the
claims are rendered obvious by Agarelli and Snyder. We address
Appellants’ arguments below.
Prima Facie Obviousness
Appellants contend that Snyder “lists a large number of humectants
and viscosity modifiers without ANY mention or suggestion of the water
absorbability of the claimed combination. Consequently, [Snyder] . . .
generically described humectants and viscosity modifiers do NOT teach or
suggest the specific combination (a)-(c) of the claimed hair conditioning
composition” (App. Br. 12). Appellants contend that the “Examiner fails to
identify where a factual support showing that humectant translates to water
absorbability is. Moreover, the Examiner’s allegation is incorrect.
Hygroscopicity of humectant is not always proportional to water
absorbability” (Reply Br. 4). Appellants contend that “cited art does not
contain any teaching regarding which compounds have low hygroscopicity,
but high water absorbability” (id. at 6).
We find these arguments unpersuasive. Claim 10 does not require
“water absorbability” for any component, much less the humectant
component. Nor is there a requirement for “low hygroscopicity” in claim
10. Moreover, the Examiner did not rely upon Snyder to anticipate claim
10, but rather relied upon the combination of Agarelli and Snyder to render
claim 10 obvious, where Snyder is relied upon to demonstrate that maltitol,
erythritol, and polyethylene glycol would have been recognized as known
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equivalent humectants to glycerin by the ordinary artisan (FF 10). See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. . . .
[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.”).
Appellants contend that Agarelli “teaches ‘a lamellar gel system of the
oil in glycol type, having a melting point below about 46°C,’ ‘preferably
from about 36°C to about 46°C.’ . . . Thus, [Agarelli] . . . teaches away from
the claimed invention” (App. Br. 13 (emphasis omitted)). Appellants further
contend that:
the proposed combination of [Agarelli and Snyder] . . . would change
the principle of operation of the cited art. . . . [Agarelli] explicitly
teaches that the lamellar gel system of the oil in glycol type has a
melting point below about 46°C. . . . If erythritol, maltitol, and/or
polyethylene glycol with a molecular weight of 3,000 to 300,000
would be added to the oil in glycol lamellar system of [Agarelli] . . . ,
as the Examiner suggests, the melting point of the resultant glycol
lamellar system will be above 50°C. The suggested combination of
[Agarelli and Snyder] . . . would require a substantial reconstruction
and redesign of the elements shown in the cited art, and therefore the
subjected combination of [Agarelli and Snyder] . . . would change the
principle of operation of the cited art.

(Id.).
We are not persuaded. Appellants do not present evidence
establishing the criticality of the claimed endothermic peak range end point
of 50°C or acceptable temperature error range calculation, while Agarelli
expressly states “about 46°C.” Agarelli’s “use of the term ‘about’ shows
that the applicants did not intend to limit the claimed ranges to their exact
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end-points.” In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005). A
rejection based on ranges approaching each other may well be appropriate
where there is a teaching in the prior art that the end points of the prior art
range are approximate, or can be flexibly applied. In re Patel, 2014 WL
3454231 *4 (Fed. Cir. 2014). Therefore the claimed endothermic peak
temperature of 50ºC or more, and the prior art Agarelli melting point below
about 46ºC, are very closely approaching and can be flexibly applied.
Further, Appellants’ endothermic peak assessments, according to the
Specification, pertain to composition data reported in Table 1 (FF1; Reply
Br. 7–11). We note that the portion of the Specification pertaining to the
preparation of the compositions of Table 1 does not provide sufficient
description to establish that the tested compositions are compositions
commensurate in scope with the claims, in that no information has been
provided at least as to the final concentration of water, and final percent by
mass of ingredients stearyl trimethyl ammonium chloride and stearyl
alcohol. The Specification recites “(molar ratio of both: 3),” which ratio is
further a single point only, and not commensurate in scope with claimed
“molar ratio of (a) to (b) is 2.5:1 or more and less than 6.0:1” (FF 2; Reply
Br. 7–11).
Moreover, Appellants have failed to rebut the Examiner’s prima facie
case of obviousness with evidence, which establishes the criticality of the
claimed endothermic peak temperature. Indeed, Appellants’ own
Specification teaches that “[e]xamples of the polyhydric alcohol used in the
present invention include erythritol, maltitol, sorbitol, xylitol, and glycerin”,
and provides that “the compositions using glycerin and polyethylene glycol
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with low molecular weight ([]average molecular weight of 400) were agents
having a semi-solid state at ambient temperature, that were excellent in ease
of handling” (FF 1; emphasis added).
Appellants argue that “[o]ne skilled in the art reading the teaching of
[Snyder] . . . would not add erythritol or maltitol to the compositions of
Table 3 of [Agarelli] . . . . The compositions of Table 3 of [Agarelli] . . .
already include 50wt% to 55wt% of glycerin that is, according to the
teaching of [Snyder] . . . , a humectant” (App. Br. 14).
We are not persuaded. The Examiner relied upon Snyder to show that
the prior art recognized erythritol, maltitol, and polyethylene glycol as
alternative humectants to glycerin (FF 10). “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR at
417. Moreover, an “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d 297, 301 (CCPA 1982).
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Secondary Considerations
Appellants contend that “hair conditioning compositions including
erythritol, maltitol, and/or polyethylene glycol with a molecular weight of
3,000 to 300,000 show 12 or more water absorbability after 24 hours. . . . In
contrast, the hair conditioning composition including glycerin shows only
7.5 water absorbability after 24 hours” (App. Br. 10). Appellants contend
that “[s]uperiority of a property is evidence of nonobviousness” (id. at 11).
Appellants contend that the “advantage of claimed hair conditioning
composition is completely unexpected from the cited art” (id.).
We are not persuaded that the less than two-fold change from 7.5 to
12 in water absorbability between glycerin and the humectants of claim 10
represents an unexpected result. Agarelli teaches the use of the humectant
glycerin in the hair composition (FF 7) and Snyder demonstrates that
erythritol, maltitol, and polyethylene glycol were known equivalent
humectants to glycerin (FF 10). Thus, the prior art would have expected
humectant activity for erythritol, maltitol, and polyethylene glycol and
Appellants have not demonstrated that the degree of improvement from 7.5
to 12 resulted in a significant, practical advantage in the hair conditioning
composition, rather than simply representing a preferred embodiment. See
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1363
(Fed. Cir. 2012) (“‘It would at least be necessary to demonstrate that the
improvements observed were greater to an unobvious extent than those
which would have been expected from the reference teachings and that those
differences were of some significant, practical advantage’”) citing with
approval Ex parte Nutrasweet Co., 19 U.S.P.Q.2d 1586, 1589 (BPAI 1991).
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Appellants fail to establish that a significant aspect of the claimed
invention would have been unexpected. Specifically, the portion of the
Specification pertaining to the preparation of the compositions of Table 1
does not provide sufficient description to establish that the tested
compositions are compositions commensurate in scope with the claims. The
Example in the Specification does not teach the final concentration of water,
and final percent by mass of ingredients stearyl trimethyl ammonium
chloride and stearyl alcohol. The Specification recites “(molar ratio of
both: 3),” which ratio is further a single point only, and not commensurate in
scope with the claimed “molar ratio of (a) to (b) is 2.5:1 or more and less
than 6.0:1” (FF 2). Whether the unexpected results are the result of
unexpectedly improved results or a property not taught by the prior art, the
unexpected results must be “commensurate in scope with the degree of
protection sought by the claimed subject matter.” In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005). In other words, the showing of unexpected
results must be reviewed to see if the results occur over the entire claimed
range. In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980).
This conclusion is further consistent with Appellants’ own
Specification. Appellants argue that the problem to be solved by the subject
invention is to provide an easily-handled hair conditioning composition with
a very low water content (i.e., an easily-handled, concentrated hair
conditioner that is diluted when used) (App. Br. 10). None of the arguments
above, based on unexpected results with water absorbability, even pertain to
ease of handling. To the contrary, Appellants’ Specification teaches that
“[e]xamples of the polyhydric alcohol used in the present invention include
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erythritol, maltitol, sorbitol, xylitol, and glycerin,” and provides that “the
compositions using glycerin and polyethylene glycol with low molecular
weight ([]average molecular weight of 400) were agents having a semi-solid
state at ambient temperature, that were excellent in ease of handling” (FF 1;
emphasis added).
Conclusion of Law
(i) The evidence of record supports the Examiner’s conclusion that
Agarelli and Snyder render claim 10 obvious.
(ii) Appellants have not presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness.
B. 35 U.S.C. § 103(a) over Agarelli, Snyder, Carew, and Sorrentino
Appellants do not argue separately this obviousness rejection, instead
relying upon their arguments to overcome the combination of Agarelli and
Snyder. The Examiner provides sound fact-based reasoning for combining
Agarelli, Snyder, Carew, and Sorrentino (see Ans. 4–5). Having affirmed
the obviousness rejection of claim 10 over Agarelli and Snyder for the
reasons given above, we also find that the further obvious combination with
Carew and Sorrentino renders the rejected claims obvious for the reasons
given by the Examiner.
SUMMARY
In summary, we affirm the rejection of claim 10 under 35 U.S.C.
§ 103(a) as obvious over Agarelli and Snyder.
We affirm the rejection of claims 12–14, 19, 21, and 22 under
35 U.S.C. § 103(a) over Agarelli, Snyder, Carew, and Sorrentino.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED