Ex Parte Le Bourhis

Board of Patent Appeals and Interferences

Feb 1, 2010

10449083 (B.P.A.I. Feb. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCOIS LE BOURHIS
__________

Appeal 2009-011845
Application 10/449,083
Technology Center 1600
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Decided: February 1, 2010
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to an aerosol
device and styling composition. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

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Statement of the Case
Background
“Styling compositions . . . are generally composed of a liquid phase
comprising, in an aqueous, alcoholic or aqueous-alcoholic cosmetically
acceptable medium, at least one fixing polymer, and a propellant” (Spec. 1,
ll. 14-17). According to the Specification, “compressed-gas devices have
the drawback of losing gas pressure over time . . . This drawback results in
an increasingly poor propulsion of the liquid phase over time and
consequently increasingly poor distribution of the liquid phase on the hair”
(Spec. 1, ll. 20-26).
The Specification teaches that the “inventors have made the surprising
discovery that mechanical separation of the liquid phase from the propellant
compressed gas, and the use of a particular compressed gas and of a fixing
polyurethane, make it possible to solve the problems of leakage and of
distribution of the liquid phase on the hair” (Spec. 2, ll. 7-10).
The Claims
Claims 1-5, 7-14, and 16-21 are on appeal. Claims 1 and 3 are
representative and read as follows:
1. An aerosol device comprising:

(a) in a first compartment, a styling composition
comprising at least one fixing polyurethane in an alcoholic
or aqueous-alcoholic cosmetically acceptable medium that
comprises at least 5% by weight, relative to the weight of
the said composition, of at least one C1-C4 monohydric
alcohol, and

(b) in a second compartment, a compressed gas
comprising air.
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3. The device according to claim 1, wherein the pressure
of the compressed gas is between 1 and 12 bar.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Curry et al. US 3,966,087 Jun. 29, 1976
Werding US 4,487,334 Dec. 11, 1984
Kim et al. US 6,410,004 B1 Jun. 25, 2002

The issues
A. The Examiner rejected claims 1, 2, 5, 8-14, and 16-21 under 35
U.S.C. § 103(a) as obvious over Kim and Curry (Ans. 3-6).
B. The Examiner rejected claims 1-5, 7-14, and 16-21 under 35 U.S.C. §
103(a) as obvious over Kim, Curry, and Werding (Ans. 6-8).
The Examiner finds that “Kim et al. disclose a cosmetic polymer
composition that can be used as a hair spray” (Ans. 3). The Examiner finds
that Kim teaches that “[s]uitable propellants include compressed air” (Ans.
4). The Examiner finds that “Curry et al. teach a two-compartment aerosol
dispensing device having a first compartment containing a liquid phase hair
treatment preparation and a second compartment containing a propellant
gas” (Ans. 4). The Examiner finds it obvious to modify the “hair spray
composition of Kim et al. by placing it in a two-chamber aerosol device as
suggested by Curry . . . because Curry et al. disclose that the two
compartment aerosol device is characterized by a low propellant content
which is a significant savings over other hair preparations” (Ans. 5).
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Appellant argues that “none of the cited references, alone or in
combination, teaches or suggests a two-compartment device in which a
propellant comprising air is in one compartment, and a styling composition
is in the other compartment” (App. Br. 3). Appellant argues that “combining
Kim’s compositions in Curry’s two compartment device would not yield the
claimed invention because Curry’s two compartment device does not use air
as a propellant” (App. Br. 4).
Appellant also argues that no “motivation would have existed to use
Kim’s compositions in Curry’s two compartment devices. Specifically, Kim
was filed about 26 years after Curry. Thus, Curry’s two compartment
devices were well-known at the time Kim filed his application. Yet, Kim
neither teaches nor suggests using his compositions in a two-compartment
device” (App. Br. 4).
In view of these conflicting positions, we frame the obviousness
issues before us as follows:
(i) Has Appellant demonstrated that the Examiner erred in finding it
obvious to modify hair composition of Kim for use in the two-chamber
aerosol device of Curry?
(ii) Has Appellant demonstrated that the Examiner erred in finding it
obvious to pressurize the aerosol device of Kim in view of Curry with 2-11
bar pressure as taught by Werding?
Findings of Fact (FF)
1. Kim teaches polymers which “should be suitable as a cosmetic
composition, or for use in cosmetic compositions, in particular hair
treatment composition[s]” (Kim, col. 3, ll. 39-41).
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2. Kim teaches that a “further consideration when formulating
hair-setting compositions is that, because of the environmental regulations
governing the emission of volatile organic compounds (VOC) into the
atmosphere, it is necessary to reduce the content of alcohol and propellant”
(Kim, col., 1, ll. 31-35).
3. The Examiner finds that:
Kim et al. disclose a polyurethane comprised of
polyesterdiol/neopentyl glycol/dimethylolpropanoic
acid/isophorone diisocyanate (Column 21, lines 35-60). This
polyurethane was combined with a neutralizing polymer,
which has as a component polydimethylsiloxane diamine
(See: Column 19, lines 43 to 68 and Column 23, “Examples
According to the Invention” 2-6). By virtue of combining
the polyurethane and the neutralizing copolymer, the
Applicant's elected polymer (dimethylpropionic
acid/isophorone diisocyanate/neopentyl glycol/
polyesterdiols/silicone diamine copolymer) . . . is disclosed.

(Ans. 4.)
4. Kim discloses the use of ethanol in the hairspray in amounts
from 20 to 57% (see Kim, col. 25, Example 26).
5. Kim teaches that “[o]ther propellants which can be used are
compressed gases, such as nitrogen, air or carbon dioxide” (Kim, col. 16, ll.
11-12).
6. Curry teaches “[a]n aerosol hairsetting preparation comprises a
film-forming resin and a minor amount of a propellant dissolved in water
and optionally a water-miscible organic solvent” (Curry abstract).
7. Curry teaches that the “product is preferably dispensed from an
aerosol can having two compartments connected by a gas valve, one
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compartment containing the product and the other containing propellant gas”
(Curry abstract).
8. Curry teaches that “[a]ny of the usual film-forming resins
which are used in hair preparations can be used, provided of course that they
are soluble in the single liquid phase which characterizes the preparation”
(Curry, col. 2, ll. 10-13).
9. Curry teaches that “[h]air preparations normally contain a high
proportion, usually at least 50% by weight, of liquefied gas propellant in
order to ensure, in the interests of economy, that substantially all the
contents of the pack are dispensed before the propellant is exhausted”
(Curry, col. 1, ll. 9-13).
10. Curry teaches that “[w]e have now devised a hairsetting
preparation which is characterized by a low propellant content . . . The
amount of propellant dissolved in the preparation forms no more than 25%,
usually from 0.001 to 20% and preferably 5 to 15% by weight of the
preparation” (Curry, col. 1, ll. 33-50).
11. Curry teaches that:
[I]t is convenient according to a preferred technique to fill
the upper compartment of a two compartment pack . . . with
the preparation comprising water or water/solvent solution
of the resin but without liquefied propellant. The lower
compartment which forms a reservoir is then filled with
sufficient propellant to enable all of the preparation
eventually to be dispensed. During a period of equilibration
after filling, some propellant gas passes via the valve to the
upper compartment to fill the headspace with propellant gas,
some of which will dissolve in the preparation.

(Curry, col. 3, ll. 47-59.)
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12. Curry teaches that the propellant may comprise permanent (i.e.,
non-liquified) gases such as “carbon dioxide, nitrogen and nitrous oxide”
(Curry, col. 1, ll. 62-63).
13. Werding teaches that “[i]f a higher initial pressure, for instance
of 10.5 bar, is used, then the spray nozzle ejects a spray cloud of the finest
particle size” (Werding, col. 2, ll. 9-11).
14. Werding teaches that “[i]f, therefore, a hair lacquer . . . is to be
sprayed, which for various reasons should evaporate rapidly, i.e., which
demand a small particle size, then the initial pressure in a container 22
having a gas space which occupies 30% of the total container volume, must
be 11 bar” (Werding, col. 7, ll. 21-26).
15. Werding discloses that preferred initial pressures range from 5
to 11 bar, with hair lacquers requiring 11 bar and other agents requiring less
pressure (see Werding, col. 7, l. 58 to col. 8, l. 20).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int'l v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
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“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious”, KSR directs that “a court must ask whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
Analysis
Claim 1
Kim teaches an aerosol device comprising a hair styling composition
with a fixing polyurethane which Appellant does not dispute satisfies the
requirements of element (a) of claim 1 (FF 1-4). Kim teaches that
“propellants which can be used are compressed gases, such as nitrogen, air
or carbon dioxide” (Kim, col. 16, ll. 11-12; FF 5).
Curry teaches hair styling compositions which are “preferably
dispensed from an aerosol can having two compartments connected by a gas
valve, one compartment containing the product and the other containing
propellant gas” (Curry abstract; FF 7). Curry teaches that “[h]air
preparations normally contain a high proportion . . . of liquefied gas
propellant in order to ensure, in the interests of economy, that substantially
all the contents of the pack are dispensed before the propellant is exhausted”
(Curry, col. 1, ll. 9-13; FF 9). Curry teaches that “[w]e have now devised a
hairsetting preparation which is characterized by a low propellant content. . .
The amount of propellant dissolved in the preparation forms no more than
25%, usually from 0.001 to 20% and preferably 5 to 15% by weight of the
preparation” (Curry, col. 1, ll. 33-50; FF 10).
Applying the KSR standard of obviousness to the findings of fact,
Curry provides a specific reason to use the two compartment aerosol device
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for delivery of hair styling compositions, including the hair styling
composition of Kim. Curry teaches that the two compartment aerosol
device reduces the amount of propellant required to ensure dispensing of the
entire hair styling composition (FF 9-11). We agree with the Examiner that
Curry and Kim teach a combination of known predictable elements which
would reasonably be expected to efficiently dispense Kim’s hair styling
composition from Curry’s two compartment device (see Ans. 9). Such a
combination is merely a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellant’s argument that “none of the cited
references, alone or in combination, teaches or suggests a two-compartment
device in which a propellant comprising air is in one compartment, and a
styling composition is in the other compartment” (App. Br. 3). Kim teaches
that air may be a propellant in an aerosol device, as well as nitrogen and
carbon dioxide (FF 5), while Curry teaches that the propellant may comprise
permanent gases such as “carbon dioxide, nitrogen and nitrous oxide”
(Curry, col. 2, ll. 62-63; FF 12). We agree with the Examiner that the
ordinary artisan, taught by Kim that propellants may include air, nitrogen
and carbon dioxide, would have reasonably been taught that air is a suitable
propellant in the two compartment device of Curry, which also teaches that
carbon dioxide and nitrogen are suitable propellant gases.
Appellant argues that no “motivation would have existed to use Kim’s
compositions in Curry’s two compartment devices. Specifically, Kim was
filed about 26 years after Curry. Thus, Curry’s two compartment devices
were well-known at the time Kim filed his application. Yet, Kim neither
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teaches nor suggests using his compositions in a two-compartment device”
(App. Br. 4). We are not persuaded. “Absent a showing of long-felt need or
the failure of others, the mere passage of time without the claimed invention
is not evidence of nonobviousness.” Iron Grip Barbell Co., Inc. v. USA
Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). See also In re Wright,
569 F.2d 1124, 1127 (CCPA 1977) (“The mere age of the references is not
persuasive of the unobviousness of the combination of their teachings,
absent evidence that, notwithstanding knowledge of the references, the art
tried and failed to solve the problem”). Appellant has not, in the instant
case, provided any evidence of long-felt need or failure by others.
We are not persuaded by Appellant’s argument that “no motivation
would have existed to seek alternative devices in an attempt to lower the
amount of propellant used because ‘low’ amounts of propellant are already
used in Kim’s compositions” (App. Br. 4). When Appellant points to Kim
teaching “low” amounts of propellant at column 16, Kim actually teaches
amounts ranging from “0 to 70% by weight, preferably 0.1 to 50% by
weight, of a propellant (Kim, col. 17, ll. 41-42). However, the upper end of
these ranges is significantly greater than those required by Curry, who
teaches that the “amount of propellant dissolved in the preparation forms no
more than 25%, usually from 0.001 to 20% and preferably 5 to 15% by
weight of the preparation” (Curry, col. 1, ll. 48-50; FF 10). Kim teaches that
the “amount of propellant can thus be kept low, in order not to increase the
VOC content unnecessarily. It is then generally no more than 55% by
weight” (Kim, col. 16, ll. 13-15). Thus, a straightforward comparison shows
that the ordinary practitioner could reduce propellant by half or more in
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using the two compartment aerosol device of Curry. This actually provides
greater motivation to combine the references since using Curry’s device will
help satisfy Kim’s desire to have reduced levels of volatile organic
compounds (VOC) as discussed in column 16.
We also are not persuaded by Appellant’s argument that “Curry
neither teaches nor suggests that a compressed gas, by itself, without the
presence of a liquid propellant, would be suitable for his devices. In fact, by
requiring the presence of a liquid propellant, Curry actually teaches away
from such a substitution” (Reply Br. 2). Appellant’s Claim 1 uses the open
“comprising” format and permits the inclusion of a liquid propellant. The
ordinary artisan would recognize that in combining Curry with Kim, the
propellant gas mixture would function as taught by Curry. This does not
teach away from the combination of Curry and Kim, but rather teaches a
particular type of combination. Like our appellate reviewing court, “[w]e
will not read into a reference a teaching away from a process where no such
language exists.” DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006).
Claim 3
We are not persuaded by Appellant’s argument that Werding’s “single
compartment devices cannot teach or suggest the claimed two-compartment
devices which require the styling composition and the propellant to be in
different compartments” (App. Br. 5). For the reasons we have discussed
above, Kim and Curry render obvious the combination of the styling
compositions of Kim and the two compartment aerosol devices of Curry.
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We also are not persuaded by Appellant’s argument that “Werding
relates to a specific nozzle which reportedly addresses pressurization
problems in single compartment devices. Accordingly, no motivation or
need would have existed to combine Werding with a reference disclosing a
two-compartment device like Curry” (App. Br. 5). Werding teaches that
“[i]f, therefore, a hair lacquer . . . is to be sprayed, which for various reasons
should evaporate rapidly, i.e., which demand a small particle size, then the
initial pressure in a container 22 having a gas space which occupies 30% of
the total container volume, must be 11 bar” (Werding, col. 7, ll. 21-26; FF
14).
We agree with the Examiner that Werding simply teaches “the proper
pressure of the compressed gas, such as compressed air, in an aerosol spray
can” (Ans. 10). In fact, Werding discloses that while preferred initial
pressures range from 5 to 11 bar, hair lacquers require 11 bar (see Werding,
col. 7, l. 58 to col. 8, l. 20; FF 15). This provides a strong reason to use this
pressure in the hair lacquer devices of Kim and Curry.
Conclusion of Law
(i) Appellant has not demonstrated that the Examiner erred in finding
it obvious to modify hair composition of Kim for use in the two chamber
aerosol device of Curry.
(ii) Appellant has not demonstrated that the Examiner erred in finding
it obvious to pressurize the aerosol device of Kim in view of Curry with 2-
11 bar pressure as taught by Werding.
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) over Kim and Curry. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006),
we also affirm the rejection of claims 2, 5, 8-14, and 16-21 as these claims
were not argued separately.
We affirm the rejection of claim 3 under 35 U.S.C. § 103(a) over
Kim, Curry, and Werding. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006),
we also affirm the rejection of claims 4 and 7 as these claims were not
argued separately.
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)(iv)(2006).
AFFIRMED

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