Ex Parte Marsh et al

Patent Trial and Appeal Board

Nov 16, 2017

13737035 (P.T.A.B. Nov. 16, 2017)

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.
13/737,035 01/09/2013 Jennifer Mary Marsh 12333M 1047
27752 7590 11/20/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
11/20/2017 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
Ex parte JENNIFER MARY MARSH, HOWARD DAVID HUTTON III,
KEVIN LEE DOYLE, and JENNIFER ELAINE HILVERT1
Appeal 2017-003871
Application 13/737,035
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
method for washing hair which have been rejected as being obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
“Many consumers use water supplies that originate from ground water
sources, which often contain various quantities of dissolved minerals such as
1 Appellants identify the Real Party in Interest as The Proctor and Gamble
Company. Br. 1.
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Application 13/737,035
calcite (calcium), dolomite (calcium and magnesium), magnetite (iron), and
chalcanthite (copper).” Spec. 1. These minerals can deposit on hair surfaces
which can lead to poor hair health. Id. The Specification describes
compositions and methods for hair care which inhibit or removed mineral
deposits on hair. Spec. 2.
Claims 24, 25, and 28—52 are on appeal.2 Claim 24 is representative
of the rejected claims and reads as follows:
24. A method of reducing deposited mineral content on
keratinous tissue, comprising:
1) contacting keratinous tissue with a hair care
composition comprising:
a. from about 0.01 wt% to about 10 wt% of a chelant (L),
wherein the chelant has
i. a log KcaL of less than about -2, and
ii. a log KcuL of greater than about 3 or a log KFeL of
greater than about 10,
wherein the log KcaL is the log of a conditional stability
constant of the chelant with Ca+2 calculated at pH 5, the log
KcuL is the log of a conditional stability constant of the chelant
with Cu+2 calculated at pH 5, and the log KFeL is the log of a
conditional stability constant of the chelant with Fe+3 calculated
at pH 5;
b. a buffer system comprising an organic acid and/or a
salt thereof, wherein the organic acid is selected from an alpha-
hydroxy acid or a polycarboxylic acid;
c. from about 2 wt% to about 50 wt% of a detersive
surfactant; and
d. a carrier,
wherein the buffer system is present in a sufficient
quantity to provide the hair care composition with a pH from
about 2 to 4.5 at 25°C, and
2 Claims 1—23, 26, and 27 are pending but have been withdrawn from
consideration. Final Act. 2.
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Application 13/737,035
2) rinsing the hair care composition from the keratinous
tissue.
Claims 24, 25, and 28—52 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bushman3 in view of O’Mahoney.4
DISCUSSION
Issue
The issue with respect to this appeal is whether a preponderance of the
evidence supports the Examiner’s conclusion that claims 24, 25, and 28—52
would have been obvious over Bushman combined with O’Mahoney.
The Examiner finds that Bushman teaches a method for washing hair
using a shampoo comprising an anionic detergent, citric acid and water.
Final Act. 3. The Examiner finds that the shampoo in Bushman has a pH of
from 3 to 4.5. Id. The Examiner finds that O’Mahoney discloses a method
for reducing deposited mineral content on keratinous compositions by using
a shampoo containing the chelant ethylene diamine disuccinic acid
(“EDDS”) which the present Specification teaches as meeting the parameters
recited in the claims. Final Act. 3^4. The Examiner finds that O’Mahoney
teaches that the use of EDDS improves the lathering of the shampoo and
prevents damages and breakage of hair due to the harsh effects of the
minerals in the water used. Final Act. 4. The Examiner concludes that
it would have been obvious for one of ordinary skill in the art at
the time of the instant invention to add the EDDS of
O’Mahoney et al. to the shampoo composition of Bushman. As
3 Bushman, US 4,321,156, issued Mar. 23, 1982 (“Bushman”).
4 O’Mahoney, WO 2012/020226 Al, published Feb. 16, 2012
(“O’Mahoney”).
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Application 13/737,035
both the compositions of Bushman and O’Mahoney et al. are
useful as shampoo compositions and comprise substantially
similar ingredients; it would have been obvious to one of
ordinary skill in the art at the time of the instant invention to
combine the elements as claimed by known methods with no
change in their respective functions, and the combination
yielding nothing more than predictable results. “It is prima
facie obvious to combine two compositions each of which is
taught by the prior art to be useful for the same purpose, in
order to form a third composition to be used for the very same
purpose. . . . [T]he idea of combining them flows logically
from their having been individually taught in the prior art.” In
re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072
(CCPA 1980) (MPEP 2144.06.1). In addition, one of ordinary
skill in the art would have been motivated in order to obtain the
benefits attributed to the EDDS described by O’Mahoney et al.
of improved lathering and the prevention of damage and
breakage of hair due to the harsh effects of the minerals.
Final Act. 4—5.
Appellants contend that one skilled in the art would not have
combined the references as they have different objectives. Br. 5.
Appellants argue that our reviewing court’s decision in In re Kerkhoven is
not applicable to the instant case as the present invention does not involve
the combination of two known actives to obtain a known composition. Br.
6. Appellants argue that the present invention is directed to novel methods
for using hair care compositions containing chelants to reduce the level of
mineral deposits on keratinous tissue. Id. Appellants contend that the
references do not suggest this use. Br. 6—7.
Appellants also contend that the Examiner has engaged in improper
use of hindsight in reaching the conclusion that the subject matter of the
claims would have been obvious. Br. 7. Appellants argue that one skilled in
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the art would not have been motivated to use the chelant of O’Mahoney in
the shampoo of Bushman because the effectiveness of EDDS decreases as
pH decreases. Br. 7—8. Next, Appellants argue that the Examiner has failed
to provide any reasoning as to why one skilled in the art would combine the
teachings of Bushman and O’Mahoney. Br. 8. Finally, Appellants contend
that the Specification provides evidence of unexpected results which
outweighs any evidence of obviousness. Br. 8—9.
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 Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious,” the answer depends on “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417 (2007).
“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
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disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
“The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains.” In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979).
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established a
prima facie showing that the subject matter of the claims would have been
obvious over Bushman combined with O’Mahoney to a person of ordinary
skill in the art. Appellants have not produced evidence showing, or
persuasively argued, that the Examiner’s determinations on obviousness are
incorrect. Only those arguments made by Appellants in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim
24 as representative; therefore, all claims fall with claim 24. We address
Appellants’ arguments below.
Appellants contend that one skilled in the art would not have
combined the teachings of the references as they are directed to different
objectives. Br. 5. Appellants attempt to distinguish In re Kerkhoven by
arguing that Kerkhoven applies to a combination of two well-known
ingredients combined to form a well-known composition. Br. 6. Cf.
Kerkhoven, 626 F.2d at 850 (“It is prima facie obvious to combine two
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compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose”). Appellants contend that the present invention is
directed to a method for using a chelant containing hair care composition to
reduce the level of minerals deposited on hair. Id.
We have considered Appellants argument and find it unpersuasive.
Both Bushman and O’Mahoney are directed to shampoos. Bushman
Abstract; O’Mahoney 1. As the Examiner has found, the compositions of
Bushman and O’Mahoney are very similar. Ans. 3. O’Mahoney teaches
that the addition of EDDS to shampoo improves lathering and can prevent
damage and breakage of hair. O’Mahoney 11. We agree with the Examiner
that it would have been obvious to one skilled in the art to add the known
chelant, EDDS, to the composition of Bushman would have been obvious.
Ans. 4.
Appellants’ effort to distinguish Kerkhoven is unpersuasive. As
Appellants method uses known ingredients to achieve predictable results.
As such the invention is obvious. KSR, 550 U.S. at 416.
Appellants argue that one skilled in the art would not have been
motivated to use EDDS in the shampoo of Bushman in that it was known
that EDDS is less effective at low pH. Br. 7—8. We are unpersuaded. While
Appellants’ data shows that EDDS is less effective at low pH, EDDS still
binds to copper at low pH. Spec. 9, Table 3. Thus, while a low pH may not
give optimum results, this does not constitute a teachings ways from using
EDDS at a low pH. Moreover, claim 24 does not require a specific degree
of effectiveness.
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O’Mahoney teaches that the use of EDDS results in a reduction of
damage caused by the deposition of minerals. O’Mahoney 1—3. Bushman
teaches that a pH of 3 to 4.5 (which overlaps with the range recited in claim
24) also reduces damage to hair. Bushman col. 1,11. 18—24. One skilled in
the art would have been motivated to combine the teachings of the
references to reduce damage to hair. It would have been a matter of routine
optimization to discover the optimum formulations where the benefits of
both low pH and the presence of EDDS can be achieved.
Appellants contend that they have produced evidence of unexpected
results which overcomes a prima facie case of obviousness. Br. 9. We have
reviewed the data and find it unpersuasive. Appellants point to Examples I,
J and K as showing that the use of EDDS at a lower pH results in
unexpected improvement in performance. Br. 9. As the Examiner points
out, Example K cannot be properly compared to Example I as Example K
used 2% buffer were as Example I only contains 0.4% buffer. Spec. 34,
Ans. 6. With respect to Examples I and J, both of which use 0.4% buffer,
we agree with the Examiner that the difference in copper reduction is small
and there is no evidence that the reduction reflected in the examples had a
significant effect of the hair. Ans. 6.
We also agree with the Examiner that the data presented is not
commensurate with the scope of the claims. Id. The Examples only show
one concentration of EDDS (10.5 %) and one pH (4.25) at one end of the
ranges recited in claim 24.
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Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 24 would have been obvious over
Bushman combined with O’Mahoney.
Claims 25 and 28—52 have not been argued separately and, therefore,
fall with claim 24. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § 103(a).
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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