Ex Parte Matsumoto et alDownload PDFPatent Trial and Appeal BoardSep 2, 201613055705 (P.T.A.B. Sep. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/055,705 01124/2011 Y oshitomo Matsumoto 38834 7590 09/07/2016 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 CONNECTICUT A VENUE, NW SUITE 700 WASHINGTON, DC 20036 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. 120843 7409 EXAMINER LOPEZ, RICARDO E. ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 09/07/2016 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHITOMO MATSUMOTO, SHIN SUDO, MITSURU FURUKAWA, KAZUAKI FUJIWARA, and MASAHIKO MIHOICHI Appeal2014-009790 Application 13/055,705 Technology Center 1700 Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and MONTE T. SQUIRE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's decision finally rejecting claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The claims on appeal are directed to fibers for artificial hair obtained by combining regenerated collagen fibers having different shapes in cross section (claims 1-8, 10-17) and an artificial hair product including those fibers (claim 9) Appeal2014-009790 Application 13/055,705 wherein the cross-sectional shapes of the fibers are selected from the group consisting of an elliptical shape, a circular shape, and a multifoil shape. Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated April 9, 2014 ("App. Br."). 1. Fibers for artificial hair obtained by combining fibers having different shapes in cross section, wherein the fibers for artificial hair comprise regenerated collagen fibers, and the regenerated collagen fibers include at least two types of regenerated collagen fibers whose cross-sectional shapes are selected from the group consisting of shapes including an elliptical shape, a circular shape, and a multifoil shape. App. Br. 16. The claims on appeal stand rejected as follows: (1) claims 1, 2, 4, 5, 7-10, and 12-14 under 35 U.S.C. § 103(a) as unpatentable over Masuda 1 in view of Goto et al. 2 and Vemall; 3 (2) claims l and 3 under 35 U.S.C. § 103(a) as unpatentable over Goto in view of Masuda and Vemall; and (3) claims 1, 6, 11, and 14--17 under 35 U.S.C. § 103(a) as unpatentable over Masuda in view of Goto, Strickler et al., 4 and Vemall. 1 WO 2007 /032272. The Examiner relies on US 2009/0260646 Al, published October 22, 2009, as an "equivalent document." Final Office Action dated August 9, 2013 ("Final"), at 2. The Appellants do not object. Therefore, we also rely on US 2009/0260646 Al ("Masuda") as evidence of the disclosure of WO 2007 /032272. 2 US 6,242,573 B 1, issued June 5, 2001 ("Goto"). 3 Donald G. Vemall, A Study of the Size and Shape of Cross Sections of Hair from Four Races of Men (Department of Anatomy, The University of Michigan, 1961) ("Vemall"). 4 US 2007 /0232169 Al, published October 4, 2007 ("Strickler"). 2 Appeal2014-009790 Application 13/055,705 B. DISCUSSION 1. Rejection (1) a. Claims 1 and 9 The Examiner finds Masuda discloses a fiber and a head-dressing product produced using the fiber. The Examiner finds the fiber comprises 90 to 10 parts by weight of a polyester fiber and 10 to 90 parts by weight of a regenerated collagen fiber wherein the regenerated collagen fiber has a circular cross section and the polyester fiber has an elliptical cross section. Final 3. The Examiner finds Masuda does not disclose that the regenerated collagen fibers are a blend of fibers having circular and either elliptical or multifoil cross sections as claimed. Final 3. Therefore, the Examiner turns to Goto. The Examiner finds Goto discloses a regenerated collagen fiber having an elliptical cross section that is said to be a satisfactory substitute for human hair. Final 3--4. The Examiner also finds V emall discloses that "the shape of human hair in cross section is elliptical and varies from a nearly circular ellipse with major and minor axes approximately equal in length to a more flattened type with the major axis twice the length of the minor axis." Final 4. Based on the teachings in V emall, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to combine the elliptical cross section regenerated collagen fibers of Goto with the fibers of Masuda when it is desired to provide the head- dressing product with fibers that can be used as a satisfactory substitute for the human hair with elliptical and circular cross section to better resemble human hair. Final 4 (emphasis added); see also Ans. 4--5 (stating that Vemall is a key element in the rationale of the motivation to combine the references). 5 5 Examiner's Answer dated June 18, 2014. 3 Appeal2014-009790 Application 13/055,705 The Appellants argue that "V emall does not provide any suggestion to combine elliptical collagen fibers with circular collagen fibers" because Vemall does not teach that human hair has a circular cross section. App. Br. 7. The Appellants' argument is not persuasive of reversible error. Vemall discloses that human hair has a variety of cross sections, varying from "a nearly circular ellipse with major and minor axes approximately equal in length to a more flattened type with the major axis twice the length of the minor axis." Vemall 346, col. 1. Vemall also discloses that "[ r ]are modifications impart a kidney, pear or triangular shape." Vemall 346, col. 1. We find that one of ordinary skill in the art, interested in producing a satisfactory substitute for human hair, would have combined artificial hair fibers, including regenerated collagen fibers, having the shapes disclosed in Vemall. We recognize that Vemall does not expressly disclose that human hair has a circular cross section. Nonetheless, we find one of ordinary skill in the art would have understood that the "nearly circular ellipse" described in Vemall approximates a circular cross section, similar to the circular cross-sectional shape disclosed in Masuda. See Final 10-11. For this reason, a preponderance of the evidence supports the Examiner's finding that one of ordinary skill in the art would have combined Goto's regenerated collagen fibers, which have an elliptical cross section, with Masuda' s fibers, which include regenerated collagen fibers having a circular cross section, to produce a hair product that resembles human hair. To rebut the prima facie case of obviousness, the Appellants argue: The results provided by the present specification show that a combination of collagen fibers having at least two different shapes selected from an elliptical shape, a circular shape, and a multifoil shape, provides a gloss rank that was synergistically higher than the 4 Appeal2014-009790 Application 13/055,705 arithmetic average value, resulting in an improved appearance with a suppressed gloss. App. Br. 8. In particular, the Appellants rely on Figure 4 of the Specification which is said to illustrate the actual and arithmetic average gloss values 6 for regenerated collagen fibers comprising mixtures of elliptical and multifoil cross sections (i.e., ellipse 78/*52). 7 According to the Appellants: [W]hen mixtures of the fibers are employed, the resultant fibers have a gloss rank that was synergistically higher than the arithmetic average value, resulting in an improved appearance with a suppressed gloss. Similar synergistically higher results are reported in Tables 3- 10 and Figures 5-27. App. Br. 9 (emphasis added). Significantly, the synergistic results disclosed in the Appellants' Specification are not reported over the entirety of the ranges tested. See, e.g., Spec. 19, Table 2 (mixture of55 mass% ellipse 78 and 45 mass% *52 (example 1- 7) had an actual measurement value of gloss rank (i.e., 2) which was lower than the arithmetic average value (i.e., 2.8)). Since independent claims 1 and 9 are not limited to the ranges exhibiting synergistic results, the Appellants' showing is not commensurate in scope with the claims. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (showing of unexpected results must be commensurate in scope with the degree of protection sought by the claimed subject matter). 6 According to the Specification, gloss was ranked on a scale of 1 to 5 wherein 5 represents "[g]loss equal to that of human hair" and 1 represents "[g]loss significantly higher than and greatly different from that of human hair." Spec. i-f 46. 7 According to the Specification, the mixing ratio of the fibers and the results of the gloss of the combined fibers are also shown in Table 2. Spec. i-f 67. 5 Appeal2014-009790 Application 13/055,705 Based on the foregoing, the§ 103(a) rejection of claims 1 and 9 based on Masuda in view of Goto and Vemall is sustained. The Appellants do not present arguments in support of the separate patentability of claims 2, 7, 8, and 12-14. Therefore, the§ 103(a) rejection of claims 2, 7, 8, and 12-14 is also sustained. b. Claims 4, 5, and 10 Claims 4 and 10 which depend from claims 1 and 2, respectively, recite "wherein 1 to 49 mass% of the regenerated collagen fibers having an elliptical shape in cross section are combined." App. Br. 16, 17. Similarly, claim 5, which depends from claim 3, recites "wherein 20 to 45 mass% of the regenerated collagen fibers having an elliptical shape in cross section are combined."8 App. Br. 16. According to the Appellants: [A ]s can be seen from Table 2 [in the Specification], when 1 to 45 mass% of the regenerated collagen fibers having an elliptical shape in cross section were combined with fibers having a sexfoil shape in cross section or when 20 to 50 mass% of the fibers having an elliptical shape in cross section were combined with the regenerated collagen fibers having a circular shape in cross section, the resultant fibers had a gloss rank that was synergistically higher than the arithmetic average value, resulting in an improved appearance with a suppressed gloss. Similarly, as can be seen from Table 3, when 20 to 45 mass% of the regenerated collagen in fibers having an elliptical shape in cross section were combined with the fibers having a sexfoil shape in cross section or when 20 to 48 mass% of the fibers having an elliptical shape in cross section were combined with the regenerated collagen in 8 Since claim 3 is not rejected over Matsuda in view of Goto and Vemall, the Appellants argue that claim 5 should not have been included in rejection (1 ). App. Br. 11. The Appellants' argument is well taken. However, for the reasons set forth below, the Appellants' argument is moot in view of the Appellants' showing of synergistic results. 6 Appeal2014-009790 Application 13/055,705 fibers having a circular shape in cross section, the resultant fibers had a gloss rank that was synergistically higher than the arithmetic average value, resulting in an improved appearance with a suppressed gloss. Still further, as can be seen from Table 4, when 20 to 45 mass% of the regenerated collagen fibers having an elliptical shape in cross section were combined with fibers having sexfoil shape in cross section or when 20 to 48 mass% of the fibers having an elliptical shape in cross section were combined with the regenerated collagen fibers having a circular shape in cross section, the resultant fibers had a gloss rank that was synergistically higher than the arithmetic average value, resulting in an improved appearance with a suppressed gloss. App. Br. 10. In contrast, the Appellants contend: [T]he data in the specification also demonstrates that similar results do not occur when two or more types of polyester fibers whose cross- sectional shapes are selected from the group consisting of shapes including an elliptical shape, a circular shape, and a multifoil shape but do not include any regenerated collagen fibers. When such fibers are mixed, the results demonstrate a gloss rank that was relatively lower than the arithmetic average value (see Figs. 29--32). App. Br. 10 (emphasis added). The Examiner does not explain, in any detail, why the synergistic results reported in Tables 2--4 of the Appellants' Specification are not evidence of unexpected results. See Ans. 6 (merely finding the results reported in Table 2 follow a "different correlation"). On this record, we find that the Appellants' showing of synergistic results reported in Tables 2--4 of the Appellants' Specification weighs most heavily against a conclusion of obviousness as to claims 4, 5, and 10. Therefore, the § 103(a) rejection of claims 4, 5, and 10 based on Masuda in view of Goto and V emall is not sustained. 7 Appeal2014-009790 Application 13/055,705 2. Rejection (2) a. Claim 1 The Examiner finds Goto discloses regenerated collagen fibers having an elliptical cross section that can be used as a satisfactory substitute for human hair. The Examiner finds Goto does not disclose that the regenerated collagen fibers are a combination of the shapes as recited in claim 1. Therefore, the Examiner turns to Masuda. The Examiner finds Masuda discloses an artificial hair product comprising polyester fibers having an elliptical cross section and regenerated collagen fibers having a circular cross section. Final 5-6. The Examiner also finds Vemall discloses that the cross section of human hair "is elliptical and varies from a nearly circular ellipse with major and minor axes approximately equal in length to a more flattened type with the major axis twice the length of the minor axis." Final 6. Based on the teachings in Masuda and V emall, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Goto' s collagen fibers by adding fibers having a circular cross section as in Masuda "when it is desired to provide the head-dressing product [of Goto] with fibers that have touch and shine like human hair and with elliptical and circular cross section to better resemble human hair." Final 6; see also Ans. 4--5 (stating the Vemall is a key element in the rationale of the motivation to combine the references). The Appellants argue that "Vemall only observes the shape of human hair as elliptical fibers which vary in shape." App. Br. 11-12. Thus, the Appellants contend that "[t]he combined teachings [of Goto, Masuda, and Vemall] do not suggest at least two types of collagen fibers selected from an elliptical shape, a circular shape and a multifoil shape." App. Br. 12. 8 Appeal2014-009790 Application 13/055,705 As discussed above, one of ordinary skill in the art would have understood that the "nearly circular ellipse with major and minor axes approximately equal in length" disclosed in Vemall approximates a circular cross section, similar to the circular cross-sectional shape disclosed in Masuda. See Vemall 346, col. 1. Thus, one of ordinary skill in the art seeking to produce a hair product that better resembles human hair would have combined Masuda's regenerated collagen fibers having a circular cross section with Goto' s regenerated collagen fibers having an elliptical cross section based on the teachings in Vemall. The Appellants also argue that "the claimed invention provides unexpected results as discussed in Section IV.A. I." (i.e., the section of the Appeal Brief addressing the§ 103(a) rejection of claim 1 based on Masuda in view of Goto and Vemall). App. Br. 12. As discussed above, the Appellants' showing of unexpected results is not commensurate in scope with claim 1 because claim 1 is not limited to a range that exhibits synergistic results. See Harris, 409 F.3d at 1344 (showing of unexpected results must be commensurate in scope with the degree of protection sought by the claimed subject matter). Based on the foregoing, the§ 103(a) rejection of claim 1 based on Goto in view of Masuda and V emall is sustained. b. Claim 3 Claim 3 depends from claim 1 and recites "wherein the fibers for artificial hair comprise only the regenerated collagen fibers." App. Br. 16. The Appellants argue that "[ c ]laim 3 is further distinguished over the prior art in that the fibers comprise only regenerated collagen fibers." App. Br. 12. In the proposed combination of Goto in view of Masuda and Vemall, the Examiner modifies the fibers of Goto, which consist of regenerated collagen fibers 9 Appeal2014-009790 Application 13/055,705 having an elliptical cross section, by adding the regenerated collagen fibers of Masuda, which have a circular cross section, based on the teachings of Vemall. Thus, in the Examiner's proposed combination, the modified fibers of Goto would comprise only regenerated collagen fibers as recited in claim 3. The Appellants have failed to establish otherwise. Therefore, the§ 103(a) rejection of claim 3 based on Goto in view of Masuda and Vemall is sustained. 3. Rejection (3) a. Claim 1 In the rejection on appeal, the Examiner makes the same factual findings and legal conclusions as in the§ 103(a) rejection of claim 1 based on Masuda in view of Goto and Vemall. See Final 7-8. As for the claimed multifoil cross-sectional shape, the Examiner finds Strickler discloses a spinneret which is useful in solution spinning of polymers such as collagen. The Examiner finds exemplary fiber cross- sectional shapes include polygonal and multi-lobed cross sections. 9 Final 8-9 (citing Strickler lf 16). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to select a cross-sectional shape from the shapes disclosed in Strickler for the regenerated collagen fibers of Masuda or Goto. Final 9. The Appellants argue that "[ e ]ven if Strickler is considered with the teachings of Masuda, Goto et al., and V emall, the combined teachings still would not suggest the claimed invention" for the reasons set forth in Section IV. I .A [sic, IV.A. I.]" (i.e., the section of the Appeal Brief addressing the§ 103(a) rejection of claim 1 based on Masuda in view of Goto and Vemall). App. Br. 12. The 9 "[M]ultifoil" is defined as "a foil, especially one having more than five lobes." Definition of multifoil, www.dictionary.com/browse/multifoil (last visited August 24, 2016). 10 Appeal2014-009790 Application 13/055,705 Appellants also argue that "the claimed invention provides unexpected results as discussed in detail above." App. Br. 12. For the reasons set forth above sustaining the§ 103(a) rejection of claim 1 based on Masuda in view of Goto and V emall, the Appellants' arguments are not persuasive of reversible error. Therefore, the§ 103(a) rejection of claim 1 based on Masuda in view of Goto, Strickler, and Vemall is sustained. b. Claims 6 and 11 Claims 6 and 11 recite that "the regenerated collagen fibers having a circular shape in cross section and the regenerated collagen fibers having a multifoil shape in cross section are included at a mass ratio of 1/99 to 99/1." App. Br. 17. The Appellants argue that V emall teaches that human hair has an elliptical cross section, not a circular cross section. Therefore, the Appellants argue "the prior art fails to provide any suggestion of the invention set forth in claims 6 and 11." Br. 13. The Appellants also argue that "the invention of claims 6 and 11 provide results which would have been unexpected, as supported by the data provided in the specification." App. Br. 13. For the reasons set forth above sustaining the§ 103(a) rejection of claim 1 based on Masuda in view of Goto and V emall, the Appellants' argument is not persuasive of reversible error. Therefore, the§ 103(a) rejection of claims 6 and 11 based on Masuda in view of Goto, Strickler, and Vemall is sustained. c. Claims 14--1 7 The Appellants' arguments do not address the Examiner's factual findings and legal conclusions as to claims 14--17. 10 Rather, the Appellants merely 10 The Examiner finds the regenerated collagen fiber disclosed in Masuda has a single fiber fineness of 30 to 90 dtex which encompasses the fineness values recited in claims 15-17. Final 7 (citing Masuda i-f 99). The Examiner also 11 Appeal2014-009790 Application 13/055,705 reproduce the language of claims 14--17 and summarily argue that the prior art fails to teach or suggest the claimed subject matter. App. Br. 13-15. As explained by the Court in In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011), 37 C.F.R. § 41.37 requires more. See Lovin, 652 F.3d at 1356 (Rule 41.37 requires "more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art"). Therefore, we decline to separately address the obviousness rejection of claims 14--17. The§ 103(a) rejection of claims 14--17 is sustained for the reasons set forth above sustaining the§ 103(a) rejection of claim 1 based on Masuda in view of Goto, Strickler, and Vemall. C. DECISION The Examiner's decision to reject claims 1, 2, 7-9, and 12-14 under 35 U.S.C. § 103(a) as unpatentable over Masuda in view of Goto and Vemall is affirmed. The Examiner's decision to reject claims 4, 5, and 10 under 35 U.S.C. § 103(a) as unpatentable over Masuda in view of Goto and Vemall is reversed. The Examiner's decision to reject claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over Goto in view of Masuda and Vemall is affirmed. The Examiner's decision to reject claims 1, 6, 11, and 14--17 under 35 U.S.C. § 103(a) as unpatentable over Masuda in view of Goto, Strickler, and V emall is affirmed. concludes that the claimed amounts and the claimed ratios of the different fibers recited in claims 15-17 are rendered obvious by the teachings in Masuda. Final 9. 12 Appeal2014-009790 Application 13/055,705 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation