Ex Parte Molenda et al

Patent Trial and Appeal Board

Aug 31, 2016

12182779 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/182,779 07/30/2008
27387 7590 09/01/2016
LONDA, BRUCE S,
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD A VE, 8TH FLOOR
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Michael Molenda
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.
101216-107 4400
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAILDATE DELIVERY MODE
09/01/2016 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 MICHAEL MOLENDA and MARTIN HOFFMANN
Appeal2015-003878
Application 12/182, 779 1
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and DAVID
COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
conditioning composition for hair. The Examiner rejected the claims on
appeal as obvious under 35 U.S.C. § 103(a). 2
We affirm.
1 According to Appellants, the real party in interest is Kao Germany GmbH.
Br. 2.
2 In the Examiner's Answer, the Examiner withdrew its objections under 35
U.S.C. § l 12(a) and (b) after Appellants made clear that a typographical
error occurred so that the claims incorrectly recited "C3" instead of "CH3."
Ans. 3; Br. 4. These issues are thus no longer part of this appeal.
Appeal2015-003878
Application 12/ 182, 779
STATEMENT OF THE CASE
Claims 1-11 and 15-18 are on appeal. Claim 1, is illustrative and
reads as follows:
1. A conditioning composition for hair comprising at least
one optical brightener and at least one ubiquinone compound
according to formula
H
11
where n is a number between 1 and 10.
The Appeal Brief appeals from the rejection of claims 1, 3-11, and
15-18 over Mitsumatsu3 in view ofKoller, 4 and in further view of
3 Mitsumatsu et al., WO 99/13823 A2, published Mar. 25, 1999
("Mitsumatsu").
4 Koller et al., EP 1 059 081 A2, published Dec. 13, 2000 ("Koller").
2
Appeal2015-003878
Application 12/ 182, 779
Brautigam, 5 Molenda, 6 Smith 7 and Bureiko, 8 Br. 4, and from the rejection of
claim 2 over Mitsumatsu in view of Koller and further in view of Molenda.
Id. The grounds of appeal identified in the Appeal Brief do not align with
the grounds of rejection made by the Examiner. However, since Appellants
identified all of the prior art cited by the Examiner in the Appeal Brief, it
appears that they intended to appeal from all of the Examiner's obviousness
rejections. Moreover, the single issue raised by Appellants on appeal -
whether unexpected results rebut the Examiner's finding of obviousness-
applies to all of the Examiner's obviousness rejections. Accordingly, we
will treat this Appellants as having appealed from all of the Examiner's
obviousness rejections. 9
Based on the above, we consider the following grounds of rejection by
the Examiner to be before us on review:
Claims 1, 3-11, and 16-17 under 35 U.S.C. § 103 (a) as unpatentable
over the combination of Mitsumatsu and Koller.
Claims 1-11, and 16-17 under 35 U.S.C. § 103 (a) as unpatentable
over the combination of Mitsumatsu, Koller, and Molenda.
5 Brautigam et al., U.S. Patent Publication No. 2005/0152863 Al, published
July 14, 2005 ("Brautigam")
6 Molenda et al., U.S. Patent Publication No. 2006/0134041 Al, published
June 22, 2006 ("Molenda").
7 Smith, EP 0 217 635 A2, published Apr. 8, 1987 ("Smith").
8 Bureiko at al., WO 00/00170 Al, published Jan. 6, 2000 ("Bureiko").
9 Appellants do not address the Examiner's double patenting rejection. We
therefore summarily affirm the obviousness-type double patenting rejection.
See Manual of Patent Examining Procedure§ 1205.02 ("If a ground of
rejection stated by the examiner is not addressed in the appellant's brief, that
ground of rejection will be summarily sustained by the Board.").
3
Appeal2015-003878
Application 12/ 182, 779
Claim 15 under 35 U.S.C. § 103 (a) as unpatentable over the
combination of Mitsumatsu, Koller, Molenda, Smith, and Bureiko.
Claims 1, 3-11, and 16-18 under 35 U.S.C. § 103 (a) as unpatentable
over the combination of Mitsumatsu, Koller and Brautigam.
The Examiner found that Mitsumatsu taught a hair care composition
comprising disodium- 1,4, -bis(2-sulfostyryl) biphenyl, an optical brightener.
Final Act. 7. The Examiner further found that although Mitsumatsu did not
teach the inclusion of ubiquinone having the claimed formula, this element
was disclosed by Koller. Id. at 9. The Examiner found that it would have
been obvious to modify the hair care composition of Mitsumatsu to include
the ubiquinone of Koller, explaining:
Id. at 10.
It would have been prima facie obvious to a person of
ordinary skill in the art at the time the invention was
made to have modified MITSUMATSU'S shampoo
composition by adding 0.0003-0.08% coenzyme Q-10
and adjusting the pH to 5-7 as taught by KOLLER
because the compositions taught by l\1ITSU1VLA. TSU and
KOLLER are shampoo compositions for hair. The skilled
artisan would have been motivated to have modify
MITSUMATSU' S shampoo composition by adding
0.0003-0.08% coenzyme Q-10 and adjusting the pH to 5-
7, with a reasonable expectation of success, because
MITSUMATSU teaches inclusion of additional reagents
and 0.0003-0.08% coenzyme Q-10 in hair care
formulations with a preferred pH of 5-7 prevents
oxidative damage resulting from hair coloring, hair
treatments, and ultraviolet light as taught by KOLLER.
Appellants argue that the claimed composition would not have been
obvious over the cited art "because compositions of the presently claimed
4
Appeal2015-003878
Application 12/ 182, 779
invention exhibit surprising und unexpected results when compared to
compositions according to the prior art." Br. 5.
ANALYSIS
Appellants raise a single issue on appeal: whether the proffered
evidence regarding the "surprising and unexpected results" achieved using
the claimed composition is sufficient to overcome the prima facie case of
obviousness created by the cited prior art. See Appeal Br. 5 and 10.
Accordingly, we confine our discussion to this issue. Because this issue is
common to all four of the Examiner's obviousness rejections, we address all
four rejections together.
We designate claim 1 as representative for claims 2-18. See, 37
C.F.R. § 41.37(c)(l)(iv).
Appellants rely on the declaration of one of the inventors, Martin
Hoffmann, to demonstrate that the claimed compositions provide unexpected
results. As reported in the Hoffmann Declaration, a panel of ten experts
rated hair treated with four different compositions on a scale of 1 to 5 (with
5 being the best result) on five separate criteria: brightening, combability,
shine, elasticity, and manageability. Hoffmann Deel. i-f 6. The four hair
treatment compositions tested were: a composition lacking both an optical
brightener and a ubiquinone (Sample A); a composition including 0.05%
ubiquinone, but no optical brightener (Sample B); a composition including
0.25% optical brightener, but no ubiquinone (Sample C); and a composition
5
Appeal2015-003878
Application 12/ 182, 779
including 0.075% ubiquinone and 0.10% optical brightener (Sample D). Id.
at i-f 5. The results of this testing are reproduced in the below table.
Examp!e 1
A B c D Expected In D ..
Brlghtenln-g 1.0 1.0 -4.3 4.5 4.S
Combability 3.2 .j. 1 3.3 4,4 4.2
Shine 3.1 3.3 4.1 4.7 4.3
E!asticily 2.8 3.0 -:),0 ~.a 3.2
Managability 3.0 3.2 3.2 3.7 3.4
c>eample 5
A B c D ·Expected lri o•
Brightening 1.0 1.0 3.S 4.2 J.a
Coinbab!Uly l.5 3.7 3.7 4.1 J.9
Shine 2.8 3.2 3.9 4.6 4.3
Elasticity 3.2 3.6 J.3 3.9 3.6
Managability 2.a S.1 3.2 3.8 3.S
Id. at i-f 7. The above table reports the average scores for Samples A-D, as
well as an expected score for Sample D, which was calculated based on the
sum of the improvement provided by Samples Band Cover Sample A. Id.
Appellants assert that "hair tresses treated with compositions
according to the presently claimed invention comprising both ubichinone
[sic] and optical brightener is markedly improved than the expected effect."
Br. 7. Appellants further assert that "[ t ]his is undeniable proof that the
presently claimed compositions exhibit a synergistic effect that could not
have been predicted from the prior art." Id.
The Examiner found that results set forth in the Hoffmann Declaration
were not commensurate in scope with claim 1 because the claim 1 was
"generic to optical brighteners (i.e. a genus of optical brighteners) and
ubiquinone (n=l-10), yet an undisclosed species of optical brightener and
an undisclosed species ofubiquinone were examined." Ans. 14--15. The
Examiner also found that claim 1 was not commensurate in scope with the
results in the Hoffman Declaration because "claim 1 does not limit the
6
Appeal2015-003878
Application 12/ 182, 779
amount of optical brightener and ubiquinone ... [yet] the Declaration
evaluated just two specific concentrations ofubiquinone (i.e. 0.05 wt.% and
0.075 wt.%) and two specific concentrations of optical brightener (i.e. 0.10
wt.% and 0.25 wt.%)." Ans. 17.
We agree with the Examiner that claim 1 encompasses more than just
a single species of ubiquinone and optical brightener. We thus also agree
that claim 1 encompasses more than just the tested concentrations.
Appellants argue that ubiquinone "is a known compound, and though
the number of isoprenyl units may vary, a skilled artisan would clearly
understand that whether the ubiquinone has three isoprenyl units or ten, the
compound will behave similarly." Br. 8. Appellants' assertion, however, is
not supported by any evidence. In contrast, the Examiner has provided
evidence that certain species of ubiquinone - Coenzyme Q-10 (i.e.
ubiquinone where n = 10) in particular - are preferred. Ans. 19-20 (citing
Koller). Moreover, even if, we were to accept Appellants' unsupported
assertion that all of the claimed ubiquinones behave similarly, Appellants
have not addressed the problem that claim 1 is also generic to all optical
brighteners and to all quantities of both brighteners and ubiquinones.
Appellants do not offer any evidence or provide any argument to suggest
that its alleged unexpected results apply to all brighteners in any amount or
to any amount of ubiquinone.
Appellants try to place the burden on the Examiner to prove that its
alleged unexpected results would not apply to ubiquinones other than those
tested, arguing:
[T]he Examiner has not provided any evidence or
rationale basis for the assertion that the showing is
limited only to a ubiquinone with a given number of
7
Appeal2015-003878
Application 12/ 182, 779
Br. 8
isoprenyl units. There is nothing in either the cited prior
art or in the record that suggests or supports the
conclusion that the unexpected synergy exhibited by the
claimed invention would not be possible with a
ubiquinone of varying isoprenyl units.
Appellants misallocate the burden. As the Federal Circuit explained
in In re Huai-Hung Kao:
Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims. See In re
Tiffin, 58 CCPA 1420, 448 F.2d 791, 792 (1971); In re
Hiniker, 150 F.3d 1362, 1369 (Fed. Cir.1998). This does
not mean that an applicant is required to test every
embodiment within the scope of his or her claims. If an
applicant demonstrates that an embodiment has an
unexpected result and provides an adequate basis to
support the conclusion that other embodiments falling
within the claim will behave in the same manner, this
will generally establish that the evidence is
commensurate \~1ith scope of the claims. See In re
Greenfield, 571F.2d1185, 1189 (CCPA 1978)
(concluding that evidence of secondary considerations
was not commensurate with the scope of the claims
where that evidence related to a single compound and
there was no adequate basis to conclude that other
compounds included within the scope of the claims
would exhibit the same behavior); In re Cescon, 474 F.2d
1331, 1334 (CCPA 1973) (concluding that, although not
every compound within the scope of the claims was
tested, the evidence of secondary considerations was
sufficient where evidence showed a correlation and there
was no factual basis to expect the compounds to behave
differently in different environments).
In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (emphasis
added). Because the Appellants provide no evidence that other
8
Appeal2015-003878
Application 12/ 182, 779
embodiments falling within the claim will behave in the same manner as
Sample D, we find that the results set forth in the Hoffmann Declaration are
not commensurate with the scope of the claims and thus do not support a
finding of unexpected results. See In re Greenfield, 571F.2d1185, 1189
(CCPA 1978).
The Examiner also found that "the values obtained for composition D
(i.e. the composition comprising both an undisclosed optical brightener and
an undisclosed ubiquinone) were very close to the expected values (i.e.
"Expected in D*")." Ans. 16. The Examiner noted that "Declarant did not
explain these results, explain whether these differences in results are
significant, or explain how these results demonstrate synergism." Id. Again,
we agree with the Examiner's findings. Absent an explanation as to why the
differences between the expected results and the actual results are
significant, we have no basis on which to conclude that the differences are in
kind rather than degree, as would be required to support a finding of
unexpected results. See, In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(a "32--43% increase in stress-rupture life, however, does not represent a
'difference in kind' that is required to show unexpected results.")
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
obviousness of claim 1. Because they were not argued separately, claims 2-
18 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
9
Appeal2015-003878
Application 12/ 182, 779
SUMMARY
For these reasons and those set forth in the Examiner's Answer and
Final Rejection, the Examiner's final decision to reject claims 1-11 and 15-
18 is affirmed.
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
10