Ex Parte Molenda et al

Patent Trial and Appeal Board

Dec 12, 2014

12182449 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/182,449 07/30/2008 Michael Molenda 101216-108 3795
27387 7590 12/12/2014
LONDA, BRUCE S.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
12/12/2014 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
__________

Appeal 2012-011760
Application 12/182,449
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, 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 on obviousness
and obviousness-type double patenting grounds. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Background
According to the Specification:
The present invention is related to a conditioning composition for hair
based on polyphenols, Ubichinone[2 ]and UV filters. The

1 Appellants identify the Real Party in Interest as Sun Farm Corporation (see
App. Br. 1).
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conditioning composition of the present invention can be in the form
of a shampoo, cleansing-conditioning composition, or in the form of a
conditioner used after washing hair with cleansing compositions.

(Spec. 1).
The Claims
Claims 1–9, 11, 12, 15, and 18 are on appeal. Independent claim 1 is
representative, and reads as follows:
1. A conditioning composition for hair comprising at least one
polyphenol, at least one UV filter, at least one ubiquinone compound
according to general formula

where n is a number between 1 and 10, at least one direct dye, and at
least one conditioning agent selected from the group consisting of cationic
surfactants, cationic polymers and mixtures thereof.

The Rejections

The Examiner rejected the claims as follows:
I. Claims 1–7, 9, and 12 under 35 U.S.C. § 103(a) as obvious over
the combination of Henry,3 as evidenced by “Lauryl
Glucoside,”4 in view of Schwarzkopf,5 Carew,6 and Brautigam.7

2 Ubiquinone, Spec. 2, ll. 6-15 and claim 1.
3 Henry et al., US 2005/0191268 A1, published Sep. 1, 2005.
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II. Claims 1–9 and 12 under 35 U.S.C. § 103(a) as obvious over
the combination of Henry, as evidenced by “Lauryl Glucoside,”
in view of Schwarzkopf, Carew, and Brautigam, and further in
view of “Cocomidopropyl Betaine.”8
III. Claims 1–7, 9, 11, and 12 under 35 U.S.C. § 103(a) as obvious
over the combination of Henry, as evidenced by “Lauryl
Glucoside,” in view of Schwarzkopf, Carew, and Brautigam,
and further in view of “Hair Conditioners 101.”9
IV. Claims 1–7, 9, 12, and 15 under 35 U.S.C. § 103(a) as obvious
over the combination of Henry, as evidenced by “Lauryl
Glucoside,” in view of Schwarzkopf, Carew, and Brautigam,
and further in view of “Gift Set.”10
V. Claim 18 under 35 U.S.C. § 103(a) as obvious over the
combination of Henry in view of Hirama.11

4 Search Results for Lauryl Glucoside, available at
http://www.naturaleurope.com/ne/scan/fi=glossary/sp=glossary_results/
sf=word/se=Lauryl%20G1ucoside/os
5 Schwarzkopf Q10 Time Restore Hair Products, available at
http://www.hairworks.co.nz/schwarzkopf/q10-time-restore.
6 Carew et al., US 2003/0008790 A1, published Jan. 9, 2003.
7 Brautigam et al., US 2005/0152863 A1, published Jul. 14, 2005.
8 Hair Care Product Ingredients – Sunset Hair Elements Salon Quality,
available at www.sunsethair.com/ingredients.htm.
9 Hair Conditioners 101, available at
www.womenshealthcaretopics.com/bn_hair_Conditioners_101.htm.
10 Skin Care Gift Sets – Travel Cosmetic Bag – 5 Skin Care Product . . . ,
available at www.arizonasun.com/5-Travel-Cosmetic-Bag-5-Skin-Care-
Product-Samples-And-Lipkist-Reg-Lip-Balm.html.
11 Hirama et al., US 4,713,397, issued Dec. 15, 1987.
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VI. Claims 1, 2, 6–9, 11, and 12 on the ground of nonstatutory
obviousness-type double patenting over claims 1, 4, 7, 8, and
10–20 of Molenda.12
FINDINGS OF FACT
FF1. Composition No. 5 in Table 3 of Henry (“Example 5”) teaches a
hair conditioning composition comprising a cationic surfactant
(centrimonium chloride) and polyphenol (white wine extract of
Example 1) (Henry, ¶130, Table 3).
FF2. Henry teaches that “[t]he total percentage of auxiliaries and
additives may be from 1 to 50% by weight and is preferably from 5
to 40% by weight, based on the particular preparations” (id., ¶
120). Henry teaches that the compositions may include “dyes” and
“UV protection factors” (UV-A or UV-B filters) (id., ¶¶ 34, 90–
104). Henry further teaches that the composition may include
secondary sun protection factors such as ubiquinone (id., ¶106).
FF3. Schwarzkopf teaches that “[c]oenzyme Q10 [ubiquinone] is proven
to restore youthful glow to skin and now Schwarzkopf has
discovered a way to use this effective resource on hair too”
Schwarzkopf, p. 3 of 3).
FF4. Carew teaches a hair conditioning composition comprising
antioxidants at a level of up to 25 wt % (Carew, ¶ 69).
FF5. Brauhtigam teaches a hair conditioning composition wherein direct
dyes may be included in a concentration between 0.0001–5% by
weight (Brauhtigam, ¶ 97).

12 Molenda et al., US 7,691,799 B2, issued Apr. 6, 2010.
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ANALYSIS
Obviousness Rejections (Rejections I–V)
With regard to claim 1, the Examiner finds that “Example 5 of
HENRY teaches a conditioner which comprises the polyphenols derived
from the white wine extract of Example 1 (i.e. natural plant extract per
Applicant’s own specification-paragraph 13) in an amount of 0.004%,” that
“[t]he conditioner further comprises the cationic surfactant,” and that Henry
further teaches the inclusion of ubiquinone, UV filters, and dyes in the
composition (Ans. 3–5; FF1–2). The Examiner acknowledges that Henry
does not embody inclusion of ubiquinone (i.e. coenzyme Q10) in the hair
conditioner of Example 5 as set forth by instant claim 1 (Ans. 5). The
Examiner, however, finds that Schwarzkopf teaches “that coenzyme Q10
(i.e. ubiquinone) is an effective resource on hair as it supports the hair as it
develops over the years (pg. 3, ¶ 1)” (id. at 5–6; FF3). The Examiner further
finds that Carew teaches that “antioxidants utilized in hair conditioning
compositions are present in the composition up to 25% by weight” and that
Brautigam teaches “compositions known as tinting conditioners and dyeing
conditioners” that contain direct dyes for human hair (Ans. 6; FF4–5).
Based on the foregoing teachings, the Examiner concludes that it
would have been prima facie obvious to have modified the conditioner
composition of Example 5 of Henry by adding ubiquinone “in order to
provide a secondary antioxidant protection as taught by HENRY” and that
“[t]he skilled artisan would have been further motivated to do so in order to
provide a secondary benefit of supporting continued hair growth as taught by
SCHWARTZKOPF” (Ans. 6). Additionally, the Examiner concludes that it
would have been obvious to include direct dyes in the hair conditioning
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composition “based upon HENRY’s disclosure that any cosmetically
acceptable dye may be included in the compositions and BRAUTIGAM’s
disclosure that direct dyes have been utilized in hair color enhancing
compositions such has hair conditioners which tint or dye the hair through
used of direct dyeing” (id. at 7).
We determine that the Examiner made a prima facie showing of
obviousness. We have considered Appellants’ arguments but do not find
them persuasive.
With regard to the rejection of claims 1–7, 9 and 12 based on Henry in
view of Schwarzkopf, Carew, and Brautigam (Rejection I), Appellants argue
that “Henry’s broad disclosure does not offer any useful suggestion to a
skilled artisan to combine the specifically claimed components into a single
composition” (App. Br. 6–8). We are not convinced. Henry specifically
teaches an embodiment of a hair conditioning composition that includes a
cationic surfactant and polyphenol (FF1). Henry further teaches that the
compositions disclosed therein may include UV protection factors (UV
filters), ubiquinone as a secondary sun protection factor, as well as dyes
(FF2). Furthermore, we find that one of ordinary skill in the art would have
been further motivated to incorporate ubiquinone (coenzyme Q10) in a hair
based on Schwarzkopf’s teaching that coenzyme Q10 may be an effective
resource on hair (FF3). Additionally, we find that one of ordinary skill in
the art would have found it obvious to utilize direct dyes in the composition
based on Brautigam’s teaching (FF5). We find that the combination of these
known ingredients into a single hair conditioning composition is no more
than “the predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).,
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With regard to the rejection of claim 18 based on Henry in view of
Hirama (Rejection V), Appellants’ only argument is that “Hiram [sic] does
not remedy any of the deficiencies of Henry discussed herein” (App. Br. 8).
For the reasons discussed above, we find no deficiency with the Examiner’s
reliance on Henry for the suggestion that a hair conditioning composition
with the ingredients recited in the claims would have been obvious. The
Examiner acknowledges that “HENRY does not teach that the amount of
ubiquinone is between about 0.005 to 0.5% as set forth by instant claim 18,”
but relies upon Hirama’s teaching that “topical compositions comprise 0.01
to 2% by weight ubiquinone (column 1, lines 50-55)” (Ans. 13). The
Examiner asserts that “[i]t would have been prima facie obvious to a person
of ordinary skill in the art at the time the invention was made to have added
ubiquinone in the amount 0.01 to 2% to HENRY’s composition in order to
provide secondary sun protection to the hair and scalp” (id.). Appellants do
not present any specific arguments disputing this assertion, and we
accordingly affirm the Examiner’s rejection of claim 18 based Henry and
Hirama.
Appellants have not made any additional arguments with regard to the
other obviousness rejections (Rejections II–IV), and we therefore summarily
affirm those rejections.
Obviousness-Type Double Patenting Rejection (Rejection VI)
With regard to the obviousness-type double patenting rejection based
on claims, Appellants argue that “Molenda fails to claim a composition
comprising the claimed polyphenol, direct dyes and ubiquinone in the same
composition” and that “Molenda’s claims may independently teach
ubiquinone, direct dyes or polyphenols, but never in the same composition”
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(App. Br. 9). We are not convinced by this reasoning. One of ordinary skill
in the art would have found it obvious to combine the ingredients recited in
the individual claims into a single composition as it would have been merely
the “the predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417. The fact that Molenda’s claims recite
additional components not recited in the present claims (arylated silicone
and quaternary silicone) is inapposite as the claims are written using the
open-ended “comprising” language. See Genentech, Inc. v. Chiron Corp.,
112 F.3d 495, 501, (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in
claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.”). We therefore affirm the nonstatutory obviousness-type double
patenting rejection.
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over the combination of Henry, as evidenced by “Lauryl
Glucoside,” in view of Schwarzkopf, Carew, and Brautigam. Claims 2–7,
9, and 12 are not separately argued and fall with claim 1.
We summarily affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over the combination of Henry, as evidenced by “Lauryl
Glucoside,” in view of Schwarzkopf, Carew, and Brautigam, and further in
view of “Cocomidopropyl Betaine.” Claims 2–9 and 12 are not separately
argued and fall with claim 1.
We summarily affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over the combination of Henry, as evidenced by “Lauryl
Glucoside,” in view of Schwarzkopf, Carew, and Brautigam, and further in
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view of “Hair Conditioners 101.” Claims 2–7, 9, 11, and 12 are not
separately argued and fall with claim 1.
We summarily affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over the combination of Henry, as evidenced by “Lauryl
Glucoside,” in view of Schwarzkopf, Carew, and Brautigam, and further in
view of “Gift Set.” Claims 2–7, 9, 12, and 15 are not separately argued and
fall with claim 1.
We affirm the rejection of claim 18 under 35 U.S.C. § 103(a) as
obvious over the combination of Henry in view of Hirama.
We affirm the rejection of claim 1 on the ground of nonstatutory
obviousness-type double patenting over claims 1, 4, 7, 8, and 10–20 of
Molenda. Claims 2, 6–9, 11, and 12 are not separately argued and fall with
claim 1.

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
tc