Ex Parte Molenda et al

Patent Trial and Appeal Board

Mar 29, 2017

13061999 (P.T.A.B. Mar. 29, 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.
13/061,999 03/03/2011 Michael Molenda 101216-145 1915
27387 7590 03/29/2017
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
03/29/2017 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 KAO GERMANY GMBH
Appeal 2015-005452
Application 13/061,999
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-005452
Application 13/061,999
STATEMENT OF CASE
The following claim is representative.
1. An aqueous cleansing composition for keratin fibres for human
hair comprising at least one amino acid surfactant of the general
structure
0 Ra R3
Ri — C----N-----CH —-(CHj),,—X M+
wherein Ri is a saturated or unsaturated, straight or branched alkyl
chain with 7 to 17 Carbon atoms, R2 is H or a methyl, R3 is H, COO-
M+, CH2COO M or COOH, n is 0 to 2, X is COO- or S03- and M is
independent from each other H, sodium or potassium, and an aqueous
emulsion of divinyldimethicone/dimethicone copolymer with an
internal phase viscosity of more than 1 x 108 mm* 2/s measured at 0.01
Hz and at 25°C.
Grounds of Rejection
1. Claims 1, 2, 3-6, and 10-12 stand rejected under pre-AIA 35
U.S.C. 103(a) as being unpatentable over Wagner1 and Mahadeshwar.2
2. Claims 1-6, 7, and 10-12 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Wagner in view of Mahadeshwar and
Schmucker.3
!US 5,951,991 issued Sept. 14, 1999.
2 WO 2005/046628 Al, May 26, 2005.
3 US 6,468,514 B2, Oct. 22, 2002.
2
Appeal 2015-005452
Application 13/061,999
3. Claims 1-6, 10-12 and 13 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Wagner in view of Mahadeshwar and Not
For Blondes.4
4. Claims 1-6, 8, 9, and 10-12 are rejected under pre-AIA 35
U.S.C. 103(a) as being unpatentable over Wagner in view of Mahadeshwar
and Kasuga.5,6
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 2-
18. The following facts are highlighted.
1. According to Wagner, the term “substantially dry” means
the product is substantially free of water and generally feels dry
to the touch. The products of the present invention comprise
less than about 15% by weight of water, preferably less than
about 7.5% by weight of water, and more preferably less
than about 3% by weight of water, the forgoing measured in
a dry environment, e.g., low humidity. One of ordinary skill
in the art would recognize that the water content of a product
such as in the present invention can vary with the relative
humidity of the environment.
Col. 5,11. 14-24.
2. Examples 1-5 of Wagner are reproduced below.
PHASE 1: SURFACTANT PHASE
In a suitable vessel, the following ingredients are mixed
at room temperature. Once the polyquatemium is dispersed,
4 Not for blondes — Jason Natural Cosmetics Natural Temporary Hair Color
Red 8 Tube — Epinions.com.
5 “Kasuga” is not a cited reference in this proceeding. The Examiner
incorrectly listed “Kasuga” instead of “Kasturi” the actual reference cited to
in this proceeding.
6 “Kasturi”, US 2006/0035807 Al, published Feb. 16, 2006.
3
Appeal 2015-005452
Application 13/061,999
the mixture is heated to 65° C.
i K'X::r.'T2'>,:-': Z A Kxa.U'!:24 4 A
Wwvf-r OS Sitf; QA SCO (>tS :$■:>£) <>A 5:2v> 0.4. 2.22
iV..iv- t:.2X -DOS AA OAJ 2-. 2S
{.p.} ;>X: vfv1
i i.s-nv 3 ti
Whit® she shove rmxfcir®. is being hessed to 6S0, C. she
tolWvblg :ng.lV is. K; ____
Antn-son iii.vtit 3.* vit'iAh. Ar: 4.C 4A: 4.2 4.2 —
>s«.va 3,o'r-:ytA't .• -.4 7.4 :C4 ;£ ,4-
2.-i 2.4 —
G*>vX::S>v ] 'N ! * — — — — 4 A
AtXo7.:;:V
V,ni::X:,n.O
s \ v
on
1 ' - i
42)
Once the above ingredients- are tfiorouglhiy mixed begin
eoolsisg Sirsc rss is tss-res So -lo" S.:. to a -*e:jiariste msxassg. vessel stitS
the fo-l lowing;
VS'Jx5.:.:•! .7,2 2,-2 7,2' 7:,2- 7.2
OiV.io — >4 2 .>22 >2.42
:■! ;:*'4 — .:2*A — —
v. •' :i{-rs >'.4 ■"" .,,,, .,,,, 2- £4) ,,,,,
W:i3.-4 3s<>: XoiO ti.fX: :2->2 5A)?::
1 42'\>?'yv :2.'>.::4 >
y/ !i.AV:.r.r4A :
'Av:1 s Aio •>:•> Ah;i7 a c-i;:4 y.xs*::
’< 47/ 3\4 •oV>7> A!> f' r*7-'JSv •XP-i ■hF-’S •rA .24-:y >>\'>n2n
Once the mix-sure sesrehex 7*)" Ft, -oo-ie heating ;ssk:I stowly
add the Ji.sSli.iwiag iogtodiesrts, whit® et.ss.i1.mil mg So mxs1
\'.-:\ ttiSXSJ -X-.SF' "■■■'< ■ <.: rxi.lS-:' VitoC.-:
PlUXisrsiei ---- ---- Z'l.XX: --- ---
< : ;•- >1 to Roots) Tesrsyeriitvssx; white Hsixiog, Thx is .; 5tl 0..S7
g oi Stirs phase lo She svf.hstisiLe Kbe.L;:d.y i.«. . Hj n -nag She
Sitst fhctsirss.s from the Sssristcsstis Phase. The re'WJd'se cktaas-
i tsg i.xe35|Kissi th>:ss. is «.s©d by wet dag with wit set m I is -«se:lkt
lot etcaasiiig the skits: or hair and ior deposit mg the -condi-
dossing. ei.ras.ts id sts «ssto she skin or hair.
Col. 27,1. 64-Col. 28,1. 60.
4
Appeal 2015-005452
Application 13/061,999
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRIntI Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Issue: The issue is whether Wagner discloses that its composition is
aqueous. This issue is dispositive issue for each of rejections 1-4 above.
ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellant’s arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner’s argument set forth in the Final Rejection and Answer.
There is no dispute on the record as to any other teachings of Wagner
and Mahadeshwar except whether the Wagner composition is aqueous. The
Examiner contends that Wagner “explicitly teaches the final products of his
invention ‘comprise less than about 15% by weight water’ (i.e. the product
contains water in an amount of about 0-15%; col. 5, lines 15-20; as applied
to claim 1).” Ans. 4-5.
Appellant contends that
5
Appeal 2015-005452
Application 13/061,999
Wagner requires that the cleansing/conditioning product is
‘substantially dry prior to use’. (See Wagner, Abstract, col. 1,
lines 15-16; col. 2, lines 61-63). Wagner further defines the
term ‘substantially dry’ as being ‘substantially free of water and
generally feels dry to the touch’. Presumably, this is because
Wagner's hair and skin care composition is contained in a
disposable, single use product, and the composition needs to
remain dry on the substrate until being wetted by the consumer
right before use.
The present invention, on the other hand, is specifically directed
to an ‘aqueous composition’, meaning that the composition
comprises water as a medium.
App. Br. 5.
We are not persuaded by Appellant’s arguments. We agree with the
Examiner that, on its face, Wagner discloses that the term “substantially dry”
means that the composition may contain between 0-15% water. FF1. In
addition, the Examples of Wagner show “QS 100” water (as much as
sufficient to obtain a 100% total of composition components). There being
no doubt that the composition of Wagner may contain up to 15% water, the
rejection is affirmed for the reasons of record.
Having no other arguments from Appellant, the rejections 1-4 are
affirmed. Arguments not made are considered waived.
CONCEUSION OF FAW
The cited references support the Examiner’s obviousness rejections 1-
4, which are all affirmed for the reasons of record. All pending, rejected
claims fall.
AFFIRMED
6