Ex Parte Molenda et al

Patent Trial and Appeal Board

Dec 13, 2016

13127896 (P.T.A.B. Dec. 13, 2016)

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.
13/127,896 05/05/2011 Michael Molenda 101216-156 5444
27387 7590 12/13/2016
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
12/13/2016 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,
IIKA TIETJEN, and MUSTAFA GRIT
Appeal 2015-004246
Application 13/127,896
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to an
aqueous cleansing composition for hair. The Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“Present inventors have surprisingly found that an aqueous cleansing
composition comprising at least one amino acid surfactant and at least one
cationic polymer of a certain structure provides excellent foam and
1 Appellants identify the Real Party in Interest as KAO
GERMANY GMBH (see App. Br. 2).
Appeal 2015-004246
Application 13/127,896
conditioning properties and also washes less colour out from hair so that
long lasting colours are achieved” (Spec. 1).
The Claims
Claims 1, 2, 4, 5, 8—11, 14, and 15 are on appeal. Claim 1 is
representative and reads as follows:
1. An aqueous cleansing composition for keratin fibres
especially for human hair wherein it comprises at least one
glutamate surfactant according to the general formula
O H COD'
||
Rl— C — N - CH — (CH2)2 —
wherein Ri is a saturated or unsaturated, straight or branched
alkyl chain with 7 to 17 C atoms, and M is independent from
each other H, sodium-or potassium, and Polyquatemium-87,
with the condition that composition does not comprise a
surfactant according to the above formula wherein Ri is a coco
alkyl chain.
The Issues
A. The Examiner rejected claims 1, 2, 4, 5, 8, 9, 11, 14, and 15 under 35
U.S.C. § 103(a) as obvious over Grit2 and Lasemews3 (Ans. 3—5).
B. The Examiner rejected claims 1, 2, 4, 5, 8—11, 14, and 15 under 35
U.S.C. § 103(a) as obvious over Grit, Lasemews, and Molenda4 (Ans. 5—6).
2 Grit, M., DE 19849701 Al, published May 11, 2000, translation with
pages numbered 1—6 (“Grit”).
3 Lasemews, www.laserson.com (2008) (translation)(“Lasemews”).
4 Molenda et al., WO 2010/054787 A3, published May 20, 2010
(“Molenda”).
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Application 13/127,896
C. The Examiner rejected claims 1, 2, 4, 5, 8—11, 14, and 15 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—5, 10 and 11 of copending US Application
13/132,199 (Ans. 6-7).
D. The Examiner rejected claims 1, 2, 4, 5, 8—11, 14, and 15 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—8 and 10—12 of copending US Application
13/062,017 (Ans. 7-8).
E. The Examiner rejected claims 1, 2, 4, 5, 8—11, 14, and 15 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—5, 7, 8, and 11—13 of copending US Application
13/061,999 (Ans. 6-7).
A. 35 U.S.C. § 103(a) over Grit andLasernews
The Examiner finds that Grit teaches “a conditioning shampoo which
comprises . . . polyquatemium-7 . . . [and] sodium N-lauroyl glutamate”
(Ans. 3—4). The Examiner acknowledges that Grit “does not teach inclusion
of Polyquatemium-87” (Ans. 4). The Examiner finds that Lasernews
teaches “polyquatemium-87 is a new dimension in conditioning because it
improves color retention” (Id.). The Examiner finds it obvious to substitute
“the polyquatemium-7 conditioning agent taught by [Grit] with the
polyquatemium-87 conditioning agent taught by LASERNEWS because
both compounds are conditioning agents” (Ans. 5).
Appellants contend that “the Examiner erred in rejecting claims 1,2,
4, 5, 8-11 and 14 because the presently claimed combination of a glutamate
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surfactant according to the formula set forth in claim 1 and Polyquatemium-
87 exhibits a surprising and unexpected synergy that could not have been
predicted at the time of the present invention” (App. Br. 4).
The issue with respect to this rejection is: Have Appellants presented
evidence of secondary considerations, that when weighed with the evidence
of obviousness, is sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Grit teaches, in Example 2, a conditioning shampoo comprising
5.0 % C12-C14 alkyl polyglucoside (PD: ~ 1.45), 1.0% N-lauroyl glutamate,
sodium salt at 1.0 %, 5.0% Cocoamidopropylbetaine, 3.0%
Cocoamidopropylamine, 7.0 % Sodium (~ 2 EO), 2.0% Behenic, 1.0%
Myristic, 0.3% Polyquatemium-7, 2.5% Benzyloxyethanol, Dye,
preservatives, perfumes, neutralizing agent (pH ~ 6.5-7.5) with qs [Water]
100.0 (wt.-%) (see Grit Translation 5).
2. Lasemews teaches
Luviquat ©Sensation (ESTCI: Polyquatemium- 87) is a high
polymer conditioner performance developed by BASF for
rinsed formulations. In shampoos, it brings the remarkable
benefits of wet or dry hair. Luviquat ©Sensation offers
products Conditioning a new dimension. Its high cationic
charge density allows to fragile hair to receive the fair amount
necessary to packaging ... It deposits a thin protective layer
without residue. The feeling on the hair is then soft and natural
- without silicone. Depending on the concentration used, the
volume is limited and controlled frizz. Moreover, capping
improved and the color retention.
(Lasemews 3).
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3. Table I of the Specification is reproduced below:
Table i; Comparative aqueous cleansing compositions
| % by weight
A 1 B i C i 0 E
Sodium Saureth sulfate 12 1 12 S 12 i 12: 12 !
Cocamidopropyl betaine i 3 S 3 | 3 i 3 3
Coco glucoside 1,5 | 1.5 ] 1.5 [1.5
"j.......V.... f...o.s....
j
Sodium lauroyi glutamate " “ 0,8
Pol v<3 a utern i u m *87 “ \ 1 1 - | 0,5 0.2
Citric acid
q.s to pH
5.0
Preservative, fragrance 1 q.s„
Water .............1........... q.S. to 100
“Shampoo composition D and E are according to the invention and A to C
represents comparative compositions” (Spec. 24).
4. Table II of the Specification is reproduced below:
Table II: Results of colour wash out test.
L
Before
a b L
After
a b AE
A 38,74 35.23 32.56 42.19 35.37 36.21 5.02
B 37,84 35.99 30.92 41.21 36.14 35.58 5.75
C 37.14 35.00 30.28 39 28 35.24 34.61 4,84
D 37.53 35.21 31,11 40.32 35.94 33.76 3.92
E 37.85 35,91 32.52 39.32 35.24 33.57 1.93
“From the above results, it is clear that cleansing composition comprising
amino acid glutamate surfactant and cationic polymer Polyquatemium-87
produces lower AE values. The effect is synergistic and especially when
cationic polymer is present in the composition alone the AE value increases”
(Spec. 25).
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Principles of Law
“[EJvidence rising out of the so-called ‘secondary considerations'
must always when present be considered en route to a determination of
obviousness.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983).
Analysis
Appellants do not contest the prima facie case of obviousness, but
rather contend “the combination of the claimed glutamate surfactant and
Polyquatemium-87 exhibit a surprising synergy which leads to unexpectedly
superior results when compared to compositions that do not include the
claimed combination of components” (App. Br. 5).
Appellants specifically contend the “Examiner has not pointed to any
compositions in the prior art that are closer than the Composition C in
Example 1 set forth in the present specification. Composition C of Example
1 was more closely related to the features of present claim 1 than the
compositions of Grit” (Reply Br. 5).
We do not find this argument regarding the closest prior art
persuasive. Example 2 of Grit teaches a combination of 1% N-lauroyl
glutamate and 0.3 % polyquatemium-7 (FF 1), a composition that is closer
to the requirements of claim 1 for a glutamate compound and
polyquatemium-87, than composition C, which lacks the presence of any
polyquatemium compound. Thus, the comparison is not with the closest
prior art of example 2 of Grit. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (“when unexpected results are used as evidence of
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nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
Appellants next contend that the results of compositions D and E, that
contained both sodium N-lauroyl glutamate and polyquatemium-87 together,
compared to compositions B and C with polyquatemium-87 or sodium N-
lauroyl glutamate alone, respectively, “exhibited lower AE values, which is
indicative of less color loss after washing, than compositions that are not of
the present invention. Furthermore, the results show that the effect is
synergistic” (App. Br. 5).
We find this unpersuasive for several reasons. First, because
Lasemews teaches that polyquatemium-87 improves color retention (FF 2),
the improved color retention obtained when incorporating polyquatemium-
87 into an N-lauroyl glutamate hair conditioning composition is reasonably
identified as an expected result. See In re Skoner, 517 F.2d 947, 950 (CCPA
1975) (“Expected beneficial results are evidence of obviousness of a claimed
invention. Just as unexpected beneficial results are evidence of
unobviousness.”)
Second, we do not find the evidence itself persuasive of any
unexpected result for composition D. Whether the AE for composition D is
calculated by dividing the change between the composition D value and that
of composition C resulting in a value of-18% or the calculation is
performed to obtain the greater change as calculated by Appellants in the
Reply Brief of 26% (see Reply Br. 9), even a AE of 26% for composition D
“does not represent a ‘difference in kind’ that is required to show
unexpected results” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). In
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Application 13/127,896
Harris, a “32-43% increase in stress-rupture life” was insufficient to
demonstrate unexpected results (Id.). Consequently, the smaller change
obtained here, particularly when Lasemews teaches that inclusion of
polyquatemium-87 improves color retention (FF 2), is insufficient to
demonstrate that the change in color retention for composition D represents
an unexpected result.
Third, while Appellants calculate a AE of 63% for composition E (see
Reply Br. 9), composition E is not commensurate in scope with any pending
claim. Claim 1 broadly recites any glutamate surfactant combined with
polyquatemium-87 in any concentrations, as is not limited to a narrow result
obtained for composition E with the specific N-lauroyl glutamate in a
specific concentration of 0.8% with polyquatemium-87 in 0.2% (FF 3—4).
Even claim 15, more narrowly drawn to sodium lauroyl glutamate, is not
limited to the particular concentrations of composition E (FF 3—4). See In re
Harris, 409 F.3d at 1344 (Unexpected results must also be “commensurate
in scope with the degree of protection sought by the claimed subject
matter.”). Harris found that “[e]ven assuming that the results were
unexpected, [Appellant] needed to show results covering the scope of the
claimed range. Alternatively [Appellant] needed to narrow the claims.”
(Id.).
Here, the evidence in Tables I and II of the Specification demonstrate
significant differences between compositions D and E, which differ solely in
the amount and ratio of N-lauroyl glutamate and polyquatemium-87 present.
These results represent a single value and do not cover the scope of all
compositions containing these two components. As already noted,
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composition D does not show a result that is a “difference in kind”, so even
if the different result in composition E is a “difference in kind”, the claims
do not reflect the specific concentrations shown in composition E that yield
the asserted unexpected result and the results are not commensurate in scope
with claims 1 and 15
Conclusion of Law
Appellants have not presented evidence of secondary considerations,
that when weighed with the evidence of obviousness, is sufficient to support
a conclusion of non-obviousness.
B. 35 U.S.C. § 103(a) over Grit, Lasernews, andMolenda
Appellants do not separately argue this rejection. The Examiner
provides sound fact-based reasoning for combining Molenda with Grit and
Lasernews (see Ans. 5—6). Having affirmed the obviousness rejection of
claims 1 and 15 over Grit and Lasernews for the reasons given above, we
also find that the further combination with Molenda renders claim 10
obvious for the reasons given by the Examiner.
C. —E. Double Patenting
Appellants do not specifically argue these rejections. We therefore
summarily affirm the obviousness-type double patenting rejections. 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.”)
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SUMMARY
In summary, we affirm the rejection of claims 1 and 15 under 35
U.S.C. § 103(a) as obvious over Grit and Lasemews. Claims 2, 4, 5, 8, 9,
11, and 14 fall with claims 1 and 15.
We affirm the rejection of claims 1 and 15 under 35 U.S.C. § 103(a)
as obvious over Grit, Lasemews, and Molenda. Claims 2, 4, 5, 8—11, and 14
fall with claims 1 and 15.
We affirm the rejection of claims 1, 2, 4, 5, 8—11, 14, and 15 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—5, 10 and 11 of copending US Application
13/132,199.
We affirm the rejection of claims 1, 2, 4, 5, 8—11, 14, and 15 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—8 and 10—12 of copending US Application
13/062,017.
We affirm the rejection of claims 1, 2, 4, 5, 8—11, 14, and 15 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—5, 7, 8, and 11—13 of copending US Application
13/061,999.
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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