Ex Parte Molenda et al

Patent Trial and Appeal Board

Dec 17, 2012

12186252 (P.T.A.B. Dec. 17, 2012)

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.
12/186,252 08/05/2008 MICHAEL MOLENDA 101216-116 1835
27387 7590 12/18/2012
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
12/18/2012 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, MARTIN HOFFMANN,
and MUSTAFA GRIT
__________

Appeal 2012-002033
Application 12/186,252
Technology Center 1600
__________

Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to water-
free composition for bleaching and/or highlighting keratin fibers. The
Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

Appeal 2012-002033
Application 12/186,252

2
STATEMENT OF THE CASE
Claims 1, 3-11, 13 and 16-17 are on appeal. Claim 1, the only
independent claim on appeal, is representative and reads as follows:
1. A water-free composition for bleaching and/or
highlighting keratin fibers comprising
at least one compound with a bleaching and/or
highlighting effect and
at least one arylated silicone selected from the group
consisting of diphenylsiloxy phenyl trimethicone, tetramethyl
tetraphenyl trisiloxane, triphenyl trimethicone, tetramethly
tetraphenyl trisiloxane and pentaphenyl trimethyl trisiloxane
and present at a concentration of 1 to 50% by weight calculated
to total composition.

The claims stand rejected as follows:
I. Claims 1, 3-7, 9, and 10 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Imperial,
1
Dow Corning PH-
1555 HRI Cosmetic Fluid,
2
Phenyl Trimethicone,
3
Dias,
4
Guskey
„514,
5
and Guskey „494.
6

II. Claims 1, 11 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Imperial, Dow Corning PH-1555 HRI

1
Imperial, US 6,613,311 B2, issued Sept. 2, 2003.
2
Dow Corning PH-1555 HRI Cosmetic Fluid, published 10/21/2006 at
http://www.dowcoming.com/applications/search/products/details.aspx?prod
=04029042&type=PROD.
3
Phenyl Trimethicone, as published on 11/06/2004 at
http://www.lotioncrafter.com/reference/tech_data_1550.pdf.
4
Dias, US 6,540,791 B1, issued Apr. 1, 2003.
5
Guskey et al., US 5,976,514, issued Nov. 2, 1999.
6
Guskey et al., US 5,776,494, issued Jul. 7, 1998.
Appeal 2012-002033
Application 12/186,252

3
Cosmetic Fluid, Phenyl Trimethicone,

Dias, Guskey „514, Guskey
„494, and Nocker.
7

III. Claims 1 and 8 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Imperial, Dow Corning PH-1555 HRI Cosmetic
Fluid, Phenyl Trimethicone,

Dias, Guskey „514, Guskey „494,
Blumenschein
8
and Bernecker.
9

IV. Claims 1, 7 and 16 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Imperial, Dow Corning PH-1555 HRI
Cosmetic Fluid, Phenyl Trimethicone,

Dias, Guskey „514, Guskey
„494 and Legrand.
10

Each rejection set forth by the Examiner relies on the disclosures of
Imperial, Dow Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone,

Dias, Guskey „514, Guskey „494. Because the same issue is dispositive for
each rejection, we will consider them together.
I.- IV.
Issue
The Examiner finds that
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
substituted the arylated silicone, trimethyl pentaphenyl
trisiloxane, for the dimethicone utilized in an amount of 30 wt
% in Example 1 because Imperial teaches nonvolatile, water
insoluble silicones having a preferred viscosity of 20 to 100,000

7
Nocker et al. US 2005/0097683 A1, published May 12, 2005.
8
Blumenschein, EP 1 803 436 A1, published July 4, 2007.
9
Machine translation of Bernecker, DE 199 62 879 A1, published June 28,
2001.
10
Legrand et al., US 6,260,556 B1, issued July 17, 2001.
Appeal 2012-002033
Application 12/186,252

4
are suitable for her invention (col. 3, lines 47-51) and trimethyl
pentaphenyl trisiloxane is a nonvolatile silicone with a viscosity
within Imperial's preferred range which is utilized in hair care
formulations to provide an ultra-high refractive index.

(Ans. 9.)
Appellants contend that “a prima facie case of obviousness is rebutted
by a showing of unexpected and surprising results” (App. Br. 5) and that
“there is nothing in the prior art that would suggest that the arylated silicones
presently claimed would achieve a much better bleaching effect when
compared to other silicone oils” (id. at 6).
The Examiner argues that “Appellant[s] did not compare degree of
lightness and bleaching effect achieved with pentaphenyl trimethyl
trisiloxane against the degree of lightness and bleaching effect achieved with
any one of phenyl trimethicone, phenyl dimethicone, or diphenyl
dimethicone taught by Imperial (i.e. the closest prior art).” (Ans. 19;
emphasis omitted.)
The issue presented is: Have Appellants provided evidence of
unexpected results that outweighs the evidence supporting the prima facie
case of obviousness?
Findings of Fact
FF1. The Specification discloses as follows:
The compositions of the present invention comprises at least
one arylated silicone at a concentration range of 1 to 50%,
preferably 5 to 40% more preferably 7.5 to 35% and most
preferably 7.5 to 30% by weight calculated to total composition
prior to mixing with oxidizing lotion. Non-limiting suitable
examples are phenyl methicone, phenyl trimethicone, diphenyl
dimethicone, diphenylsiloxy phenyl trimethicone, tetramethyl
Appeal 2012-002033
Application 12/186,252

5
tetraphenyl trisiloxane, triphenyl trimethicone, tetramethly
tetraphenyl trisiloxane and pentaphenyl trimethyl trisiloxane.

(Specification, 2; emphasis added.)
FF2. Imperial discloses “[a] composition for use in bleaching hair in
combination with a liquid peroxide based oxidizing agent, said composition
comprising an effective amount of at least one persulfate salt dispersed in a
silicone oil base.” (Imperial, Abst.)
FF3. Imperial discloses that suitable silicones “include dimethicone
… [and] phenyl substituted silicones such as phenyl trimethicone, phenyl-
dimethicone, [and] diphenyl dimethicone.” (Imperial, col. 3, ll. 50-55;
emphasis added.)
Principles of Law
Once a prima facie case of obviousness has been established,
objective evidence of secondary considerations must be considered in
making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713
F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial obviousness determination
is reconsidered a new in view of the proffered evidence of nonobviousness.
See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co.,
902 F.2d 943, 945 (Fed. Cir. 1990); Ex parte Quist, App. No. 2008-001183,
at 10-11 (BPAI June 2, 2010) (Precedential) (available at
www.uspto.gov/ip/boards/bpai/decisions/prec/fd08001183.pdf).
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Appeal 2012-002033
Application 12/186,252

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Analysis
Appellants do not dispute the Examiner‟s conclusion that the claimed
composition would have been prima facie obvious based on the cited
references. (App. Br. 5). We adopt the Examiner‟s findings and reasoning
supporting the prima facie case.
Appellants argue, however, that the Specification provides evidence
of unexpected results that is sufficient to rebut the prima facie case of
obviousness. (Id. at 5-7.) We are not persuaded. Rather, we agree with the
Examiner that Appellants have not provided evidence of unexpected results
sufficient to overcome the prima facie case of obviousness. The burden of
demonstrating unexpected results rests on the party asserting them. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). That burden has not been
carried here because Appellants have not established that the results
achieved using the recited arylated silicone compounds were unexpectedly
superior compared to the closest prior art, which is compositions disclosed
by Imperial using the arylated silicones phenyl trimethicone or diphenyl
dimethicone. See In re Baxter Travenol Labs., 952 F.2d at 392; see also
Hoffman Declaration
11
at pp. 2-3 (comparing only non-arylated silicone
compound to claimed compound, in contrast to arylated silicone compounds
described in Imperial (see FF3)). We sustain the Examiner‟s rejections
under 35 U.S.C. § 103(a) that rely on Imperial.

11
Declaration of Martin Hoffman under 37 C.F.R. § 1.132, declaration
executed September 15, 2010.
Appeal 2012-002033
Application 12/186,252

7
Conclusion of Law
Appellants have not provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness.
SUMMARY
We affirm the rejection of claims 1, 3-7, 9, and 10 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Imperial, Dow
Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias,
Guskey „514, and Guskey „494.
We affirm the rejection of claims 1, 11 and 17 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Imperial, Dow
Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey
„514, Guskey „494, and Nocker.
We affirm the rejection of claims 1 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Imperial, Dow Corning PH-
1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey „514, Guskey
„494, Blumenschein and Bernecker.
We affirm the rejection of claims 1, 7 and 16 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Imperial, Dow
Corning PH-1555 HRI Cosmetic Fluid, Phenyl Trimethicone, Dias, Guskey
„514, Guskey „494 and Legrand.
AFFIRMED

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