Ex Parte Molenda et alDownload PDFPatent Trial and Appeal BoardSep 7, 201612186778 (P.T.A.B. Sep. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/186,778 08/06/2008 27387 7590 09/07/2016 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. 101216-119 1801 EXAMINER MATTISON, LORI K ART UNIT PAPER NUMBER 1619 MAILDATE DELIVERY MODE 09/07/2016 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, MARTIN HOFFMANN, and MUSTAFA GRIT 1 Appeal2014-007553 Application 12/186, 778 Technology Center 1600 Before ULRIKE W. JENKS, JACQUELINE T. HARLOW, and TIMOTHY G. MAJORS, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to compositions for shaping hair, which have been rejected as obvious and for provisional and non-provisional obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the Real Party in Interest as KAO GERMANY GMBH. (App. Br. 2.) Appeal2014-007553 Application 12/186, 77 8 STATEMENT OF THE CASE According to the Specification, "[t]he present invention starts from the task of providing a composition for the permanent shaping of human hair with excellent waving and straightening performance and at the same time giving or enhancing shine of hair. Hair waived or straightened with [the] composition disclosed ... looks and feels natural upon touching by hand." (Spec. 1.) Claims 1, 4, 5, and 7-13 are on appeal. Claim 1 is illustrative: 1. A composition for the permanent shaping of human hair, comprising at least one reducing agent selected from the group consisting of thioglycolic acid, thiolactic acid, salts of thiog[l]y[]colic acid, salts of thiolactic acid, cysteine, a hydrochloride of cysteine, homocysteine, cysteamine, N-acetyl cysteine, thiog[l]y[]cerol, ethanediol monothioglycollate, 1,2-propyleneglycol monothioglycollate, 1,3-propanediol monothioglycollate or the isomer mixture resulting therefrom, 1,3-butanediol monothioglycollate and the isomer mixture resulting therefrom, 1,4-butanediol monothioglycollate and the isomer mixture resulting therefrom, polyethylene monothioglycollates, glycerol monothiolactate and further thio acids and esters thereof, and mixtures thereof, and trimethyl pentaphenyl trisiloxane. (App. Br. 10 (Claims App'x) (emphasis added).) 2 Appeal2014-007553 Application 12/186, 77 8 The claims stand rejected as follows: I. Claims 1, 4, 5, and 7-13 as unpatentable under 35 U.S.C. § 103(a) over Wood, 2 and Mueller, 3 and Sabino. 4 II. Claims 1, 4, 5, 7, 10, 11and13 as provisionally rejected for obviousness-type double patenting over claims 1, 2, 6, 8, and 9 of copending Application No. 12/145,206 ("the '206 Application"), Wood, Mueller, and Sabino. 5 III. Claims 1, 4, 5, 7, 8, 10, 11, and 13 for obviousness-type double patenting over claims 1-7 of US 8,524,209 B2 ("the '209 Patent"), 6 Wood, Mueller, and Sabino. IV. Claims 1, 4, 5, 7, 8, 10, 11, and 13 for obviousness-type double patenting over claims 1-10 of US 7,850,953 B2 ("the '953 Patent"), Wood, Mueller, and Sabino. REJECTION I Issue Has the Examiner established by a preponderance of the evidence that claims 1, 4, 5, and 7-13 would have been obvious over Wood, Mueller, and Sabino. 2 Wood et al., U.S. 2007/0141005 Al, published June 21, 2007 ("Wood"). 3 Mueller et al., U.S. 6,871,652 Bl, issued Mar. 29, 2005 ("Mueller"). 4 Sabino et al., U.S. 2005/0244442 Al, published Nov. 3, 2005 ("Sabino"). 5 The '206 Application is subject to appeal before the Board (No. 2015- 007455). 6 This rejection is a conversion of the provisional obviousness-type double patenting rejection over Application No. 12/145, 142, which issued as the '209 Patent on Sept. 3, 2013. (Ans. 9 (Reference to "Ans." refers to the Examiner's Answer dated June 26, 2014).) 3 Appeal2014-007553 Application 12/186, 77 8 Findings of Fact (FF) FF 1. The Examiner's findings of fact and statement of the rejection of claims 1, 4, 5, and 7-13 under 35 U.S.C. § 103(a) over Wood, Mueller, and Sabino may be found at pages 4--7 of the Final Action dated May 8, 2013 and at pages 4--7 and 14--19 of the Examiner's Answer. We adopt those findings and provide the following for emphasis. FF 2. Wood discloses "a composition for the permanent shaping of human hair." (Wood Abstract.) Wood teaches "the reducing agent [for permanently shaping hair] still most frequently used today is thioglycolic acid, also in the form of the salts thereof." (Id. at i-f 3; see also, id. at i-f 49 (Example 3).) Wood further teaches "[a]nother preferred compound in the permanent shaping composition of the present invention is silicone compounds and especially aminated silicones such as amodimethicone." (Id. at i-f 34.) FF 3. Mueller teaches methods and agents for permanently shaping hair. (Mueller Abstract.) According to Mueller, a negative side effect of the permanent waving of hair [by application of a reducing agent] is that the hair often becomes brittle and dull. In addition, other properties, such as wet and dry combability, feel, flexibility, softness, luster and tear strength, are also adversely affected in many cases. (Id. at col. 1, 11. 46-51; see also, id. at col. 1, 11. 15--45.) Mueller teaches the addition of oil components as conditioning agents: "other oil components preferably used for the purposes of the invention are silicone oils, more particularly dialkyl and alkylaryl siloxanes such as, for example, dimethyl polysiloxane and methylphenyl polysiloxane and alkoxylated and 4 Appeal2014-007553 Application 12/186, 77 8 quartemized analogs thereof." (Id. at col. 4, 11. 11-15.) Mueller further lists "hydroxyl amino-modified silicone which is also known as Amodimethicone" as a suitable silicone oil component. (Id. at col. 4, 11. 15- 22.) Mueller discloses "[s]ilicone oils ... suitable as conditioning agents [include, for example] ... alkylaryl siloxanes ... [and] Amodimethicone." (Id. at col. 8, 1. 55 through col. 9, 1. 2.) FF 4. Sabino teaches cosmetic compositions comprising "non-volatile lipophilic liquids ... to enhance the lubricity, conditioning, and gloss/shine properties of an applied film on the skin, hair, and/or nails." (Sabino i-f 92.) Sabino teaches compositions including such lipophilic liquids "typically produce films that feel moist and/or soft and supple to the consumer, and appear wet or shiny/glossy to the consumer." (Id.) Sabino teaches "[n]on- volatile lipophilic liquids may be selected from groups consisting of non- volatile hydrocarbon liquids, silicone liquids, non-volatile fluorinated liquids, and mixtures thereof." (Id. at i-f 95.) According to Sabino, "[ e ]xamples of non-volatile silicone liquids include, but are not limited to, polydimethylsiloxanes (PDMSs) comprising groups selected from alkyl, alkoxy, and phenyl groups ... phenyl silicones, such as phenyl trimethicones ... [and] trimethyl pentaphenyl trisiloxane." (Id. at i-f 97.) Principles of Law "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[T]he burden of showing unexpected results rests on he who asserts them. Thus it is not enough to show that results are obtained which differ 5 Appeal2014-007553 Application 12/186, 77 8 from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Analysis Appellants argue the patentability of claims 1, 4, 5, and 7-13 as a group. We select claim 1 as representative. Claim 1 recites a composition for permanent shaping of hair comprising (i) a reducing agent, such as thioglycolic acid or related salts, and (ii) an arylated silicone - specifically trimethyl pentaphenyl trisiloxane. The Examiner finds that Wood teaches compositions for shaping human hair that include, inter alia, a salt of thioglycolic acid and the silicone compound amodimethicone. (Ans. 4.) Because the Examiner finds that Wood does not teach the particular silicone compound ( trimethyl pentaphenyl trisiloxane) recited in claim 1, the Examiner turns to Mueller and Sabino for this limitation. (Id. at 5---6.) According to the Examiner, Mueller teaches that shaping human hair with compositions having a reducing agent tends to damage the hair - "negative side effects of permanent waving of hair are brittle hair, dull hair, and adverse hair feel, flexibility, softness, luster, tear strength, and wet and dry comb-ability." (Id. at 5.) The Examiner finds that Mueller teaches the addition of silicone oils (e.g. amodimethicone) as a conditioning agent and that Sabino "teaches diphenyl dimethicone and trimethyl pentaphenyl trisiloxane are non-volatile silicone liquids used to enhance the lubricity, conditioning and gloss/shine properties of a film applied on the skin, hair, and/or nails." (Id.) 6 Appeal2014-007553 Application 12/186, 77 8 Based on the teachings in Wood, Mueller, and Sabino, the Examiner concludes "[i]t would have been prima facie obvious ... to have modified WOOD's composition by adding ... trimethyl pentaphenyl trisiloxane." (Id. at 6.) The Examiner reasons that (Id.) [t]he skilled artisan would have been motivated to add trimethyl pentaphenyl trisiloxane to WOOD's composition, with an expectation of success, in order to improve the shine/ gloss benefits ... since WOOD's composition is a permanent waving composition, MUELLER teaches that a negative effect of permanent waving compositions is dull hair which lacks luster, and SABINO teaches trimethyl pentaphenyl trisiloxane is used to enhance conditioning, gloss, and shine of hair. Appellants argue the skilled artisan "would not be motivated to substitute trimethyl pentaphenyl trisiloxane for the aminated silicone taught in Wood." (App. Br. 5.) According to Appellants, the Examiner's finding that "amodimethicone is 'reasonably equivalent' to trimethyl pentaphenyl trisiloxane" is without basis. (Id.) Amodimethicone and trimethyl pentaphenyl trisiloxane are, Appellants' argument goes, "vastly different in structure and function" - amodimethicone, for example, "contains amino groups, and no aryl groups." (Id.) These arguments are unpersuasive. The rejection is based on the addition of trimethyl pentaphenyl trisiloxane to the composition of Wood, not substitution for amodimethicone. (Ans. 16.) As to the Examiner's finding that the two silicone compounds are "reasonably equivalent" (Ans. 6), that finding is grounded in the disclosures of the art - at least insofar as both compounds would reasonably be expected to function as conditioning 7 Appeal2014-007553 Application 12/186, 77 8 agents in compositions for permanently shaping hair. Indeed, Mueller teaches that alkylaryl siloxanes and aminated silicones (e.g., amodimethicone) are suitable conditioning agents (FF 3), and Sabino teaches that arylated silicones (e.g., phenyl silicones, trimethyl pentaphenyl trisiloxane) "enhance the lubricity, conditioning, and gloss/shine properties" of hair (FF 4 ). Though the compounds have different structures, Appellants' contention of "vastly different" functions is unsupported attorney argument and inconsistent with the prior art. We thus agree with the Examiner that the skilled artisan, in view of the teachings of Mueller and Sabino, would have predictably added trimethyl pentaphenyl trisiloxane as a conditioning agent to Wood's composition to improve the feel and shine imparted to reshaped hair. (FF 3--4.) Appellants also argue the Examiner invokes improper hindsight when selecting trimethyl pentaphenyl trisiloxane from Sabino. (App. Br. 7.) According to Appellants, there are "literally thousands of possible non- volatile lipophilic liquids [described in Sabino] that may enhance lubricity or improve gloss or shine." (Id.) Moreover, Appellants contend, the Examiner is "incorrect to say that Sabino teaches only eight silicone compounds ... because polymethylsiloxane is a genus, of which there are literally hundreds, if not thousands, or possible silicone compounds in this genus." (Reply Br. 3.) This argument is not persuasive. At the outset, we recognize that "[a ]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the 8 Appeal2014-007553 Application 12/186, 77 8 claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). And here, we are not persuaded the Examiner's proposed modification of the composition of Wood is based solely on Appellants' disclosure. Quite the opposite, the Examiner's focus on Sabino's silicone oils as conditioners for hair was reasonable in light of the common use of other silicone compounds (e.g., alkylaryl siloxanes, amodimethicone, etc.) as ingredients and conditioners in hair-shaping compositions, as shown in Wood and Mueller. (FF 2-3; Ans. 15.) Moreover, Sabino expressly identifies trimethyl pentaphenyl trisiloxane, and lists that particular compound as among fewer than ten suitable arylated silicones. (FF 4.) We are thus not persuaded that the number of potential combinations is so great that the Examiner's conclusion of obviousness is called into question. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[D]isclos[ing] a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.") Finally, Appellants argue that they "have presented evidence showing that compositions comprising the claimed arylated silicone exhibit superior properties compared to compositions that lack the claimed arylated silicone." (Reply Br. 1.) In support, Appellants identify Examples 1--4 in the Specification. (Id.) We are not persuaded, and find Appellants' argument and evidence insufficient to overcome the Examiner's prima facie case of obviousness. 9 Appeal2014-007553 Application 12/186, 77 8 We initially observe that Appellants' evidence (Examples 1--4 in the Specification) was not highlighted on appeal prior to Appellants' Reply Brief. To the extent Appellants hope to rely on objective evidence of nonobviousness (e.g., unexpected results), it should have been presented clearly in the Appeal Brief to allow the Examiner a meaningful opportunity to consider and respond to such evidence. 7 37 C.F.R. § 41.41(b) ("A reply brief shall not include ... any new or non-admitted affidavit or other Evidence.") In any event, the compositions of Examples 1 and 4 include no amodimethicone (Spec. 11, 14--15) and thus do not reflect the closest prior art, such as shown in Example 3 of Wood. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art."). Examples 2 and 3 include amodimethicone, but Appellants have not persuasively shown that the results achieved were surprising or unexpected when trimethyl pentaphenyl trisiloxane was excluded. (Id. at 12-13.) To the contrary, the alleged difference in appearance - e.g., "substantially weaker shine and waves did not look homogeneous" - are results flowing predictably from the 7 We recognize the general statement in the Appeal Brief' s description of "[t]he present invention" that "[c]ompositions according to the present invention were able to achieve expressive, consistent and intense permanent hair waves when compared to compositions without the claimed arylated silicone" (App. Br. 4). But that general statement did not cite to the Specification or other evidence in support, and was never again featured in Appellants' argument. (App. Br. passim.) 10 Appeal2014-007553 Application 12/186, 77 8 teachings of the art (FF 3--4). 8 In re Skoner, 517 F.2d 947, 950 (CCPA 1975) ("Expected beneficial results are evidence of obviousness of a claimed invention.") Conclusion of Law We conclude that the Examiner established by a preponderance of the evidence that claim 1 would have been obvious over Wood, Mueller, and Sabino. Claims 4, 5, and 7-13 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). REJECTIONS II-IV The Examiner's findings of fact and statement of the rejection concerning Rejections II-IV may be found at pages 7-13 of the Examiner's Answer dated June 26, 2014. We adopt the Examiner's findings and reasoning related to Rejections II-IV. With respect to the obviousness-type double patenting rejection over claims 1-10 of the '953 Patent, Wood, Mueller, and Sabino (Rejection IV), Appellants note only that the '953 Patent is the patent that issued from Wood and incorporate their argument about Wood related to the§ 103(a) rejection. (App. Br. 7-8.) 8 The results expressed in the Specification also include no verifiable data or other evidence that substantiates the alleged difference in appearance in compositions with or without trimethyl pentaphenyl trisiloxane. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("[I]t is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice."). 11 Appeal2014-007553 Application 12/186, 77 8 Having found no error in the Examiner's rejection under§ 103(a) over Wood, Mueller, and Sabino, Appellants' argument concerning Rejection IV is unpersuasive. We thus affirm. Appellants have not separately argued Rejection II or Rejection III. We thus summarily affirm Rejection II and Rejection III. SUMMARY We affirm Rejection I of claims 1, 4, 5, and 7-13 as unpatentable under 35 U.S.C. § 103(a) over Wood, Mueller, and Sabino. We also affirm the obviousness-type double patenting rejections (Rejections II-IV) for the reasons of record. TIME PERIOD FOR RESPONSE 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 12 Copy with citationCopy as parenthetical citation