Ex Parte Mueller et al

Patent Trial and Appeal Board

Jul 22, 2016

13453291 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/453,291 04/23/2012 Burkhard Mueller
49641 7590 07/26/2016
THE DIAL CORPORATION
7201 E. Henkel Way
SCOTTSDALE, AZ 85255
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.
H 09186 4127
EXAMINER
FRAZIER, BARBARA S
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
07/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
US-STZ-P A TENTS-UK-UW@us.henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BURKHARD MUELLER, PAMELA KAFTAN,
ROLF BAYERSDOERFER, MATTHIAS SCHWEINSBERG,
ROLF ROENISCH, MATHIAS SCHRIEFERS, CARINE DOGAN,
THORSTEN KNAPP, and MIRIAM REINEKING
Appeal2014-006252
Application 13/453,291
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an agent
for treating keratin-containing fibers. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Henkel AG &
Co. KGaA (see App. Br. 1 ).
Appeal2014-006252
Application 13/453,291
Statement of the Case
Background
"Hair treatment agents that provide permanent or temporary shaping
of the hair play an important role in cosmetics. Temporary shaping actions
that are intended to yield good hold without impairing the hair's healthy
appearance such as its shine can be achieved" (Spec. i-f 4). "An important
property of an agent for temporary deformation of keratinic fibers,
hereinafter also called a 'styling agent,' is to impart the strongest possible
hold to the treated fibers in the shape generated." (Spec. i-f 6).
The Claims
Claims 1--4, 7-9, 11, and 12 are on appeal. Independent claim 1 is
representative and reads2 as follows:
1. Agent for treating keratin-containing fibers
comprising, in a cosmetically acceptable carrier:
at least one nonionic starch modified with propylene
oxide, and
at least one anionic film-forming and/or anionic
setting polymer having at least one structural unit of formula
(I) and at least one structural unit of formula (II),
R2
,1 J~.
*i ---- T j
C=O
I
A1
(I) (I I)
2 Claim 1 is incorrectly reproduced in the Appeals Appendix and
lacks limitations added in the Amendment filed March 4, 2013.
We therefore reproduce claim 1 as it appears in the March 4, 2013
amendment.
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Application 13/453,291
wherein
R1 and R2 are, mutually independently, a hydrogen
atom or a methyl group, with the provision that R1 and R2
are not simultaneously a methyl group,
R3 is a hydrogen atom or a methyl group,
R4 is a carbamoyl group, a linear or branched (C4 to
C12) alkylaminocarbonyl group, a linear or branched (C4 to
C12) alkylaminoethylaminocarbonyl group, a linear or
branched (C4 to C12) alkylaminopropylaminocarbonyl group,
a linear or branched (C4 to C12) alkyloxycarbonyl group, a
linear or branched (C4 to C12) alkylaminoethyloxycarbonyl
group, a linear or branched (C4 to C12)
alkylaminopropyloxycarbonyl group, a linear or branched
(C2 to C12) acyloxy group, and
A 1 is a hydroxy group or an organic residue having at
least one sulfonic acid group that bonds to the structural
fragment via an oxygen atom or an NH group
wherein the modified nonionic starch has an average
molecular weight (weight average) of 100 to 2000 kDa; and
wherein the modified nonionic starch has a propylene
oxide content of 1 to 20 wt%, based on weight of the
modified starch.
(Arndt. 3/4/2013 at 3--4).
The Issues
The Examiner rejected claims 1--4, 7-9, 11, and 12 under 35 U.S.C.
§ 103(a) as obvious over Paul,3 National Starch,4 and/or Lauscher5 (Ans. 2-
6).
3 Paul et al., EP 0 948 958 A2, published Oct. 13, 1999 ("Paul").
4 Personal Care Polymers, National Starch & Chemical Catalog 1-
13 (2000) ("National Starch").
5 Lauscher et al., US 2006/0013785 Al, published Jan. 19, 2006
("Lauscher").
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Application 13/453,291
The Examiner finds that "Paul teaches aerosol hair cosmetic
compositions which contain nonionically derivatized starches optionally
hydrolyzed and/or ionically modified" but that "Paul does not specifically
exemplify an agent comprising a nonionic starch derivatized with propylene
oxide and an acrylates/octylacrylamide polymer (the elected species)
sufficiently to anticipate the claims. Therefore, the rejection is made under
obviousness" (Ans. 2-3).
The Examiner finds it obvious "to prepare an agent comprising a
nonionic starch modified with propylene oxide and an
acrylates/octylacrylamide polymer" because "polyvinylpyrrolidone
(exemplified by Paul as coprocessed with the modified starch) and
acrylates/octylacrylamide are both named by Paul as polymers which may
be coprocessed with its modified starches in its hair care compositions, and
therefore are functionally equivalent to one another" (Ans. 3).
The Examiner finds that
while Paul does not specifically teach the viscosity and
molecular weight ranges as cited in claims 1 and 4, it is clear
from Paul's teachings that the reduced viscosity and reduced
molecular weight of the starch may be controlled depending on
its gelatinization and conversion (i.e., hydrolysis) by routine
experimentation, in order to arrive at optimal properties for the
resultant hair spray
(Ans. 5).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the prior art renders claim 1
obvious?
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Application 13/453,291
Findings of Fact
1. In response to the Restriction Requirement mailed Sept. 12,
2012, Appellants elected species with structural unit (I-1), structural unit (II-
3) and aerosol spray (see Resp. Elec. 10/12/2012 at 3). The Examiner
interpreted structural unit (I-1 ), or formula I of claim 1, as acrylates and
structural unit (II-3), or formula II of claim 1, as octylacrylamide (see Non-
Final Act. 12/03/2012 at 2). Appellants did not dispute this interpretation in
their response (see Arndt. 3/4/2013 at 9).
2. Paul teaches "aerosol hair cosmetic compositions, particularly
hair fixative compositions, which contain nonionically derivatized starches"
(Paul ii 1 ).
3. Paul teaches that the "starch is first nonionically derivatized ...
For example, the starch may be derivatized using propylene oxide" (Paul
iii-I 22, 24 ).
4. Paul exemplifies starches modified with propylene oxide in
Examples 1 and 2 including "a propylene oxide level of 3%" and "a
propylene oxide level of 15%" (Paul iii-I 79-80).
5. Paul exemplifies a 15% polypropylene modified starch
coprocessed with polyvinylpyrrolidone (Paul i-fi-179, 83).
6. Paul teaches that the "modified starch may further be blended
or coprocessed with other fixative or conditioning polymers. Such polymer
may be selected from polymers known in the art, such as ...
polyvinylpyrrolidone (PVP) ... acrylates/octylacrylamide" (Paul i-f 45).
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Application 13/453,291
7. Paul teaches that "[p ]ropellants useful in the instant invention
include, but are not limited to, ethers, such as dimethyl ether; one or more
lower boiling hydrocarbons" (Paul i-f 49).
8. Paul teaches that:
The starch is generally at least partially gelatinized. If
conversion is to be accomplished enzymatically, the
gelatinization is conventionally conducted prior to conversion.
Gelatinization may be accomplished using any technique
known in the art, particularly steam cooking, more particularly
jet-cooking, and then converted (hydrolyzed). The conversion
is important if a reduced molecular weight starch and a reduced
viscosity of the starch solution or dispersion is desired, such as
when the starch is to be used in a hair spray.
(Paul i-f 25).
9. Paul teaches that "[a]ny enzyme or combination of enzymes,
known to degrade starch may be used. . . . The optimum parameters for
enzyme activity \'l1ill vaf'J depending upon the enzyme used ... These
parameters may be adjusted to optimize the digestion rate of the starch base"
(Paul i-fi-126-27).
10. Paul teaches that the "conversion reaction is continued until the
starch is sufficiently degraded to provide proper spray characteristics,
particularly to a viscosity of from about 7 to about 80 seconds ... using a
standard funnel method" (Paul i-f 33).
11. Paul teaches that "[h ]air cosmetic compositions include, but are
not limited to, hair fixative compositions and styling aids, such as hair
sprays and mousses" (Paul i-f 55) and Paul exemplifies a Mousse
composition in Example 9 (Paul i-fi-1 98-105) and a lotion composition in
Example 10 (Paul i-fi-1 106-107).
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Application 13/453,291
12. The Specification teaches that "[i]n order to adjust the
molecular weight, the starch is subjected to mechanical and/or chemical
treatment ... To achieve a lower molecular weight from 100 to 400 kDa, the
starches are preferably exposed to ... enzymatic cleavage" (Spec. i-fi-132,
35).
13. National Starch teaches that
INCI/CTFA Designation:
Acrylates/Octylacrylamide Copolymer
Description:
AMPHOMER HC (formerly VERSATYL-42) [V-90 in
Europe] is a high performance carboxylated hair spray polymer
specifically designed for use in systems containing a large
proportion of hydrocarbon propellant. It is also very
compatible with dimethyl ether. In addition, AMPHOMER HC
can be used to produce a crystal clear hair spray.
Films of the polymer are hard, yet flexible, resulting in
formulations that have excellent hold, yet feel more natural on
the hair.
(National Starch 1, col. 3).
14. Lauscher teaches "polymers with acid groups are ...
copolymers of octyl acrylamide and at least one monomer selected from the
group consisting of acrylic acid" (Lauscher i1 41 ).
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!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
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Application 13/453,291
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-6; FF 1-14) and agree that the
claims are rendered obvious by Paul, National Starch, and Lauscher. We
address Appellants' arguments below.
Appellants contend that:
Paul fails to make any disclosure related to the molecular
weight of the nonionic starches. As described in the pending
application, unmodified starch can have a molecular weight of
100,000 to 7,000,000 kDa. (Paragraph [0024]). Applicants
surprisingly discovered a reduction in molecular weight of
modified nonionic starch with a propylene oxide content of 1 to
20 wt%, based on the weight of the modified starch. The cited
references make no disclosure or suggestion that such a
reduction in molecular weight occurs when the modified
nonionic starch has a propylene oxide content of 1 to 20 wt%
resulting in a modified nonionic starch with an average
molecular weight (weight average) of 100 to 2000 kDa as is
presently claimed. As a result, claims 1-4, 7-9 and 11-12 are
non-obvious over the combination of Paul, National Starch, and
Lauscher.
(App. Br. 10-11).
We are not persuaded. Just as the Specification teaches adjusting the
molecular weight by chemical treatments such as enzymatic cleavage (FF
11 ), Paul teaches that enzymatic treatments may be used to reduce molecular
weights as desired (FF 8), that these enzymatic parameters are optimizable
(FF 9), and that the optimization to degrade (i.e. reduce the molecular
weight) the starch may continue until optimized spray characteristics and
viscosity are reached (FF 10).
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Application 13/453,291
Thus, the Examiner has reasonably demonstrated that the prior art
shows molecular weight is a results optimizable variable based on desired
spray characteristics and viscosity (FF 8-10). "[D]iscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art." In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Appellants provide no evidence of any secondary consideration such as
unexpected results that would render the optimized ranges nonobvious.
Appellants contend that
there is no suggestion from Paul, National Starch, or
Lauscher with respect to the claimed molecular
weight in combination with the claimed propylene
oxide content. Applicants discovered a reduction in
average molecular weight (weight average) in the
modified nonionic starch when the propylene oxide
content is 1to20 wt%.
(App. Br. 11 ).
We are not persuaded. As noted, Paul teaches "if a reduced molecular
weight ... is desired, such as when the starch is to be used in a hair spray"
(FF 8). Paul further teaches the specific parameters necessary to optimize
the molecular weight and viscosity to "provide proper spray characteristics"
for the hair spray (FF 9-10). Appellants provide no evidence, only attorney
argument, that the reduction in molecular weight is anything other than
routine optimization. However, "attorney argument [is] not the kind of
factual evidence that is required to rebut a prima facie case of obviousness."
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellants contend that the skilled artisan "would not be motivated or
prompted to the presently claimed molecular weight in combination with
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Application 13/453,291
propylene oxide content in view of the broad disclosure in Paul. Rather, one
skilled in the art would only discover this feature upon reading the present
application, i.e., using hindsight" (App. Br. 11 ).
We are not persuaded. While we are fully aware that hindsight bias
may plague determinations of obviousness, Graham v. John Deere Co., 383
U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly
stated that the "combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR, 550 U.S. at 416. In the instant case, reduction of Paul's
propylene oxide derivatized starch (FF 3--4) as specifically suggested by
Paul "if a reduced molecular weight ... is desired, such as when the starch is
to be used in a hair spray" (FF 8) provides a specific reason to optimize the
molecular weight of the starch for use in hair sprays as well as the disclosed
mousses and lotions (FF 11 ).
Appellants contend, in a new argument not presented in their Appeal
Brief, that "[c]alculation of suitable molecular weight ranges for the starches
of Paul based on the disclosed dextrose equivalent reveals that the molecular
weight of the starches may be from 0.45 to 9 kDa, whereas independent
claim 1 claims a suitable average molecular weight as being from 100 to
2000 kDa" (Reply Br. 4). Similarly, Appellants contend that
based upon the critical features of the starches for purposes of
Paul (i.e., low viscosity and good spray characteristics) in
combination with the disclosed ranges of suitable DE values for
the starches of Paul, it would not be obvious to 'optimize' the
molecular weights of the starches taught in Paul to arrive at the
instantly claimed molecular weight ranges for the starch of
claim 1 because increasing the molecular weight would clearly
increase viscosity of the starches.
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Application 13/453,291
(Reply Br. 5).
We find these arguments to be untimely. No good cause has been
shown for the failure to previously present this argument and
Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, including any designated new
ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.
37 CPR§ 41.41(b)(2). Because we lack the Examiner's input to address this
issue, we will not consider the arguments that are newly presented in the
Reply Brief.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
prior art renders claim 1 obvious.
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Paul, National Starch, and Lauscher. Claims 2--4,
7-9, 11, and 12 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
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