Ex Parte Nguyen et al

Board of Patent Appeals and Interferences

Jul 23, 2008

09931913 (B.P.A.I. Jul. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NGHI VAN NGUYEN and DAVID W. CANNELL
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Appeal 2007-3675
Application 09/931,913
Technology Center 1700
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Decided: July 23, 2008
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-20, 22-29, and
30-45. Claim 1 is illustrative:
1. A composition for lanthionizing keratinous fibers to achieve
relaxation of said keratinous fibers comprising:

i) at least one hydroxide compound;

Appeal 2007-3675
Application 09/931,913

(ii) at least one oxidizing agent; and

(iii) at least one complexing agent effective for dissociating the
at least one hydroxide compound,

wherein said at least one hydroxide compound and said at least
one oxidizing agent are present in the composition in a sufficient
quantity to effect lanthionization of keratinous fibers.

The Examiner relies upon the following references as evidence of
obviousness:
Au US 5,872,111 Feb. 16, 1999
Plyes US 2001/0008630 A1 Jul. 19, 2001

Appellants’ claimed invention is directed to a composition comprising
an hydroxide compound and an oxidizing agent in sufficient quantity to
effect lanthionization of keratinous fibers. The composition also comprises
a complexing agent that is effective for dissociating the hydroxide
compound.
Appealed claims 1-20, 22-28 and 30-45 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Au. Claim 29 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Au in view of Plyes.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find ourselves in agreement
with Appellants that the Examiner has failed to establish a prima facie case
of obviousness for the claimed subject matter. Accordingly, we will not
sustain the Examiner’s rejection.
Au discloses a wide variety of detergent and personal product
compositions that are said to have excellent cleansing properties (col. 3, ll.
23-25). Among the products are detergents, shampoos, hair
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Application 09/931,913

straighten/relaxing products, etc. Au discloses that the shampoos may
contain the claimed hydroxide and complexing agent, for example, a
sequestering agent (see col. 14, ll. 14-34). As recognized by the Examiner,
Au does not disclose the claimed oxidizing agent in the shampoo or other
hair treating composition. To remedy this deficiency, the Examiner points to
Au’s disclosure of an oxidizing agent in the reference detergent
compositions and, according to the Examiner, Au “teaches and discloses
detergent and personal products compositions as the equivalence [sic]
compositions that have common properties (see col. 3, ll. 23-36)” (pg 6 of
Ans, fourth paragraph, first sentence). Therefore, although Au does not
disclose a composition comprising the claimed components for lanthionizing
keratinous fibers, the Examiner reasons that it would have been obvious for
one of ordinary skill in the art to formulate the claimed composition from
Au’s disclosure that would inherently have the claimed lanthionizing
property.
The flaw in the Examiner’s reasoning arises from the erroneous
conclusion that Au teaches that detergent compositions and hair treating
compositions have equivalent properties. While it may be true that detergent
and hair treating compositions share some properties, it should be clear that
they do not share all properties such that they are equivalent in all respects.
Manifestly, one would not reasonably expect a detergent composition to be
equivalent to a shampoo in treating hair. Accordingly, we agree with
Appellants that the Examiner has failed to establish the requisite reasonable
expectation of success for adding the claimed oxidizing agent to
compositions fairly taught by Au as hair treating compositions.
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Application 09/931,913

Plyes, cited by the Examiner for the claim 29 recitation that the amino
acid is monosodium glutamate, does not remedy the basic deficiency of Au
set forth above. In addition, we agree with Appellants that the Examiner has
not established that Au’s disclosure of essential amino acid compounds
found naturally in the skin is a genus that embraces the claimed
monosodium glutamate disclosed by Plyes.
In conclusion, based on the foregoing, we are constrained to reverse to
the Examiner’s rejections.

REVERSED

PL initials:
sld

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