Ex Parte O et al

Board of Patent Appeals and Interferences

Mar 26, 2007

10049497 (B.P.A.I. Mar. 26, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EDEL BERNADETTE O’ TOOLE,
STEPHEN ROBERT SCHOFIELD, PAUL MEREDITH
and CHRISTOPER LAWERENCE GUMMER
__________

Appeal 2007-0584
Application 10/049497
Technology Center 1600
__________

ON BRIEF
__________

Before GREEN, LINCK, and LEBOVITZ, Administrative Patent Judges.

Opinion by GREEN, Administrative Patent Judge.
Dissenting opinion by LINCK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1-4 and 8-10. Claim 1 is representative
of the claims on appeal, and reads as follows:
1. A hair care composition comprising:
a) at least one ester derivative of tyrosine;
Appeal No. 2007-0584
Application No. 10/049,497

b) at least one other amino acid compound selected from tryptophan
compounds, histidine compounds and lysine compounds; and
c) a cosmetically acceptable carrier which is suitable for use on hair, said
cosmetically acceptable carrier comprising one or more hair conditioning
agents selected from the group consisting of silicone conditioning agents and
cationic conditioning agents.
Claims 1-4 and 8-10 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Meybeck1 and Kurokawa.2 We reverse.
DISCUSSION
Meybeck is cited for teaching cosmetic conditions containing methyl
tyrosinate, ethyl tyrosinate or stearyl tyrosinate, wherein the compositions
increase the amount of melanin and thus the complexion of the hair
(Answer3 4). In addition, Meybeck teaches that cosmetic compositions
containing tyrosinate salts retard graying of the hair. See id. According to
the Examiner, “Meybeck does not teach at least one other amino acid and a
hair-conditioning agent, as claimed.” Id. at 5.
Kurokawa is cited for teaching a hair cosmetic composition
comprising quaternary ammonium conditioning compounds (cationic
conditioning agents) and an amino acid selected from the group consisting of
glycine, valine, histidine, tryptophan, threonine, etc. Id.

1 Meybeck, US Patent No. 5,290,562, issued March 1, 1994.
2 Kurokawa, JP 57-109711, published July 8, 1982 (as translated).
3 All references to the Answer are to the Examiner’s Answer dated May 5,
2006.
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The Examiner concludes:
Accordingly, it would have been obvious for one of ordinary
skill in the art at the time of the instant invention to combine the
hair treatment composition of [Kurokawa], containing amino
acids and hair conditioning agent, with the composition of
Meybeck, which contains tyrosine methyl ester, . . . because
while Meybeck suggests tyrosinate esters unexpectedly make it
possible to obtain a measurable increase in the amount of
melanin and thus help treat graying of hair, [Kurokawa]
suggests the hair care compositions for better combability and
softness. Thus, both Meybeck and [Kurokawa] teach
compositions for improving hair conditions and accordingly the
motivation to combination [sic] the references flows logically.
Therefore, a skilled artisan would have expected to improve the
hair combing, softness while simultaneously treating the hair
for graying by increased melanin production.

Id. at 5.
Appellants argue that the Examiner has failed to provide a proper
suggestion or motivation for combining the references, and thus has failed to
set forth a prima facie case of obviousness (Br.4 5). We agree, and the
rejection is reversed.
“[T]he Examiner bears the burden of establishing a prima facie case
of obviousness based upon the prior art. ‘[The Examiner] can satisfy this
burden only by showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.’” In re

4 All references to the Brief are to the Supplemental Appeal Brief dated
February 3, 2006.
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Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992)
(citation omitted).
Meybeck teaches (col. 1, ll. 12-17) “cosmetic or pharmaceutical, and
in particular dermatological . . . compositions with pigmenting activity,
capable of being used to accelerate the tanning of the skin, improve the
complexion or retard the appearance of grey hair.” Meybeck teaches that
“tyrosine or its derivatives, such as its salts or its esters, make it possible to
obtain a measurable increase in the amount of melanin induced in the skin
by ultraviolet rays when they are incorporated in a hydrated lipid lameller
phase or in liposomes.” Id. at col. 2, ll, 13-18. With respect to retarding the
appearance of grey hair, Meybeck teaches a lotion comprising a gelified
suspension of the tyrosine containing liposomes, which is then applied to the
scalp morning and evening. See id., col. 8, ex. 8.
As noted by the Examiner, Kurokawa teaches at page 2 of the
translation hair cosmetic compositions comprising quaternary ammonium
conditioning compounds (cationic conditioning agents) and an amino acid
selected from the group consisting of glycine, valine, histidine, tryptophan,
threonine, etc. Kurokawa, however, teaches hair cosmetic compositions
“which . . . treat the hair after washing.” Id. at page 2, first full paragraph.
The compositions may be a “rinse type” or a “non-rinse type,” id., and may
be used in products such as a “hair rinse, spraying or dispenser type hair
conditioner, hair lotion, etc.,” id. at 5, second full paragraph. In testing the
composition, a bundle of hairs is shampooed, dried, and then treated with the
composition according to the invention. Id. at 5, section entitled Test
Method.
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As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000) (citations omitted):
A critical step in analyzing the patentability of claims pursuant
to section 103(a) is casting the mind back to the time of
invention, to consider the thinking of one of ordinary skill in
the art, guided only by the prior art references and the then-
accepted wisdom in the field. . . . . Close adherence to this
methodology is especially important in cases where the very
ease with which the invention can be understood may prompt
one “to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the invention taught is used
against its teacher.”

. . .

Most if not all inventions arise from a combination of old
elements. . . . Thus, every element of a claimed invention may
often be found in the prior art. . . . However, identification in
the prior art of each individual part claimed is insufficient to
defeat patentability of the whole claimed invention. . . . Rather,
to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making
the specific combination that was made by the applicant.

In other words, “there still must be evidence that ‘a skilled artisan, . . .
with no knowledge of the claimed invention, would select the elements from
the cited prior art references for combination in the manner claimed.’”
Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361, 1375, 56
USPQ2d 1065, 1075-76 (Fed. Cir. 2000). Contrary to the Examiner’s
assertion, we find nothing on this record to suggest modifying the
compositions of Meybeck and Kurokawa by adding a tyrosine ester to a hair
conditioning product containing a quaternary conditioning compounds
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(cationic conditioning agents) and an amino acid selected from the group
consisting of glycine, valine, histidine, tryptophan, threonine, etc.
Meybeck teaches incorporating tyrosine or its derivatives into a
liposome for the inducement of melanin formation when applied to the skin.
Thus, Meybeck is treating the scalp, not the hair, whereas Kurokawa is
drawn to conditioning the hair.
Moreover, the lotion of Meybeck containing the tyrosine ester needs
to be applied directly to the scalp morning and evening, while the
composition of Kurokawa is a conditioning agent for the hair. Although the
tyrosine ester may reach the scalp if added to a hair conditioner, there is no
evidence of record that hair conditioning agents are also massaged into the
scalp such that sufficient amounts of the tyrosine ester would reach the scalp
and be absorbed by the skin in a quantity sufficient to retard the appearance
of grey hair. Thus, the Examiner has failed to set forth a prima facie case of
obviousness, and the rejection is reversed.
The dissent’s statement that the claims are not limited to applying the
composition to the hair shaft and not the scalp misses the issue. The issue is
whether there was motivation to combine Meybeck with Kurokawa, and for
the reasons set forth above, we find that the combination is improper.
The dissent also asserts that the level of skill in the art of hair care has
not been taken into account. While acknowledging that the product
suggested by the combination may need be massaged into the scalp twice a
day, the dissent argues that the art suggests a combination product that
would provide retardation of the appearance of grey hair as well as
improving combing properties and softness. However, as discussed above,
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Meybeck teaches incorporating tyrosine or its derivatives into a liposome for
the inducement of melanin formation when applied to the skin, and is thus
drawn to the treatment of skin, in this case the scalp. Kurokawa, on the
other hand, is drawn only to conditioning the hair, and in fact tests its
product only on bundles of hair. Thus, we can find no motivation in the
references to suggest the combination except Appellants’ own disclosure.

SUMMARY
Because the examiner has failed to set forth a prima facie case of
obviousness, the rejection is reversed.

REVERSED

)
LORA M. GREEN ) BOARD OF PATENT
Administrative Patent Judge )
) APPEALS AND
)
RICHARD M. LEBOVITZ ) INTERFERENCES
Administrative Patent Judge )
)

LG
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LINCK, Administrative Patent Judge, Dissenting

I respectfully dissent. The Examiner’s rejection should be affirmed
for the reasons given by the Examiner, further elaborated below.
Appellants claim a “hair care composition” comprising “at least one
ester derivative of tyrosine” and “at least one other amino acid compound
selected from tryptophan compounds, histidine compounds and lysine
compounds” and “a cosmetically acceptable carrier . . . suitable for use on
hair . . . comprising one or more hair conditioning agents selected from the
group consisting of silicone conditioning agents and cationic conditioning
agents.” Claim 1.
The Examiner has rejected claims 1-4 and 8-10 under § 103(a) based
on U.S. 5,290,562 (“Meybeck”) and JP 57-109711 (“Hideo”), each directed
to a hair product. Appellants do not dispute that all the claim limitations are
disclosed in these two references, if combined. Rather they argue:
There is no suggestion or motivation to combine the
teachings of Meybeck and Hideo because the composition of
Meybeck addresses a different problem and functions in a
different manner than the composition of Hideo. . . .
. . . Example 8 of Meybeck expressly states that “[t]his
lotion, applied morning and evening to the scalp, retards the
appearance of grey hair (emphasis added [by Appellants]).
Thus, the composition of Meybeck retards the appearance of
grey hair by acting on the scalp. The composition of
Meybeck does not act analogous to . . . a hair coloring
composition which affects the color of the shaft of existing
hair. . . . .
In contrast . . . , the composition of Hideo provides
benefits of improved combing properties and hair softness by
targeting the shaft of the existing hair. . . . The composition
of Hideo can be used as either a rinse-out or leave-in type
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hair cosmetic. However, Hideo fails to teach or suggest
applying the hair cosmetic composition to the . . . scalp such
that benefits would be provided when the composition
penetrates the epidermis. . . [Br. 5-6].
First, Appellants’ arguments do not point to any claim language
limiting the application of the composition to only the hair shaft and not the
scalp. Nor is there any limitation on how many times the composition can
be applied each day. See the claims; see also Answer 6-7.
Second (and perhaps more importantly), Appellants’ arguments ignore
the level of skill in the hair care art. Here, the art would have suggested
making a combination product that would provide retardation of the
appearance of grey hair and improved combing properties and softness.
While such a product would likely require massaging the product into the
scalp and perhaps application twice per day (as was done in Meybeck’s
Example 8 (col. 8, ll. 54-55)), claim 1 does not exclude such treatment.
Thus, given the added benefits of the combination and the clear suggestion
to the skilled artisan on what would be required to use the combination, I
disagree with Appellants that one of ordinary skill in the art would not have
been motivated to combine the hair products of Meybeck and Hideo.
I further note Appellants’ specification states: “The compositions
herein can contain a variety of optional components suitable for rendering
the present compositions more cosmetically or aesthetically acceptable or to
provide them with additional usage benefits.” Spec. at 11. Additionally I
note the “composition may be applied in any suitable manner including, but
not limited to . . . , working the composition onto the substrate [which
includes skin], with the hands and fingers or with a suitable instrument . . . .”
Spec. at 44.
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Thus, the Examiner’s rejection of claims 1-4 and 8-10 should be
affirmed.5

) BOARD OF PATENT
)
NANCY J. LINCK ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES

5 Appellants do not argue the claims separately.
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Intellectual Property Division
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6110 Center Hill Avenue
Cincinnati, OH 45224
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