Ex Parte Peffly et alDownload PDFPatent Trial and Appeal BoardSep 26, 201612338666 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/338,666 12/18/2008 27752 7590 09/28/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Marjorie Mossman Peffly 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. 10272R 5804 EXAMINER MATTISON, LORI K ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARJORIE MOSSMAN PEFFLY, JACQUELINE ELLEN YEE, SEAN MICHAEL RENOCK, and KENDRICK JON HUGHES Appeal2014-006096 Application 12/338,666 Technology Center 1600 Before ERIC B. GRIMES, ULRIKE W. JENKS, and ROBERT A. POLLOCK, Administrative Patent Judges. PERCURIAM DECISION ON APPEAL This is a decision on appeal 1 under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-5, 7-21, and 23-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The Specification states that the "combination of the cationically modified starch polymer with the anionic surfactant system ... provides 1 Appellants identify the Real Party in Interest as The Procter & Gamble Company (App. Br. 1). Appeal2014-006096 Application 12/338,666 enhanced deposition of conditioning agents to hair and/ or skin without reducing cleansing performance" (Spec. 3: 13-15). Claim 1 is representative of the claims on appeal and reads as follows: 1. A personal care composition comprising: a) from about 0.01 wt.% to about 10 wt.% of a water-soluble cationically modified tapioca polymer, wherein said water-soluble cationically modified tapioca polymer has a molecular weight from about 850,000 to about 15,000,000 and a charge density from about 0.2 meq/g to about 5 meq/ g; b) from about 5 wt.% to about 50 wt.% of an anionic surfactant system, said anionic surfactant system comprising at least one anionic surfactant and having an ethoxylate level and an anion level, i) wherein said ethoxylate level is from 2.94 to about 6, and ii) wherein said anion level is from about 1 to about 6; and c) an effective amount of a pyrithione or a polyvalent metal salt of a pyrithione; d) an effective amount of a zinc-containing layered material; and e) a cosmetically acceptable medium. Issue The Examiner has rejected claims 1-5, 7-12, 14--21, and 23-25 under 35 U.S.C. § 103(a) as obvious in view of Schwartz,2 FIRP,3 and Melby4 (Ans. 3-8). The Examiner has also rejected claims 1-5, 7-21, and 23-25 2 Schwartz et al., US 2007/0128147 Al, published June 7, 2007. 3 Salager, FIRP Booklet# E300-A Teaching Aid in Surfactant Science & Engineering in English (2002) ("FIRP"). 4 Melby et al., US 6,365,140 Bl, issued Apr. 2, 2002. 2 Appeal2014-006096 Application 12/338,666 under 35 U.S.C. § 103(a) as obvious in view of Schwartz, FIRP, Melby, and Balastre5 (Ans. 8-11). 6 We will consider these rejections together. The issue presented is: Does the evidence of record support the Examiner's conclusion that the combination of Schwartz, FIRP, and Melby would have made obvious a shampoo composition comprising the polymer and anionic surfactant system having the characteristics recited in claim 1? Findings of Fact 1. Schwartz discloses shampoo compositions comprising "one or more detersive surfactants, a particulate zinc material, a pyrithione or a polyvalent metal salt of a pyrithione, a dispersed gel network phase, and an aqueous carrier" (Schwartz i-f 39). 2. Schwartz discloses that the "detersive surfactant component ... provide[s] cleaning performance to the composition ... [and] comprises anionic detersive surfactant, zwitterionic or amphoteric detersive surfactant, or a combination thereof' (id. i-f 75). 3. Schwartz discloses that anionic detersive surfactant components "include those which are known for use in hair care or other personal care cleansing compositions" (id. i-f 7 6). "The concentration of the anionic 5 Balastre et al., US 2009/0197791 Al, published Aug. 6, 2009. 6 The Examiner also provisionally rejected claims 1-5, 7-21, and 23-25 for obviousness-type double patenting based on application 11/328,302 (Ans. 11-12). 1.JSPTO records show that the '302 application is abandoned, so the provisional double patenting rejection is now moot 3 Appeal2014-006096 Application 12/338,666 surfactant component in the composition ... generally range[ s] from about 2% to about 50%" (id.). 4. Preferred ionic surfactants include "sodium lauryl sulfate or sodium laureth sulfate" (id. i-f 84). 5. Appellants' Specification states that "[e]xamples of anionic surfactants for use in the personal care compositions include ... sodium lauryl sulfate, sodium laureth sulfate," etc. (Spec. 15: 12-16). 6. Schwartz discloses that the shampoo compositions "comprise a dispersed gel network phase comprising a fatty amphiphile. The gel network phase ... provide[ s] conditioning benefits" (Schwartz i-f 91 ). 7. Schwartz discloses that the shampoo compositions "may include a deposition aid ... [to] enhance deposition of the gel network component" (id. i-f 186). "[T]he deposition aid is a cationic polymer" (id. i-f 188). "Concentrations of the cationic polymer in the composition typically range from about 0.05% to about 3%" (id. i-f 189). "Preferred cationic polymers will have cationic charge densities of at least about 0.4 meq/gm ... , more preferably less than about 5 meq/gm" (id.). "The average molecular weight of such suitable cationic polymers will generally be between about 10,000 and 10 million" (id.). 8. Schwartz discloses that useful cationic polymers "include polysaccharide polymers, such as cationic cellulose derivatives and cationic starch derivatives" (id. i-f 196). 9. FIRP discloses that alkyl sulfates are well-known surfactants. "They are excellent foaming and wetting agents, as well as detergents" (FIRP 19, § 3.3). FIRP discloses that alkyl sulfates, i.e., alkyl-ester-sulfates, 4 Appeal2014-006096 Application 12/338,666 "are very common, particularly the dodecyl (or lauryl) sulfate, as a sodium, ammonium or ethanolamine salt, which is the foaming agent found in shampoos, tooth paste, and some detergents" (id. § 3 .3 .1 ). 10. FIRP discloses that alkyl ether sulfates, i.e., alkyl-ethoxy-ester- sulfates, such as sodium laureth sulfate, are similar to alkyl-ester-sulfates except that the "sulfatation is carried out on a[] slightly ethoxylated (2--4 EO groups) alcohol" (id. § 3.3.2). "The presence of the EO groups confer some nonionic character to the surfactant. ... They are used ... in luxury soap, bath creams and shampoos" (id.). "The ethoxylation step results in a mixture of oligomers, and the final product contains species having from 0 to 5 EO groups" (id.). "This allows for a more compact packing of the polar heads at the air-water surface, in spite of the charge, a characteristic which is associated with the excellent foaming ability of these surfactants" (id.). 11. Melby discloses "novel aqueous modified starch solutions ... [that] contain high levels of the modified starch and remain stable such that[,] on standing, the solution does not form a precipitate, become a non pourable gel, separate or spoil" (Melby, Abstract). "The use of the novel aqueous modified starch solutions in a cosmetically acceptable medium for the treatment of a keratin-containing substrate is also disclosed" (id.). 12. Melby discloses that the "starch base from which the cationic modified starch is derived can come from various sources such as potato, com, rice, tapioca or wheat" (id. at col. 7, 11. 65----67). The molecular weight of the modified starch is preferably "about 1,000 to about 1,000,000" (id. at col. 6, 11. 63-65). 5 Appeal2014-006096 Application 12/338,666 13. Melby discloses that the "modified starch conditioning additives are added to hair or skin care product formulations in amounts ranging from about 0.01 to about 20% by weight" (id. at col. 9, 11. 33-35). "They are particularly compatible with anionic surfactant-containing products such as shampoos, generally providing clear formulations without the loss of conditioning properties" (id. at col. 9, 11. 36-40). 14. Melby' s Example 3 discloses a shampoo composition comprising ammonium lauryl sulfate (7 .5% ), ammonium laureth sulfate (17.5%), and a cationic modified starch (0.26%), among other things (id. at col. 13, 1. 50-col. 14, 1. 20, Table 1 ). Principles of Law "[\V]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experhnentation." Jn re Aller, 220 F.2d 454, 456 (CCPA 1955). Analysis The Examiner finds that Schwartz discloses a shampoo composition comprising a cosmetically acceptable medium, such as water, a zinc layered material, a pyrithione, and an anionic surfactant system (Ans. 3--4). The anionic surfactant system is present in a "preferred amount of about 12% to about 22%," and ammonium laureth sulfate and sodium laureth sulfate are anionic surfactants (id. at 4). The Examiner finds that Schwartz discloses water-soluble cationic polymers, "which may be cationic starch derivatives," and which may be included in shampoo compositions in a preferred amount of "from about 0.01 % to about 1.0% ... [and the] cationic charge density of 6 Appeal2014-006096 Application 12/338,666 the polymer is preferably at least about 1.2 meq/g" (id.). The Examiner finds that Schwartz's cationic polymers "have a molecular weight more preferably between 100,000 and about 3 million ... [and] are taught ... to be a deposition aid" (id.). According to the Examiner, Schwartz teaches the "inclusion of more than one cationic polymer in the composition ... [and teaches] polyquatemium-10 ( ... with a cationic charge density of about 1 meq/g) ... in an amount of 0.4% of the composition" (id.). The Examiner finds that Schwartz, in Examples 33-39 and 59---63, "teaches the species, sodium laureth-3 sulfate ... [which has] an ethoxylate level of 3 and an anion level of 1" (id. at 12-13). The Examiner finds that FIRP discloses that "alkyl ether sulfates ... are used in luxury soap, bath creams and shampoos" (id. at 5). The Examiner finds that, according to FIRP, "alkyl ether sulfates comprise up to 5 EO groups which allows more compact packing of the polar heads at the air-water surface[,] which is associated with their excellent foaming ability" (id.). The Examiner finds that Melby "exemplifies a shampoo comprising an anionic surfactant system ... [which] comprises the anionic surfactant, ammonium laureth sulfate in an amount of 17.50 wt.%" (id. at 6). The Examiner finds that Melby discloses the inclusion of a water-soluble cationically modified starch in the shampoo, which may be derived from tapioca (id.). The Examiner finds that Melby discloses that an "average molecular weight [for the starch] is 1,000 to about 10,000,000" (id.). The Examiner finds that the adjustment of "conventional working conditions (e.g. determining [the] result effective ethoxylate level of the ammonium laureth sulfate and sodium laureth sulfate surfactants) is routine 7 Appeal2014-006096 Application 12/338,666 optimization which is within the skill of an ordinary artisan" (id. at 7). The Examiner reasons that, in view of FIRP, the ordinary artisan would recognize that "alkyl ether sulfates may have an ethoxylate level from 2--4, with ethoxylate levels up to 5 being associated with excellent foaming ability" (id.). The Examiner concludes that it would have been obvious to have modified Schwartz's composition by substituting Melby's "cationically modified tapioca starch polymer ... for the cationically modified starch taught by SCHWARTZ because ... [they] are functionally equivalent cationically modified starches taught for use in shampoos" (id.). The Examiner reasons that the "skilled artisan would have been motivated to use ... cationically modified tapioca starch polymer" because Melby teaches shampoos with cationically modified tapioca starch (id.). We agree with the Examiner's reasoning and conclusion. Appellants argue that the "use of a particular ethoxylate and anion level in a surfactant system (which comprises an anionic surfactant) in combination with a particular cationic tapioca polymer (having a certain molecular weight and charge density) has no finite number of predictable solutions with anticipated successes" (App. Br. 4). Appellants argue that there are many suppliers of anionic surfactant materials, and "the ethoxylation distribution of these materials varies significantly," and they are "selecting a small portion of the large number of ethoxylation values available" (id.). Appellants also argue that there are many "cationic polymers (with varying properties) which can be selected from to combine together with the claimed surfactant system" (id.). 8 Appeal2014-006096 Application 12/338,666 Appellants' arguments are not persuasive. Schwartz suggests a shampoo composition that comprises an anionic surfactant system, a cationic polymer as a deposition aid, and a zinc-containing layered material, among other things, wherein the anionic surfactant system and cationic polymer are present in the amounts recited in claim 1 (FFs 1-3 and 7). Schwartz discloses that the cationic polymer may be a cationic starch derivative with a molecular weight of 10,000 to 10 million and a charge density of 0.4 meq/g to 5 meq/g (FFs 7 and 8). Schwartz discloses that a preferred anionic surfactant is sodium laureth sulfate (FF 4). The Examiner has pointed to these examples of Schwartz as demonstrating a shampoo composition with an anionic surfactant system with an anion level of 1 and ethoxylation level of 3 (Ans. 13), and Appellants have not provided any argument, evidence, or reasoning to rebut the Examiner's assertions (see App. Br. 3-7). Thus, Schwartz suggests a shampoo composition comprising all the components of claim 1 except for the cationic starch polymer being tapioca. FIRP confirms Schwartz's disclosure that alkyl ether sulfates, with ethoxylation levels within the range of claim 1, are known for use in shampoo compositions and suggests that the ethoxylation level affects the foaming properties of the shampoo (FF 10). Melby discloses the use of cationically modified tapioca starch as a cationic polymer in shampoos and discloses that such starches have particular compatibility with anionic surfactants (FF 11-14). Since the cited references disclose that the components of the personal care composition are all known for use in shampoo compositions, in the amounts claimed, we agree with the Examiner that the personal care composition of claim 1 would 9 Appeal2014-006096 Application 12/338,666 have been a predictable variation of the shampoo compositions disclosed in Schwartz. Appellants argue that Melby does not teach "the ethoxylation level of the ammonium laureth sulfate surfactant" (App. Br. 4). Appellants argue that although "optimum or workable ranges may be determined by routine experimentation ... the parameter being optimized must first be recognized as a result-effective variable ... which achieves a recognized result" (id. at 5). Appellants argue that none of Schwartz, FIRP, or Melby "teach or determine result effective ethoxylate level[s] of the ammonium laureth sulfate and sodium laureth sulfate surfactants of the present invention" (id.). Appellants' arguments are not persuasive. The Examiner has cited Schwartz and FIRP, rather than Melby, as suggesting an anionic surfactant system with the ethoxylation level recited in claim 1. FIRP discloses that alkyl-ethoxy-ester-sulfates, such as sodium laureth sulfate, are used in shampoos (FF 10) and that slightly ethoxylated (i.e., 2--4 EO groups) alkyl sulfates allow for more compact packing of the polar heads at the air-water surface, which provides excellent foaming ability for these surfactants (FF 10). Thus, we agree with the Examiner that it would have obvious to one of skill in the art to optimize the anionic surfactant system, including amounts and types of surfactants and their ethoxylation levels, to provide the desired cleaning and foaming properties. Appellants argue that the instant Specification discloses that, when "considering the performance characteristics of a personal care composition, ... it is necessary to optimize the levels and types of surfactants" (App. Br. 5---6). Appellants argue that the anionic surfactant system of claim 1 is 10 Appeal2014-006096 Application 12/338,666 optimized so that the combination of "an anionic surfactant system with the cationically modified starch polymers ... provide[s] enhanced deposition of conditioning agents to hair and/or skin without reducing cleansing performance" (id. at 6). Appellants argue that none of FIRP, Schwartz, or Melby discloses "the relationship between the result-effective variable of ... varying the level of ethoxylate and the level of anion in order to deliver coacervateformation, wet ... [and] dry conditioning performance, and conditioning ingredient deposition on hair" (id. at 7). The Examiner responds that "the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant" (Ans. 16). The Examiner states that Schwartz discloses "an ethoxylate level of 3 for the sodium laureth-3 sulfate taught and embodied in his invention" and that FIRP discloses that ethoxylation levels within the range recited in claim 1 provide excellent foaming ability (id. at 17). We agree with the Examiner's reasoning and conclusion, and also note that Schwartz discloses that the anionic surfactant system is optimized for cleaning and lather performance (FF 3). Appellants argue that the obviousness rejection is "a hindsight reconstruction of the prior art, impermissibly based on the Appellants' disclosure (and not on only the knowledge which was within the level of ordinary skill in the art, at least as of the application's effective filing date)" (App. Br. 7). 11 Appeal2014-006096 Application 12/338,666 We are not persuaded. As discussed above, Schwartz discloses or suggests all of the components of the composition of claim 1, including a cationic polymer that can be a cationic starch polymer, but does not disclose a cationically modified tapioca starch polymer. Melby discloses that a cationically modified tapioca starch polymer can be used in shampoo compositions and provides advantages for use with anionic surfactant systems. Thus, we agree with the Examiner that the obviousness rejection relies on the cited prior art, rather than impermissibly relying on the disclosure in the Specification. Thus, we affirm the rejection of claim 1 as being obvious in view of Schwartz, FIRP, and Melby. Claims 2-5, 7-12, 14--21, and 23-25 were not argued separately and therefore fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner has also rejected claims 1-5, 7-21, and 23-25 under 35 U.S.C. § 103(a) as obvious in view of Schwartz, FIRP, Melby, and Balastre (Ans. 8-11). For this rejection, Appellants present the same arguments as discussed above (App. Br. 8-10). This argument is not persuasive for the reasons discussed above, and we affirm it for the reasons given by the Examiner and as discussed above. Conclusion of Law The evidence of record supports the Examiner's conclusion that the combination of Schwartz, FIRP, and Melby would have made obvious a shampoo composition comprising the polymer and anionic surfactant system having the characteristics recited in claim 1. 12 Appeal2014-006096 Application 12/338,666 SUMMARY We affirm the rejection of claims 1-5, 7-21, and 23-25 under 35 U.S.C. § 103(a). 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 13 Copy with citationCopy as parenthetical citation