Ex Parte Rondeau

Board of Patent Appeals and Interferences

Nov 25, 2003

09287176 (B.P.A.I. Nov. 25, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte CHRISTINE RONDEAU

Appeal No. 2003-1308
Application No. 09/287,176

HEARD: November 5, 2003

Before KIMLIN, WARREN and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-42.
A copy of illustrative claim 1 is appended to this decision.
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Application No. 09/287,176
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The examiner relies upon the following references as
evidence of obviousness:
Cotteret et a. (Cotteret) 5,735,908 Apr. 07, 1998
Kao Corporation DE 29512302 Jan. 16, 1997
(German Patent)
Möckli WO 95/01772 Jan. 19, 1995
(PCT International Application)
Appellant's claimed invention is directed to a composition
for dying keratin fibers comprising at least one of the recited
cationic direct dyes and at least one of the claimed cationic or
amphoteric substantive polymers. According to appellant's
specification, a first type of dyeing in the hair sector is semi-
permanent or temporary dyeing, also known as direct dyeing. A
second type is permanent or oxidation dyeing with "oxidation"
dyes comprising oxidation dye precursors and couplers. At the
time of filing the present application, it was a known practice
to vary the shades obtained with oxidation dyes by adding direct
dyes thereto. Known cationic direct dyes have the disadvantage
of leading to insufficient colorations, both regarding the
homogeneity of the color distributed among the fiber and the
staying power. Appellant's specification relates that:
Now, after considerable research conducted in this
area, the Inventor has discovered that it is possible
to obtain novel compositions for dyeing keratin fibers
capable of giving colorations that are less selective
Appeal No. 2003-1308
Application No. 09/287,176
1 The examiner's obviousness-type double patenting rejection
of the appealed claims has been withdrawn in view of appellant's
submission of a terminal disclaimer.
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and that show good resistance to the various attacking
factors to the hair, by combining at least one specific
cationic or amphoteric substantive polymer with at
least one cationic direct dye known in the art and of
formulae respectively defined below (page 2 of
specification, penultimate paragraph).
Appealed claims 1-42 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cotteret in view of Mockli. Claims 1-23,
32-36 and 41-42 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kao in view of Mockli.1
Appellant submits at page 4 of the principal brief that,
with respect to the rejection over Cotteret in view of Mockli,
claims 1-42 stand or fall together, and with respect to the
rejection over Kao in view of Mockli, claims 1-23, 32-36 and
41-42 stand or fall together. Consequently, all the appealed
claims stand or fall together with claim 1, and, accordingly, we
will limit our review to the examiner's rejections of claim 1.
We have thoroughly reviewed appellant's arguments for
patentability. We are in complete agreement with the examiner,
however, that the claimed subject matter would have been obvious
to one of ordinary skill in the art within the meaning of § 103
in view of the applied prior art. Accordingly, we will sustain
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Application No. 09/287,176
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the examiner's rejections for essentially those reasons expressed
in the Answer, and we add the following primarily for emphasis.
We consider first the examiner's rejection of all the
appealed claims over Cotteret in view of Mockli. There is no
dispute that Cotteret, like appellant, teaches a composition for
dyeing keratin fibers comprising cationic or amphoteric
substantive polymers within the scope of the appealed claims and
direct dyes. Cotteret does not teach the specific cationic
direct dyes embraced by the appealed claims. However, there is
also no dispute that Mockli teaches compositions for dyeing
keratin fibers comprising the presently claimed cationic direct
dyes, and teaches that such cationic direct dyes
can be used to achieve in a very simple way and under
gentle conditions very deep dyeings having excellent
light, shampooing and crock fastness properties. Owing
to their extremely clean shades, they also extend the
range of possible mixed shades considerably, especially
in the direction of the increasingly important
brilliant fashion colours.
(Paragraph bridging pages 1 and 2). Accordingly, based on the
collective teachings of Cotteret and Mockli, we find no error in
the examiner's reasoning that it would have been prima facie
obvious for one of ordinary skill in the art to select the
cationic direct dyes of Mockli for use in the dyeing compositions
of Cotteret for the advantages described in Mockli. Since
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Cotteret teaches that direct dyes, in general, may be added to
the oxidation dye compositions comprising the presently claimed
cationic or amphoteric substantive polymers, and Mockli also
teaches that appellant's cationic direct dyes may be formulated
with cationic conditioning polymers, we are satisfied that one of
ordinary skill in the art would have reasonably expected that the
cationic direct dyes of Mockli would be compatible in the dye
compositions of Cotteret.
Appellant contends that "Cotteret provides motivation only
to use a substantive amphoteric or cationic polymer with an
oxidation dye, not with a direct dye" (page 11 of principal
brief, first paragraph). However, since Cotteret expressly
teaches the addition of direct dyes to the dye composition, we
agree with the examiner that appellant's argument is without
merit. Mockli provides the motivation for one of ordinary skill
in the art following the teachings of Cotteret to select the
specific direct dyes used by appellant.
We are also not persuaded by appellant's argument that
"Mockli does not teach or suggest using its direct dyes in an
oxidative composition" (id., second paragraph), since Mockli
discusses certain reservations and toxicological risks associated
with using oxidation compositions. It is Cotteret, not Mockli,
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who provides the teaching of using direct dyes in composition
with oxidation compositions and, furthermore, Mockli provides no
teaching that the cationic direct dyes cannot be used in an
oxidation composition. Hence, we do not subscribe to appellant's
argument that Mockli presents a "teaching away" from oxidation
dyeing but, rather, Mockli teaches that effective dyeing can be
achieved without the known disadvantages of oxidation dyes by
using the disclosed direct dyes. We are satisfied that one of
ordinary skill the art would have found it obvious to use the
direct dyes of Mockli in composition with oxidation dyes with the
expectation of experiencing the disadvantages attendant with the
use of oxidation dyes. We note that appellant has presented no
argument, let alone objective evidence, which demonstrates that
the claimed compositions, which may include oxidation dyes, do
not exhibit the toxicological risks discussed by Mockli.
We now turn to the rejection over Kao in view Mockli.
Appellant does not dispute the examiner's factual determination
that Kao, like appellant, discloses a composition for dyeing
keratin fibers comprising direct dyes and substantive
conditioning polymers claimed by appellant. Kao does not
disclose appellant's cationic direct dyes. However, for the
reasons discussed above, we concur with the examiner that it
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would have been obvious for one of ordinary skill in the art to
select the cationic direct dyes of Mockli for use in the dyeing
composition of Kao.
It is appellant's argument that Kao "suggests improving
stability of dyeing compositions using a hydroxy-C2-C4-alkyl guar
gum together with a dye compatible together with that guar gum"
(page 6 of principal brief, first paragraph), and that Kao lists
42 direct dyes that meet this requirement, but "none of the dyes
in this list falls within the scope of the presently claimed
cationic direct dyes (page 6 of principal brief, second
paragraph). However, as explained by the examiner and
acknowledged by appellant, Kao provides a general teaching that
all direct-acting hair dyes may be used and, significantly, Kao
further teaches that "the cationic (basic) dyes are particularly
preferred since their stability and dye uptake properties are
especially enhanced by the addition of the guar gum derivative
according to the invention" (page 2 of translation, fourth
paragraph, emphasis added). Hence, although the list of 19
cationic dyes provided by Kao does not include the specifically
claimed dyes, we agree with the examiner that Kao's character-
ization of cationic dyes, in general, as particularly preferred
would have clearly suggested the particular cationic direct dyes
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disclosed by Mockli. We find that one of ordinary skill in the
art would have found it obvious to employ the direct dyes of
Mockli in the composition of Kao for the purpose of achieving the
advantages described by Mockli and, based on the Kao disclosure
that cationic dyes are particularly preferred because their
stability and dye uptake are enhanced by the addition of guar
gum, one of ordinary skill in the art would have reasonably
expected that the direct dyes of Mockli would be compatible with
the guar gum of Kao's dyeing composition. Appellant has advanced
neither argument nor evidence demonstrating that one of ordinary
skill in the art would have had any expectation that the direct
dyes of Mockli would be incompatible with the guar gum of Kao.
While appellant contends that Kao "does not fairly suggest that
all dyes will work with its guar gums" (page 7 of principal
brief, last paragraph), Kao does teach that cationic dyes are
particularly preferred.
As a final point, we note that appellant bases no argument
upon objective evidence of nonobviousness which would serve to
rebut the inference of obviousness established by the applied
prior art.
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In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
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Application No. 09/287,176
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Finnegan, Henderson, Farabow,
Garrett & Dunner
1300 I St., N.W.
Washington, DC 20005-3315
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APPENDIX
1. A composition for dyeing keratin fibers, said
composition comprising, in a medium suitable for dyeing,
(i) at least one cationic direct dye chosen from
cationic direct dyes of formula (I), (II), (III) and (III')
below:
wherein, in said formula (I):
D is chosen from a nitrogen atom and a -CH group,
R1 and R2 are identical or different and are chosen from a
hydrogen atom, a 4'aminophenyl radical and a C1-C4 alkyl radical
which is unsubstituted or substituted with a radical chosen from
-CN, -OH and -NH2, or R1 and R2 form, with a carbon atom of the
benzene ring, a heterocycle containing at least one heteroatom
chosen from oxygen and nitrogen and which is unsubstituted or
substituted with at least one C1-C4 alkyl radical;
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R3 and R'3 are identical or different and are chosen from a
hydrogen atom, a halogen atom chosen from chlorine, bromine,
iodine and fluorine, a cyano group, a C1-C4 alkyl radical, a
C1-C4 alkoxy radical, and an acetyloxy radical;
X- represents an anion;
A is a group chosen from structures A1 to A19 below:
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and
wherein
R4 represents a C1-C4 alkyl radical which is unsubstituted or
substituted with a hydroxyl radical; and
R5 represents a C1-C4 alkoxy radical;
with the provisos that
when D is -CH, A is chosen from A4 and A13, and R3 is other
than an alkoxy radical, then R1 and R2 do not simultaneously
represent a hydrogen atom; and
when D represents N, A is chosen from A1-A3, A5-A12 and
A14-A19;
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wherein, in said formula (II):
R6 is chosen from a hydrogen atom and a C1-C4 alkyl radical;
R7 is chosen from a hydrogen atom, an alkyl radical which is
unsubstituted or substituted with a -CN radical or with an amino
group, and a 4'-aminophenyl radical, or R7 forms, with R6, a
heterocycle containing at least one heteroatom chosen from oxygen
and nitrogen and which is unsubstituted or substituted with a
C1-C4 alkyl radical;
R8 and R9 are identical or different and are chosen from a
hydrogen atom, a halogen atom, a C1-C4 alkyl radical, a C1-C4
alkoxy radical, and a -CN radical;
X- is an anion;
B is a group chosen from structures B1 to B6 below:
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wherein
R is a C1-C4 alkyl radical;
R11 and R12, which are identical or different, are chosen from
a hydrogen atom and a C1-C4 alkyl radical;
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wherein, in said formulae (III) and (III'):
R13 is chosen from a hydrogen atom, a C1-C4 alkoxy radical, a
halogen atom, and an amino radical;
R14 is chosen from a hydrogen atom and a C1-C4 alkyl radical, or R14
forms, with a carbon atom of the benzene ring, a heterocycle
which is optionally oxygenated and/or substituted with at least
one C1-C4 alkyl group;
R15 is chosen from a hydrogen atom and a halogen atom;
R16 and R17, which are identical or different, are chosen from a
hydrogen atom and a C1-C4 alkyl radical;
D1 and D2, which are identical or different, are chosen from a
nitrogen atom and a -CH group;
m = 0 or 1;
with the proviso that when R13 is an unsubstituted amino
group, then D1 and D2 simultaneously are a -CH group and
m = 0;
X- is an anion; and
E is a group chosen from structures E1 to E8 below:
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wherein R' is a C1-C4 alkyl radical;
with the proviso that when m = 0 and D1 is a nitrogen atom, then E
can also be a group of structure E9 below:
wherein R' is a C1-C4 alkyl radical;
with the further proviso that in said formula (III) when D1 and D2
are simultaneously a nitrogen atom, m = 0, R13 is an amino radical
and R15 is a hydrogen atom, then E is chosen from E3 to E5, E7 and
E8; and
(ii) at least one cationic or amphoteric substantive polymer
chosen from:
(a) cellulosic cationic derivatives with the exception of
polymeric quaternary ammonium salts of hydroxyethyl
cellulose reacted with a trimethyl ammonium substituted
epoxide;
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(b) copolymers of dimethyldiallylammonium halide and of
(meth)acrylic acid;
(c) methacryloyloxyethyltrimethylammonium halide homopolymers
and copolymers;
(d) polyquaternary ammonium polymers chosen from:
- polymers of repeating units having formula (IV) below:
- polymers of repeating units having formula (V) below:
- and polymers of repeating units having formula (VI) below:
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wherein p represents an integer ranging from 1 to 6
approximately, D is absent or is a group -(CH2)r-CO-
wherein r represents a number equal to 4 or 7; and
(e) vinylpyrrolidone copolymers containing cationic units.