Ex Parte Snyder et alDownload PDFPatent Trial and Appeal BoardNov 1, 201713852467 (P.T.A.B. Nov. 1, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/852,467 03/28/2013 Michael Albert Snyder 12409L 1270 27752 7590 11/03/2017 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER ZHANG, YANZHI ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 11/03/2017 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 MICHAEL ALBERT SNYDER, JOSEPH HARRY JANSEN, and ROLAND WAGNER Appeal 2016-006674 Application 13/852,4671 Technology Center 1600 Before FRANCISCO C. PRATS, RYAN H. FLAX, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to a hair conditioning composition, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Shampooing, combing, and chemical treatments can damage human hair. (Spec. 1.) “Such damaged hair is often left hydrophilic and/or in a rough condition . . . compared to non-damaged or less damaged hair.” (Id.) 1 Appellant is the Applicant, The Proctor & Gamble Co., which, according to the Brief, is the real party in interest. (Br. 1.) Appeal 2016-006674 Application 13/852,467 “Silicone polymers consisting of blocks of silicones and alkylene oxide (e.g., ethylene oxide and propylene oxide groups (EO/PO)) linked with amine- and quat- functional groups have been used to counteract the hydrophilic nature of damaged hair.” (Id.) “However, these materials generally have high viscosities . . . [and] [i]n order to achieve the desired conditioning benefits,. . . [they] have traditionally been used in blends with silicone copolyols or other diluents or solvents.” (Id.) Appellant’s invention is directed to lower viscosity silicone polymers that provide conditioning benefits “while eliminating the need for a silicone blend.” (Id. at 2.) Claims 1—10 and 12—132 are on appeal. Claim 1 is representative and reads as follows: 1. A hair conditioning composition comprising: a) a silicone polymer comprising: i. one or more quaternary groups; ii. at least one silicone block comprising greater than 200 siloxane units; iii. at least one polyalkylene oxide structural unit; and iv. at least one terminal ester group wherein said silicone polymer has a viscosity of from about 500 to about 20,000 mPa.s, and b) a gel matrix comprising: i. a cationic surfactant; ii. a high melting point fatty compound; wherein the high melting point fatty compound has a melting point of about 25°C or higher, and is selected from the group consisting of fatty alcohols, fatty acids, fatty alcohol 2 Claim 11 was canceled by amendment dated May 28, 2015. (Ans. 3.) 2 Appeal 2016-006674 Application 13/852,467 derivatives, fatty acid derivatives, and mixtures thereof; and iii. an aqueous carrier. (Br. 6.) The following ground of rejection by the Examiner is before us on review: Claims 1—10 and 12—13 under 35 U.S.C. § 103 as unpatentable over Torgerson3 and Gelest.4 DISCUSSION The Examiner finds that Torgerson teaches a hair conditioning composition that includes the claimed gel matrix and a silicone polymer that includes quat-groups, a silicone block comprising greater than 200 siloxane units, at least one polyalkylene oxide structural unit, and at least one terminal ester. (Ans. 3—4.) Regarding the terminal ester, the Examiner explains that, in one of the embodiments, the silicone polymer is disclosed to be a silicone block copolymer that comprises at least one polyalkylene oxide that has a general structural unit of-A-E-A’- or -A’-E-A-, among others, where A is selected from the group consisting of-CH2C(0)0-, -CH2CH2C(0)0-, etc.; A’ is selected from the group consisting of —CH2C(0)0-, —CH2CH2C(0)0-, etc.; E is a polyalkylene oxide group selected from the group consisting of— [CH2CH20]q— [CH2CH(CH3)0]r—, and-[OCH(CH3)CH2]r- [OCH2CH2]q—; wherein q is from about 1 to about 200; wherein r is from about 0 to about 200. . . . 3 Torgerson et al., US 2007/0041929 Al, published Feb. 22, 2007. 4 Gelest, Inc., Conventional Silicone Fluids, pp. 462-469, available at http://www.azmax.co.jp/cnt_catalog_chemical/pdf/attach_20110517_11275 0.pdf, (last visited Jan. 23, 2015). 3 Appeal 2016-006674 Application 13/852,467 (Id. at 4—5.) The Examiner further notes that Torgerson discloses that the terminal position oxygen atom of A binds to the terminal CH2 group of E and the terminal position carbonyl carbon of A’ binds to the terminal oxygen of E forming terminal ester groups in each case. (Id. at 5.) The Examiner further finds that Torgerson discloses that the silicone compounds described therein have a viscosity in the range of from 1,000 to about 2,000,000 centistokes, which is equivalent to 1,000 to about 2,000,000 mPA. (Id.) That range, the Examiner finds, encompasses the range recited in the claims. (Id.) The Examiner notes that viscosity of a polymer is an inherent property that depends on its molecular weight. (Id. at 7 (citing Gelest.)) The Examiner finds that, in light of the disclosed viscosity range in Torgerson as compared to the narrower claimed range, the claimed viscosity limitation is prima facie obvious and that one of ordinary skill in the art would have found it obvious to determine the degree of polymerization to optimize the desired viscosity of the polymer such that it would have been within the claimed range. (Id. at 6—7.) We agree with the Examiner’s factual findings and conclusion that claim 1 would have been obvious in light of the above teachings of the prior art. Appellant argues that the Examiner has not provided motivation as to why one of ordinary skill in the art would have modified the structure of the Torgerson silicone polymers to arrive at the claimed structure with a viscosity in the claimed range. (Br. 3). We do not find this argument persuasive. As the Examiner explained, Torgerson teaches a silicone structure as claimed that includes a terminal ester. (See Torgerson || 29— 30.) Appellant’s declarant, inventor Michael Snyder, does not disagree with 4 Appeal 2016-006674 Application 13/852,467 the Examiner’s determination. (Declaration of Michael Snyder dated May 28, 2015.) While Mr. Snyder notes that the structures described in Torgerson contain terminal amine/quatemary amine groups, he nevertheless agrees that the claimed silicone compositions are a “sub-set of the silicone polymers described in Torgerson.” (Snyder Declaration at 2.) If the claimed structures are a sub-set of what is disclosed in Torgerson, then Torgerson necessarily discloses a genus of silicone compositions that includes the claimed structures. We agree with the Examiner that one of ordinary skill in the art would have known that the viscosity of the silicone composition would depend on the degree of polymerization. Moreover, we agree with the Examiner that in light of the disclosure in Torgerson of silicone compositions with one or more quaternary groups, at least one silicone block comprising greater than 200 siloxane units, at least one polyalkylene oxide structural unit, and at least one terminal ester, and where the compositions have a viscosity range that overlaps with the claimed range, such disclosure is sufficient to render the claimed invention reciting a narrower viscosity range prima facie obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) (“Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. . . . The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). Appellant argues that, assuming the claimed composition is prima facie obvious from Torgerson’s disclosure, Appellant has provided evidence 5 Appeal 2016-006674 Application 13/852,467 of unexpected results. (Br. 3.) However, we agree with the Examiner that the evidence of record fails to establish unexpected results. Appellant has not shown that the particular viscosity range claimed is unexpected relative to the disclosed prior art range. The viscosity range disclosed by Torgerson is 1,000 to 2,000,000 centistokes (Torgerson | 59), which is the same range in mPa—the claimed viscosity units, as discussed above. Mr. Snyder’s Declaration demonstrates that a compound within the scope of the claim, which is a compound within the genus disclosed in Torgerson, has a viscosity of 5370 mPa. This viscosity value is in the range that Torgerson indicates “[t]he silicone compounds [described] will preferably have.” (Id. ) While Mr. Snyder contends that the subset of the claimed silicone compositions has “dramatically lower viscosities,” (Snyder Declaration at 2), the exemplified compound within that subset does not have a viscosity that is unexpected from the Torgerson disclosure. Cf In re Petering, 301 F.2d 676, 679-680, 682—683 (CCPA 1962) (finding claimed species non- obvious based on property because the prior art did not disclose any relevant property of the generic disclosed compound with respect to the demonstrated “negative influence on growth” only that similar compounds had a “positive vitamin like activity” having a “very decidedly influence on growth”). Thus, Appellant’s assertion of unexpected results of the claimed subset of compounds disclosed in Torgerson in light of the viscosity shown to be possessed by a species that falls within the claimed subset is not supported. Appellant contends in addition that it is unexpected that the compounds have low viscosity while also having large siloxane units and thus one does not sacrifice conditioning performance. (Br. at 4.) However, Torgerson describes a genus of silicone compositions that have the claimed 6 Appeal 2016-006674 Application 13/852,467 greater than 200 siloxane units in addition to having at least one terminal ester and arriving at a composition that is within the claimed viscosity range. In particular, Torgerson states that there has now been provided a conditioning composition comprising a silicone polymer containing quaternary groups, and a gel matrix. The silicone polymer comprises silicone blocks with greater than about 200 siloxane units. And the gel matrix comprises a cationic surfactant, a high melting point fatty compound, and an aqueous carrier. (Torgerson | 8). Moreover, Torgerson further explains that the siloxane units in the embodiment in which the polysiloxane compound has a polyakylene oxide structural unit that includes at least one terminal ester, are “greater than about 200, preferably greater than about 250, more preferably greater than about 300; preferably less than about 700, more preferably less than about 500.” {Id. ]Hf 30, 32.) Thus, Torgerson describes silicone compositions with at least one terminal ester that includes between 300 and 500 siloxane units. Appellant’s unexpected results evidence is a comparison of a compound of the prior art that has a silicone block length of 432 and a compound within the scope of the invention that has a silicone block length of 425. (Snyder Declaration at 3.) The silicone block length of the compound within the scope of the invention is within the preferred range disclosed in Torgerson for a compound that includes at least one terminal ester. Thus, there is insufficient evidence to establish anything unexpected with respect to the silicone block lengths when including at least one terminal ester in the composition. We note that Mr. Snyder explains that the lower viscosity “leads to significant benefits in performance.” (Snyder Declaration at 3.) However, Mr. Snyder does not contend, nor provide evidence, that the performance is an unexpected result. Indeed, one would 7 Appeal 2016-006674 Application 13/852,467 expect that the conditioning benefit provided by the number of siloxane units which are similar in the two exemplified products would be the same in light of the Specification, which notes that “[sjilicone blocks [of silicone polymers consisting of blocks of silicones and alkylene oxides] are responsible for conditioning and lubrication performance,” and “optimum conditioning performance has been observed for silicone blocks of greater than 200 D units” (Spec. 1:19—24). We note that Mr. Snyder also explains that the lower viscosity “leads to significant benefits in . . . cost, and simplicity in handling and processing.” (Snyder Declaration at 3.) However, Mr. Snyder does not contend, nor provide evidence, that the cost, and simplicity in handling and processing are benefits that are unexpected. Appellant’s Brief contends that “it is also unexpected that the lower viscosity silicones have a benefit in the product.” (Br. 3 (emphasis added).) To the extent that this argument may be deemed to relate to cost, and simplicity in handling and processing benefits rather than the “conditioning benefit” from the number of siloxane units discussed above, we note that, as just discussed, Mr. Snyder does not contend that those results are unexpected. Thus, Appellant’s argument is deemed to be unsupported attorney argument is not evidence.” Icon Health & Fitness v. Strava, 849 F.3d 1034, 1043 (Fed. Cir. 2017) (citing See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[UJnsworn attorney argument... is not evidence and cannot rebut. . . other admitted evidence . . . .”)). Consequently, we find there is insufficient evidence to establish unexpected results related to performance, cost, and simplicity in handling and processing. 8 Appeal 2016-006674 Application 13/852,467 For the foregoing reasons, Appellant does not persuade us that the Examiner erred in rejecting claim 1 for obviousness over Torgerson and Geleste. Appellant does not present arguments addressing additional limitations in claims 2—10 and 12—13. Thus, we find that claims 2—10 and 12—13 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)( 1 )(iv). SUMMARY We affirm the rejection of claims 1—10 and 12—13 under 35 U.S.C. § 103 as unpatentable over Torgerson and Gelest. 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 9 Copy with citationCopy as parenthetical citation