Ex Parte Staudigel et al

Patent Trial and Appeal Board

Feb 23, 2016

11328302 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111328,302 0110912006
27752 7590 02/25/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
James Anthony Staudigel
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.
10272 5029
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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 JAMES ANTHONY STAUDIGEL
and MARJORIE MOSSMAN PEFFLY
Appeal2013-003631
Application 11/328,302
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 1-3, 5-13, 15, and 16. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as The Procter & Gamble Company
(App. Br. 1 ).
Appeal2013-003631
Application 11/328,302
STATEMENT OF THE CASE
The Specification discloses "personal care compositions comprising
an anionic surfactant system and a cationically modified starch polymer"
(Spec. 1:8-9). The Specification states that "[t]he combination of the
cationically modified starch polymer with the anionic surfactant system ...
provides enhanced deposition of conditioning agents to hair and/or skin
without reducing cleansing performance" (id. at 3: 13-16).
Claim 1 is representative of the claims on appeal and reads as follows:
1. A shampoo 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 starch polymer has a molecular weight from about
250,000 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,
Issue
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) a cosmetically acceptable medium.
The Examiner has rejected claims 1-3, 5, 7-13, 15, and 16 under 35
U.S.C. § 103(a) as obvious in view ofMelby,2 Wells, 3 and Polyquatemium-
114 (Ans. 3). 5 The Examiner has also rejected claims 1-3, 5-13, 15, and 16
2 Melby et al., US 6,365,140 Bl issued April 2, 2002.
3 Wells, US 5,573,709 issued November 12, 1996.
4 Polyquatemium - PQ-11 Nanhang Industrial Co., Ltd.
www.nhpvp.com/pq-11.html (2006).
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Application 11/328,302
under 35 U.S.C. § 103(a) as obvious in view of Melby, Wells, Schrader,6
and Polyquatemium-11 (id.). We will consider these rejections together.
The issue presented is: Has the Examiner established by a
preponderance of the evidence that the combination of Melby and Wells
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. The Examiner finds that Melby discloses a shampoo
comprising anionic and nonionic surfactants (Office Action mailed Oct. 5,
2011 (Non-Final Rej.) at 5). "MELBY teaches inclusion of a cationic
modified starch in the shampoo" (id. at 6 (citing Melby, Example 3) ).
2. Melby discloses "novel aqueous modified starch solutions" and
their use "in a cosmetically acceptable medium for the treatment of a
keratin-containing substrate" (Melby, Abstract).
3. Melby discloses that the molecular weight of the modified
starch "is preferably ... about 1,000 to about 1,000,000 with a weight
average molecular weight of about 5,000 to about 500,000 being most
preferred" (id. at col. 6, 11. 63---67).
4. Melby discloses that its "invention is preferably directed to a
cationic modified starch" (id. at col. 7, 11. 38-39), where the "starch base
5 The Examiner cites Polyquatemium-11 only with respect to dependent
claim 7. For the reasons discussed below, we need not address the teachings
of Polyquatemium-11.
6 Schrader et al., US 6,004,544 issued December 21, 1999.
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Application 11/328,302
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).
5. 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).
6. Melby discloses that its shampoo compositions "contain
anionic, cationic, nonionic and/or amphoteric surface-active agents typically
in an amount from 3-50% by weight, preferably 3-20%" (id. at col. 12,
11. 43--45).
7. Melby exemplifies a shampoo composition comprising
ammonium lauryl sulfate (7.5%), ammonium laureth sulfate (17.5%), a
cationic modified starch (0.26% ), and water, among other things (id. at col.
13, 1. 50-col. 14, 1. 20 (Example 3)).
8. The Examiner finds that ammonium laureth sulfate is an
anionic surfactant having the characteristics recited in claim 1, based on its
description in Appellants' Specification as suitable for use in the disclosed
compositions (Non-Final Rej. 5---6).
9. Appellants' Specification states that "[p ]referred anionic
surfactants suitable for use in the personal care compositions are alkyl
sulfates and alkyl ether sulfates" (Spec. 10:12-13) and that "[e]xamples of
anionic surfactants for use in the personal care compositions include
ammonium lauryl sulfate, ammonium laureth sulfate," etc. (id. at 11 :23-24).
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Application 11/328,302
10. The Examiner finds that the composition of Melby's Example 3
has an ethoxylate level of 5.79 and an anionic level of 4.18 (Ans. 4).
11. The Examiner finds that Wells discloses a shampoo comprising
"a cationically modified polymer which has a charge density of at least
about 0.2 meq/g and preferably less than 2.75 meq/g. WELLS teaches the
cationic charge density of the polymer provides the substantivity between
the polymer and the hair" (Non-Final Rej. 6). "The cationic charge density
can be controlled and adjusted by techniques known in the art such as
adjusting the pH of the shampoo or altering the proportions of amine or
quaternary ammonium moieties in the polymer" (id. at 6-7 (citing Wells,
col. 14, 11. 25-35)).
12. Wells discloses "shampoo compositions comprising anionic
detersive surfactants, silicone hair conditioning agents, and cationic
polymeric hair conditioning agents" (Wells, col. 1, 11. 13-15).
13. Wells discloses that the shampoo compositions "comprise a
soluble, organic, polymeric cationic hair conditioning agent as an essential
element" (id. at col. 12, 11. 56-58). Wells states that the charge density of
the polymeric conditioning agent is preferably less than about +2.75
meq/gram and "should be of a level such that efficient substantivity between
the polymer and the hair can be attained" (id. at col. 13, 11. 3-9). "[I]t is
preferred that cationic charge density be at least about 0.2 meq/gram" (id. at
col. 13, 11. 9-11).
14. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art to modify "the cationic charge density of the
cationic tapioca polymer taught by MELBY to be between 0.2-2.75 meq/g
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Application 11/328,302
as taught by WELLS in order to alter the substantivity between the cationic
polymer and hair" (Non-Final Rej. 7). "The skilled artisan would have been
motivated to modify the cationic charge density of the polymer to improve
the detangling of hair and decrease the incidence of static flyaway hair"
(id.).
Analysis
Melby discloses a shampoo composition comprising a cationically
modified starch and ammonium laureth sulfate (an anionic surfactant, FF 9)
in the concentrations required by claim 1, together with water, a
cosmetically acceptable medium (FF 7). Melby also discloses that the starch
can be derived from tapioca (FF 4) and most preferably has a molecular
weight of 5000 to 500,000 (FF 3). The Examiner finds that the composition
of Melby's Example 3 has an ethoxylate level and an anion level within the
ranges required by claim 1 (FF 10). Wells discloses a shampoo composition
comprising a cationic polymer preferably having a charge density of +0.2 to
+2.75 meq/g (FF 13). Wells discloses that this charge density allows
"efficient substantivity between the polymer and the hair" (FF 13).
We agree with the Examiner that it would have been obvious to
modify the tapioca-derived cationically modified starch suggested by Melby
to have a charge density between +0.2 and +2.75 meq/g, because Wells
discloses that the charge density of the cationic polymer in its shampoo
"should be of a level such that efficient substantivity between the polymer
and the hair can be attained" (FF 13), and that charge densities between +0.2
meq/g and +2.75 meq/g are preferred (FF 13).
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Application 11/328,302
Appellants argue that one of ordinary skill in the art would not have
been motivated, in view of the cited references, "to arrive at a shampoo
composition comprising a surfactant system having an anionic surfactant,
wherein the system has an ethoxylate level of 2.94 to about 6 and an anion
level of about 1 to about 6, and then ... arrive at the combination of the
aforementioned surfactant system with the particular cationic tapioca starch
polymer" recited in claim 1 (App. Br. 2). Appellants argue that there are
"many suppliers of these surfactant materials-and the ethoxylation
distribution of these materials varies significantly" and "there are vast
numbers of cationic polymers (with varying properties) which can be
selected from to combine together with the claimed surfactant system" (id. at
3). Appellants argue that, therefore, 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 wt.
%, molecular weight and charge density) has no finite number of predictable
solutions with anticipated successes" (id. at 2-3).
We conclude that the Examiner has the better position. The Examiner
has found that the composition of Melby' s Example 3 has an ethoxylate
level of 5.79 and an anionic level of 4.18 (FF 10). Appellants have not
provided any argument, evidence, or reasoning to rebut the Examiner's
calculations (see App. Br. 2-5). The Examiner further responds that
"MELBY' s Example 3 teaches inclusion of a water-soluble cationic starch
polymer in which the starch may be derived from tapioca," with a molecular
weight that is "preferably 5,000 to 500,000" (Ans. 4). (id.). Finally, the
Examiner finds that Wells discloses a shampoo containing a cationically
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Application 11/328,302
modified polymer having a charge density that is preferably between 0.2
meq/g and 2.75 meq/g (id.).
In view of the disclosures in Melby and Wells, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to formulate a shampoo composition according to Melby with a tapioca-
based starch conditioning agent that has a charge density as disclosed in
Wells in order to achieve efficient substantivity between the hair and the
tapioca-based conditioning agent.
Appellants' argument-that claim 1 requires selecting parameters for
the cationically modified starch and anionic surfactant in the composition-
does not persuade us that the claimed composition would have been
nonobvious, because the evidence shows that the ranges recited in claim 1
were all recognized as appropriate for a cationically modified starch or an
anionic surfactant in a shampoo composition. Appellants have not pointed
to evidence of unexpected results obtained by using a starch or surfactant
having the recited characteristics.
Thus, we conclude that the Examiner has made a prima facie case that
claim 1 would have been obvious to a person of ordinary skill in the art, and
Appellants have not provided persuasive evidence or reasoning to support a
contrary conclusion. \Ne therefore affirm the rejection of claim l as being
obvious in view of J\lfolby and WeIIs. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Claims 2, 3, 5, 7-13, 15, and 16 have not been argued
separately from claim 1 and therefore fall with that claim. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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The Examiner has also rejected claims 1-3, 5-13, 15, and 16 under 35
U.S.C. § 103(a) as obvious in view of Melby and Wells, Schrader, and
Polyquatemium-11 (Ans. 3). For this rejection, Appellants present the same
argument as discussed above (App. Br. 4--5). This argument is not
persuasive for the reasons discussed above.
Thus, we affirm the rejection of claim 1 as being obvious in view of
Melby, Wells, and Schrader. Claims 2, 3, 5-13, 15, and 16 have not been
argued separately from claim 1 and therefore fall with that claim. See 37
C.F.R. § 41.37(c)(l)(iv).
Conclusion of Law
A preponderance of the evidence supports the Examiner's conclusion
that the combination of Melby and Wells would have made obvious a
shampoo composition comprising the polymer and an anionic surfactant
system having the characteristics recited in claim 1.
SUMMARY
We affirm the rejections of claims 1-3, 5-13, 15, and 16 under 35
U.S.C. § 103(a).
Claims 1-3, 5-13, 15, and 16 also stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims 1-5,
7, 14--16, 18, 19, and 20-25 of Application No. 12/338,666 in view of
Melby (Ans. 3). Appellants have not provided arguments to dispute this
rejection, and thus we affirm it.
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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
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