Ex Parte Tamura

Board of Patent Appeals and Interferences

Sep 28, 2011

10540816 (B.P.A.I. Sep. 28, 2011)

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.
10/540,816 06/24/2005 Seiki Tamura 71,051-011 6348
27305 7590 09/28/2011
HOWARD & HOWARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
09/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SEIKI TAMURA
__________

Appeal 2010-010857
Application 10/540,816
Technology Center 1600
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hair
care composition, which the Examiner has rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “a composition for hair that is capable of
imparting to hair a moist feeling, a feel of smoothness, ease of combing,
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Application 10/540,816

2
[and] moist feeling and smoothness even after repeated brushing and drying”
(Spec. 2).
Claim 1 is the only claim on appeal and is directed to a composition
for hair comprising two block copolymers: a block copolymer (A)

in which, among other things, “the average molecular weight of the
polyorganosiloxane block represented by formula: -(SiR
1
2O)aSiR
1
2- is equal
to or exceeds 10,500; the polyorganosiloxane block constitutes 50 to 99
mass % of block copolymer (A); … and the average molecular weight of
block copolymer (A) is equal to or higher than 50,000;”
and a block copolymer (B)

in which, among other things, “the average molecular weight of the
polyorganosiloxane block represented by formula: -(SiR
3
2O)aSiR
3
2- is within
the range of 134 to 10,000; the polyorganosiloxane block constitutes 0.7 to
97.5 mass % of block copolymer (B); … and the average molecular weight
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Application 10/540,816

3
of block copolymer (B) is within the range of 650 to 100,000.” The full text
of claim 1 is reproduced in the Claims Appendix of the Appeal Brief.
The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) as being
obvious in view of Rautschek.
1
The Examiner finds that Rautschek
discloses copolymers of the general formula A(BC)nBA (Answer 4), in
which:
A is R
1
-O-[CH2CH2O]a[CH2CH(CH3)O]b[CH2CH(CH2CH3)O]c-(CmH2m)-,
B is -(R
3
2Si-O)d-R
3
2Si-, and
C is -(CmH2m)-O-[CH2CH2O]a[CH2CH(CH3)O]b[CH2CH(CH2CH3)O]c-
(CmH2m)- . (Rautschek, col. 2, l. 52 to col. 3, l. 7.)
The Examiner finds that copolymers A and B of instant claim 1 are
suggested by Rautschek’s A(BC)nBA copolymers because making the right
choices from within Rautschek’s formula could yield a copolymer
encompassed by the formula for either copolymer A or copolymer B
(Answer 4-8). The Examiner finds that “Rautschek teaches that one or more
polyetherpolysiloxane copolymers may be used as a foam stabilizer” (id. at
8).
The Examiner concludes that a
person of ordinary skill in the art would have had a reasonable
expectation of success in optimizing within the prior art
conditions taught by Rautschek through routine
experimentation … to yield the recited block copolymers A and
B and using the block copolymers A and B together in a
composition wherein each is present in a range form [sic] 0.01
to 10 mass% because Rautschek teaches each of moieties and
the number of repeating units for each moiety for the block

1
Rautschek et al., U.S. 6,187,891 B1, Feb. 13, 2001.
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Application 10/540,816

4
copolymer, weights, and preferred substituents, provides
embodiments for some of the subunit blocks, and discloses that
the copolymers are functionally equivalent and usable together
as foam stabilizers.
(Id. at 8.)
Appellant argues that the
Examiner has failed to set forth any articulated reasoning with
some rational underpinning as to why one of skill in the art
would select copolymer (A) or (B) individually, let alone a
combination of copolymers (A) and (B), as claimed in the
subject application, to form a composition for hair in view of
the genus disclosed [by Rautschek] for foam stabilizers.
(Appeal Br. 31.)
We agree with Appellant that the Examiner has not adequately shown
that Rautschek would have made obvious the claimed composition. Claim
1’s block copolymers A and B are similar in that they comprise linear
polyether-polysiloxane copolymers. The copolymers differ in, at least, the
size of the polyorganosiloxane blocks (average molecular weight of at least
10,500 for copolymer A and 134-10,000 for copolymer B). The claim also
recites different but overlapping ranges for the relative amount of
polyorganosiloxane (50-99 mass% of copolymer A and 0.7-97.5 mass% of
copolymer B), and the size of the overall copolymer (average molecular
weight of at least 50,000 for copolymer A and 650-100,000 for copolymer
B) for the two copolymers.
With regard to the limitation that the polyorganosiloxane block of
copolymer A has a molecular weight of at least 10,500, the Examiner
reasons that Rautschek teaches that its R
3
substituent (which corresponds to
R
1
in claim 1’s copolymer A and R
3
in copolymer B) can be “any number of
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Application 10/540,816

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substituted or unsubstituted, saturated, and/or unsaturated hydrocarbon
radicals from 1 to 20 carbon atoms … and d is permitted to repeat up to 400
times … thus the molecular weight may be at least 192,000 depending on
the selection of substituents and integers” (Answer 5). This reasoning,
however, fails to take into account Rautschek’s disclosed preferences for the
substituents and sizes of its polyorganosiloxane blocks.
The Examiner is correct that Rautschek discloses that its polyorgano-
siloxane blocks can contain “at most 400 diorganosiloxy units” (Rautschek,
col. 3, ll. 46-47). However, Rautschek discloses that the polyorganosiloxane
block is “preferably from 4 to 80 diorganosiloxy units, more preferably from
6 to 30 diorganosiloxy units” (id. at col. 3, ll. 47-48). Rautschek also
discloses that R
3
in its polyorganosiloxane block is preferably a methyl
group (id. at col. 3, ll. 55-60).
In view of Rautschek’s preference for polyorganosiloxane blocks
much smaller than the maximum 400 diorganosiloxy units, and for methyl
groups as the alkyl radical, the Examiner’s reasoning that Rautschek’s broad
disclosure encompasses copolymers with polyorganosiloxane blocks having
the molecular weight required for copolymer A is not sufficient to show that
Rautschek would have made obvious the limitations of claim 1. The
Examiner did not explain which “substituents and integers” (Answer 5)
resulted in the calculated molecular weight of 192,000, nor has the Examiner
presented evidence showing that the preferences disclosed by Rautschek
would have led those skilled in the art to make the choices from within
Rautschek’s broad genus that would result in a copolymer meeting the
limitations of claim 1’s copolymer A.
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Application 10/540,816

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Further, Rautschek does not suggest that copolymers having different
sizes of polysiloxane blocks would be useful in combination, particularly for
hair compositions. Although Rautschek does disclose that more than one of
its copolymers can be used in the same composition,
2
Rautschek does not
provide any reason to use multiple copolymers or provide any guidance on
which copolymers should be combined. The Examiner has not adequately
explained what disclosure in Rautschek or knowledge in the art would have
led a skilled worker to make the selections from within Rautschek’s
disclosure that would lead to copolymer A, make the different selections that
would lead to copolymer B, and then combine the two copolymers in a
single composition.
Rautschek discloses that its copolymers are useful “as foam
stabilizers, antifoams …, as additives for solvent-containing, low-solvent
and solvent-free aqueous coatings, construction chemicals, pastes and other
preparations, and/or as emulsion stabilizers” (Rautschek, col. 6, ll. 44-48).
However, the Examiner has not explained why any of these utilities would
have led to the specific combination required by claim 1. And, given the
very broad genus disclosed in Rautschek, which only partially overlaps with
either the block copolymer A or block copolymer B genus recited in claim 1,
it would not have been predictable that a skilled worker practicing
Rautschek’s invention would have made the selections from within
Rautschek’s formula that would have led to the claimed combination of
block copolymer A and block copolymer B.

2
Rautschek’s claims 11-14 are directed to compositions comprising “one or
more polyether-polysiloxane copolymers” (id. at col. 14, ll. 44-55).
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Application 10/540,816

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Thus, the Examiner has not adequately explained how Rautschek
would have made obvious the combination of block copolymer A and block
copolymer B, or explained how the combination of copolymers A and B
would have been a predictable result of practicing Rautschek’s invention.
We reverse the rejection of claim 1.

REVERSED

cdc