Henkel AG & Co. KGaA

Patent Trials and Appeals Board

Oct 15, 2020

2020001745 (P.T.A.B. Oct. 15, 2020)

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.
15/366,278 12/01/2016 Volker Scheunemann PT033604 3937
20480 7590 10/15/2020
STEVEN L. NICHOLS
Fabian Vancott
215 S. State Street
SUITE 1200
SALT LAKE CITY, UT 84111
EXAMINER
WHEELER, THURMAN MICHAEL
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/15/2020 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLKER SCHEUNEMANN and
ERIK SCHULZE ZUR WIESCHE
____________

Appeal 2020-001745
Application 15/366,278
Technology Center 1600
____________

Before FRANCISCO C. PRATS, TAWEN CHANG, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to a hair treatment agent. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Henkel AG & Company, KGaA as
the real party in interest. Appeal Br. 2. Herein, we refer to the Final Office
Action mailed March 21, 2019 (“Final Act.”); Appellant’s Appeal Brief filed
July 25, 2019 (“Appeal Br.”); Examiner’s Answer mailed November 18,
2019 (“Ans.”); and Appellant’s Reply Brief filed January 6, 2020 (“Reply
Br.”).
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STATEMENT OF THE CASE
“The present invention relates to hair treatment agents. In particular
to shampoos and conditioners having active ingredients for hair care.” Spec.
¶ 1. According to the Specification, “[i]t has now been discovered that a
combination of certain ingredients has an especially positive effect on hair
treated therewith and on the hair follicles.” Id. ¶ 13.
Claims 1–12, 14–18, and 21–23 are on appeal and can be found in the
Claims Appendix of the Appeal Brief. Claim 17 is illustrative of the claims
on appeal and reads as follows:
17. A hair treatment agent, comprising:
5 % to 10 % by weight of the agent of at least one anionic
surfactant from the group of alkyl sulfates and/or alkyl ether
sulfates,
1 % to 5 % by weight of the agent of at least one
amphoteric and/or nonionic surfactant,
0.3 % to 3 % by weight of the agent of at least one divalent
or trivalent metal salt,
0.15 % to 0.8 % by weight of the agent of at least one
cationic polymer, and
0.05 % to 0.4 % by weight of the agent of ethyl lauroyl
arginate.
Appeal Br. 18.
Appellant seeks review of the following rejections:
I. Claims 1–12 and 14–18 under 35 U.S.C. § 103 as
obvious over Baumer,2 Aminat-G,3 and Wiesche4; and

2 US 2010/0069601 A1, published Mar. 18, 2010 (“Baumer”).
3 Vedeqsa, AMINAT-G: Preservative and Active Antimicrobial for
Cosmetics, 2010 (“Aminat-G”).
4 US 2011/0274640 A1, published Nov. 10, 2011 (“Wiesche”).
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II. Claims 21–23 under 35 U.S.C. § 103 as obvious over
Baumer, Aminat-G, and Wiesche.
Appeal Br. 8.
Both rejections are premised on the same combination of references,
and Appellant presents “substantially the same” arguments concerning
independent claims 1 and 21 that it does for claim 17. Appeal Br. 14; see
also id. at 13 (asserting that “[c]laim 1 has the same problems discussed with
respect to claim 17, above”); Reply Br. 9–10 (same). Appellant does not
present any separate argument for patentability of the dependent claims.
Accordingly, we analyze the rejections together, selecting claim 17 to be
representative of the claims on appeal. See 37 C.F.R. § 41.37 (c)(1)(iv).
The issue is whether the preponderance of the evidence supports
Examiner’s conclusion that claim 17 is obvious over the cited prior art.
Findings of Fact
FF1. Baumer describes “[t]ypical personal care” products including
“hair-care preparations” such as shampoos and conditioners. Baumer ¶¶ 12–
13. Baumer teaches these products contain “anionic, neutral, amphoteric or
cationic tensides.” Id. ¶ 78.
FF2. Baumer teaches “[e]xemplary anionic tensides” for its products
include “alkylsulfate and alkylethersulfate.” Baumer ¶ 79. Baumer teaches
“suitable amphoteric tensides” include cocamidopropylbetaine. ¶ 81.
Baumer further teaches that cationic tensides such as “quaternised
ammonium compounds” and “cationic guar derivatives such as
guarhydroxypropyltrimoniumchloride (INCl) may be used.” ¶¶ 83–84.
FF3. Baumer teaches that such anionic, amphoteric and cationic
tensides are “[p]referably” present in “about 0.01 wt. % to about 20 wt. % of
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the total weight of the composition” and “[m]ost preferred” in an amount of
“about 0.1 wt. % to about 10 wt. %.” Baumer ¶ 85.
FF4. Baumer teaches its compositions may also comprise
“electrolytes,” including divalent metal salts such as magnesium and zinc
sulfate, in amounts ranging from “about 0.01 wt. % to about 8 wt. %.”
Baumer ¶ 97.
FF5. In addition, Example 17 of Baumer describes a “Shine
Shampoo” composition comprising 15 wt. % sodium laureth sulfate, 2 wt. %
cocamidopropyl PYL betaine, 0.5 wt. % guar hydroxypropyltrimonium
chloride, and 0.2 wt. % mica. Baumer ¶ 271. Appellant’s Specification
evidences that these ingredients correspond to all of the components recited
in claim 17, other than ethyl lauroyl arginate. See Spec. ¶¶ 19–20, 23
(identifying “cocamidopropyl betaines” as an amphoteric surfactant); 68
(identifying “cationic guar derivatives” as a cationic polymer); 17, 177
(identifying alkali salts of lauryl ether sulfate as preferred anionic surfactants
and including “sodium laureth sulfate” in Series 2 examples).5
FF6. Aminat-G describes AMINAT-G, which is “a 20% solution of
Nα-Lauroyl-L-arginine ethyl ester monohydrochloride,” i.e., an ethyl lauroyl
arginate, in glycerin. Aminat-G 1. Aminat-G teaches that AMINAT-G “is
easy to incorporate into personal care formulations” is “non toxic,” “non
irritating,” and has “Major Potential Applications” as an “[a]ctive ingredient
for antidandruff hair care formulations” at a recommended dosage “from 1%
to 4%.” Id. at 2–3.

5 Examiner finds that mica is a “silicate salt/trivalent salt.” Final Act. 3.
Appellant does not dispute that finding on appeal.
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FF7. Aminat-G also teaches that AMINAT-G is “an effective
preservative in concentrations of 0.25-1%” in hair care products such as
shampoos and conditioners. Aminat-G 2–3. In addition to providing
“excellent formula preservation,” Aminat-G teaches another benefit of the
ethyl lauroyl arginate in AMINAT-G is it “provides additional smoothness to
hair and skin and improves the skin [sic] natural defense against pathogens,
besides an excellent formula preservation.” Id. at 3.
FF8. Aminat-G teaches AMINAT-G “might lose activity in systems
with high content of anionic surfactants or anionic thickeners, such as
Carboxymethylcellulose, Xanthan Gum, Bentonite or Carbomer.” Aminat-G
2. Aminat-G does not explain what would constitute a “high content” of
anionic surfactant, nor does it identify alkyl sulfates or alkyl ether sulfates
specifically as anionic materials that may be incompatible with AMINAT-G.
Analysis
Examiner finds Baumer teaches hair care products comprising the
recited ingredients of claim 17 in amounts that overlap with the claimed
ranges, but does “not teach ethyl lauroyl arginate.” Final Act. 3; see also id.
at 7 (acknowledging that the shampoo in Baumer Example 17 contains 15%
anionic surfactant, but finding Baumer also teaches compositions comprising
lower amounts, i.e., “preferably about 0.1–10 wt. % of an anionic
surfactant”). Examiner finds Aminat-G teaches a preservative (i.e.,
AMINAT-G) “which is 20% ethyl lauroyl arginate HCL in glycerin” for use
in “hair conditioners (i.e., hair treatment) and [a]s an active ingredient in
antidandruff shampoos” in an amount corresponding to “0.05–0.2%”6 ethyl

6 Examiner calculates this range by multiplying the 0.25–1% range of
AMINAT-G solution disclosed in Aminat-G by 20%. Final Act. 4.
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lauroyl arginate. Id. at 4. Thus, Examiner determines Aminat-G teaches the
addition of ethyl lauroyl arginate to shampoos and other hair care products
in amounts that overlap with the claimed range.
Examiner concludes that a “skilled artisan would have been motivated
to modify Baumer’s hair treatment agent by adding 0.05-0.2% ethyl lauroyl
arginate HCL by weight in order to improve the shelf life and hair
smoothening properties” of Baumer’s composition. Id. at 5. Examiner
acknowledges Aminat-G’s statement that “AMINAT-G might lose activity
in systems with high content of anionic surfactants or anionic thickeners,”
but finds
one of ordinary skill would have been directed to the broader
disclosure of Baumer and further motivated to provide a shine
shampoo comprising about 0.1–10 wt. % of an anionic
surfactant that also includes lauroyl arginate HCL (i.e., Aminat-
G) to avoid any problems that may arise from the combination
of the two agents having a reasonable expectation of
success. . . . Accordingly, it would have been well within the
purview of one skilled in the art to optimize the amount of an
anionic surfactant in a hair treatment agent to comprise about
5–10 wt. % of sodium laureth sulfate by following the teachings
in Baumer in view of the warning provided in Aminat-G.
Id. at 8–9. Moreover, Examiner notes Aminat-G’s statement “is only an
indication of a result that may occur . . . and does not specify the amount
(i.e., about wt. %) that would constitute a high content of anionic
surfactant.” Id. at 9. Thus, Examiner determines Aminat-G does not teach
away from the use of ethyl lauroyl arginate in combination with sodium
laureth sulfate at the amounts taught in Baumer and concludes there would
have been a reasonable expectation of successfully combining the two. See
Id. at 9–10.
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After considering the record and the arguments in the Appeal Brief,
we adopt Examiner’s findings of fact and reasoning regarding the scope and
content of the prior art (Final Act. 3–11; FF1–FF8) and agree that the hair
treatment agent of representative claim 17 would have been obvious over
Baumer, Aminat-G, and Wiesche. We address Appellant’s arguments
below.
Appellant argues that Aminat-G teaches away from the combination
of ethyl lauroyl arginate and the claimed anionic surfactants. See Appeal Br.
9–12. The premise for this argument is the statement in Aminat-G that
“AMINAT-G might lose activity in systems with high content of anionic
surfactants or anionic thickeners, such as Carboxymethylcellulose, Xanthan
Gum, Bentonite or Carbomer.” Appeal Br. 10 (quoting Aminat-G 2).
According to Appellant, this statement “establishes that mixing Aminat-G
with anionic surfactants is unpredictable and may inactivate the ethyl lauroyl
arginate.” Id.
We disagree. The statement Appellant relies upon refers to “systems
with high content of anionic surfactants or anionic thickeners.” 7 Aminat-G
2 (emphasis added). However, Baumer teaches products containing a
relatively low content of anionic surfactant, i.e., 10 wt. % or less. FF3.
Nothing in the cited references suggests that such a low amount of anionic

7 Appellant’s assertion that “other materials are known to similarly
inactivate . . . ethyl lauroyl arginate” – because neither xanthan gum nor
Bentonite would have been considered an “anionic thickener or anionic
surfactant” but are nevertheless described in Aminat-G as inactivating ethyl
lauroyl arginate (Appeal Br. 10) – is unsupported attorney argument and,
therefore, unpersuasive. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (explaining that arguments and conclusions unsupported by factual
evidence carry no evidentiary weight).
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surfactant could interfere with the activity of ethyl lauroyl arginate. Thus,
Aminat-G does not “criticize, discredit, or otherwise discourage
investigation” into the combination of ethyl lauroyl arginate with the recited
anionic surfactants at the amounts taught in Baumer and recited in claim 17.
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)
(quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009)) (explaining “[a] reference does not teach away
. . . if it merely expresses a general preference for an alternative invention
but does not criticize, discredit, or otherwise discourage investigation into
the invention claimed”).
Contrary to Appellant’s argument, the fact that the exemplary “shine
shampoo” in Baumer Example 17 contains a somewhat higher amount (i.e.,
15%) of anionic surfactant than the range recited in claim 17 does not
undermine the rejection. See Appeal Br. 11–12. Examiner found that it
would have been obvious for a skilled artisan to optimize the amount of
sodium laureth sulfate to the 5-10 wt. % range in claim 17 based both on the
Baumer’s teaching of a lower, substantially overlapping “[m]ost preferred”
range (i.e., 0.1–10 wt. %) and Aminat-G’s statement that a “high content” of
anionic surfactant could interfere with the activity of AMINAT-G. Final
Act. 8–9, 13. Examiner’s finding is supported by the record. FF3; FF8.
Appellant asserts that Baumer provides multiple examples of shampoos with
higher amounts of anionic surfactant and, therefore, its teaching of a lower
preferred range does not apply to shampoos. Appeal Br. 12; Reply Br. 8.
However, that argument is unpersuasive because, as Appellant
acknowledges, Baumer describes preferred ranges for the amount of the
anionic surfactant in “personal care products” (Appeal Br. 12 (citing Baumer
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¶ 83)) and Baumer specifically identifies shampoos as an example of a
“[t]ypical personal care” product. FF1.
In addition, and notwithstanding the teaching that AMINAT-G might
lose activity in formulations with a high content of anionic surfactant, we
agree with Examiner that one of ordinary skill in the art would have had a
reasonable expectation of success. Aminat-G teaches that AMINAT-G is
easily incorporated into hair care products to provide a number of benefits
FF6–FF7. The fact that a skilled artisan would understand there was a
possibility that AMINAT-G could lose activity if the anionic surfactant
content were too high, i.e., it was not absolutely certain ethyl lauroyl
arginate would work in Baumer’s hair care compositions, does not
demonstrate that Examiner’s findings are flawed. See Par Pharma., Inc. v.
TWI Pharms., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014) (“The reasonable
expectation of success requirement for obviousness does not necessitate an
absolute certainty for success.”). This is especially true in light of Baumer’s
express teaching that the amount of anionic surfactant could be lowered
from the 15% in Example 17 to the “[m]ost preferred” range of 10 wt. % or
less, if necessary. See FF3.
Finally, we are not persuaded by Appellant’s argument that “a person
of ordinary skill in the art would not find any motivation to combine ethyl
lauryl arginate with Baumer’s shine shampoo because it is not an anti-
dandruff shampoo.” Appeal Br. 13. Examiner’s rationale for combining the
references is not premised on the use of AMINAT-G as an antidandruff
agent, but rather on Aminat-G’s teaching that ethyl lauroyl arginate is an
effective preservative for hair care products that also provides a beneficial
hair smoothening effect. Final Act. 5; FF7. We agree with Examiner that
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these teachings provide a sufficient rationale for adding ethyl lauroyl
arginate to the shine shampoo in Baumer Example 17. Moreover, as
Examiner points out, Baumer teaches that its hair care products may include
antidandruff agents such as zinc pyrithione. Ans. 8, 10 (citing Baumer
¶ 103); see Aminat-G 3 (teaching that “AMINAT-G could be a ‘green’
substitute of Zn-pyrithione”). That teaching further supports that it would
have been obvious to add ethyl lauroyl arginate to Baumer’s products to
achieve the benefits (see FF6–FF7) taught in Aminat-G.
For these reasons, we determine the preponderance of the evidence
supports Examiner’s rejection of claim 17. We determine that Examiner’s
rejections of the other claims are supported by a preponderance of the
evidence for the same reasons as claim 17. Thus, we affirm.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12, 14–18 103 Baumer, Aminat-G,
Wiesche
1–12, 14–18
21–23 103 Baumer, Aminat-G,
Wiesche
21–23
Overall
Outcome
1–12, 14–
18, 21–23

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED