HENKEL AG & CO. KGAADownload PDFPatent Trials and Appeals BoardDec 7, 20202020002680 (P.T.A.B. Dec. 7, 2020) 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. 15/317,831 12/09/2016 Bruce R. Cox PT032663 (083.0306US) 1014 29906 7590 12/07/2020 LKGLOBAL 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 EXAMINER MATTISON, LORI K ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 12/07/2020 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): docketingteam@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE R. COX, YI HUA JIANG, and XIAO WEI CHANG Appeal 2020-002680 Application 15/317,831 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–7, 12–14, 17, and 18. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/317,831 filed Dec. 9, 2016 (“the ’831 App.”); the Final Office Action dated July 10, 2019 (“Final Act.”); the Appeal Brief filed Oct. 21, 2019 (“Appeal Br.”); the Examiner’s Answer dated Feb. 7, 2020 (“Ans.”); and the Reply Brief filed Feb. 20, 2020 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Henkel AG & Co. KGaA. Appeal Br. 3. Appeal 2020-002680 Application 15/317,831 2 We REVERSE. The invention is drawn to hair care products. Spec. ¶ 2. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. A hair care product comprising: an oil-in-water emulsion A, wherein emulsion A has a pH-value from greater than about 7.0 to about 12.0 and comprises: a1) at least one cationic surfactant A, and a2) at least one amino-functionalized silicone A; an oil-in-water emulsion I, wherein emulsion I has a pH- value from about 4.0 to about 9.0 and comprises: i1) at least one surfactant I, and i2) at least one silicone I, and an oil-in-water emulsion C, wherein emulsion C has a pH-value from about 2.0 to lower than about 7.0 and comprises: c1) at least one cationic surfactant C, wherein surfactant A, surfactant I and surfactant C may be identical with or different from each other, and c2) at least one silicone C, wherein silicone C, silicone I, and the amino-functionalized silicone A may be identical with or different from each other, wherein emulsion A, emulsion I, and emulsion C are non-leave-on emulsions, and wherein emulsion A, emulsion I, and emulsion C are provided in separate containers. Appeal 2020-002680 Application 15/317,831 3 REFERENCES The Examiner relies on the following prior art in rejecting the claims: Name Reference Date Allard et al. (“Allard”) US 5,616,331 Apr. 1, 1997 Hoffmann et al. (“Hoffmann”) US 2008/0260673 A1 Oct. 23, 2008 Bistram US 2009/0185994 A1 July 23, 2009 Uellner et al. (“Uellner”) US 2013/0305463 A1 Nov. 21, 2013 Dow Corning 245 Fluid Product Information, Ref. no. 22-1619C-01, dated Jan. 31, 2003 (“Dow”) CIR Expert Panel Meeting, Pentaerythrityl Tetraisostearate and Other Pentaerythrityl Esters, Sept. 26—27, 2011 (“CIR”) REJECTIONS3 The Examiner maintains the following rejections under 35 U.S.C. § 103: (1) claims 1–7, 12–14, 17, and 18 over Uellner and Bistram as evidenced by Dow, and Allard further in view of Hoffmann; and (2) claims 1–7, 12–14, 17, and 18 over the same combination of references and further in view of CIR. Final Act. 4–10. OPINION Rejection over Uellner and Bistram as evidenced by Dow, and Allard further in view of Hoffman Appellant relies on its arguments in relation to claim 1 for patentability of the dependent claims. Appeal Br. 9. We select claim 1 as representative. 37 C.F.R. § 42.37(c)(1)(iv). 3 Because it is a petitionable rather than appealable issue, we decline to address the Examiner’s objection to Appellant’s claims 5, 6, and 18. Final Act. 3; see also cf. MPEP § 2163.06. Appeal 2020-002680 Application 15/317,831 4 The rejection is somewhat difficult to follow, as the Examiner intermixes the rejection of independent claim 1 and its limitations with the rejections of dependent claims and their limitations. See Final Act. 4–9. We determine that, regarding claim 1, the Examiner finds that Uellner teaches a two-part hair coloring composition wherein compositions A and B read on claim 1’s emulsions A and C, respectively. Id. at 4–6; Ans. 4. The Examiner finds that Allard in view of Hoffmann teaches emulsion I. Final Act. 7; Ans. 5–8. Allard is a topically applicable sunscreen/cosmetic composition. Allard Abst. Hoffmann is cited by the Examiner as teaching a composition with a pH of 2 to 7, which overlaps the pH range for emulsion I in claim 1. See Final Act. 8. The Examiner determines that it would have been obvious to one of ordinary skill in the art to combine the prior art elements according to known methods to yield predictable results, and that a teaching, suggestion, or motivation in the prior art would have led one of ordinary skill to modify the prior art references or combine their teachings to arrive at the claimed invention. Id. The Examiner finds that one of ordinary skill in the art would have been motivated to combine Allard’s sunscreen with pH adjusted by Hoffmann with Uellner’s two-part hair dye to protect dyed hair and scalp from UV irradiation and protect the hair color from bleaching in the sun. Id. at 8–9; Ans. 5. The Examiner finds that Allard does not explicitly state that its formulations are “non-leave-on.” Ans. 5–6. Appellant argues, inter alia, that Allard discloses a stand-alone sunscreen, and must be a leave-on composition in order for its nanopigments to block radiation physically. Appeal Br. 7. Appellant then argues that one Appeal 2020-002680 Application 15/317,831 5 of ordinary skill in the art would have had no reason to look to Allard—a sunscreen—to combine with Uellner’s hair dye. Id. We agree. Allard discloses an improved oil-in-water type emulsion having sunscreen properties and comprising inorganic nanopigments based on metal oxides, which simultaneously display excellent transparency on the skin, very good efficacy of protection against UV irradiation, very good stability and perfect homogeneity both before and after topical application to the skin, i.e., the nanopigments are very well dispersed in the initial or beginning emulsion on the one hand, and on the skin after topical application on the other. Allard col. 2, ll. 40–49. Thus, although Allard likely could be washed and rinsed off after application, clearly it is intended to be left on to provide protection from sun exposure. Otherwise, its nanopigments are of no benefit. On the record before us, the Examiner fails to show by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to add a leave-on sunscreen emulsion to a two-part hair dye with a reasonable expectation of success. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner’s purported motivation seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined, which is inadequate to imply a motivation to pick out those two references and combine them to arrive at the claimed invention. See PersonalWeb Techs., LLC, v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness Appeal 2020-002680 Application 15/317,831 6 concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”)). The reasoning for combining Allard’s sunscreen with Uellner’s emulsions appears to be proposed out of hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). “Although the suggestion to combine references may flow from the nature of the problem, ‘[d]efining the problem in terms of its solution reveals improper hindsight in the selection of the prior art relevant to obviousness.’” Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000). For the reasons above, we do not sustain the rejection of claim 1 as obvious over Uellner and Bistram as evidenced by Dow, Allard, and Hoffmann. For the same reasons, we do not sustain the rejection of claims 2–7, 12–14, 17, and 18 over these references. Rejection over Uellner and Bistram as evidenced by Dow, Allard, and further in view of Hoffman, and further in view of CIR The Examiner relies on CIR as disclosing pentaerythrityl tetraethyl hexanoate. Final Act. 10. The Examiner finds that pentaerythrityl tetraethyl hexanoate “is a conditioner used in hair care compositions which is a skin conditioning agent with occlusive effects which [is] expected to have some meaningful UV absorption.” Id. (citing CIR pp. 28, 35). The Examiner determines that it would have been obvious “to add pentaerythrityl tetraethyl hexanoate to the developer suggested by the combined teachings of Uellner and Bistram,” motivated to further condition hair. Ans. 10. Appeal 2020-002680 Application 15/317,831 7 Appellant argues that the rejection applies to dependent claim 7, which requires an emollient. See Appeal Br. 8, 12. To the extent the rejection applies to claim 1, Appellant argues that pentaerythrityl tetraethyl hexanoate as disclosed in CIR is an emollient, and claim 1 does not require an emollient. Id. at 9. The Examiner makes no finding that CIR teaches emulsion I, thus the reference’s inclusion in the rejection does not cure the deficiency in the combination of Allard and Hoffmann. Therefore, we do not sustain the rejection of any of the claims over Uellner, Bistram, Dow, Allard, Hoffman, and CIR. CONCLUSION The Examiner’s decision to reject claims 1–23 is reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 12–14, 17, 18 103 Uellner, Bistram, Dow, Allard, Hoffmann 1–7, 12–14, 17, 18 1–7, 12–14, 17, 18 103 Uellner, Bistram, Dow, Allard, Hoffmann, CIR 1–7, 12–14, 17, 18 Overall Outcome 1–7, 12–14, 17, 18 REVERSED Copy with citationCopy as parenthetical citation