HENKEL AG & CO. KGAA

Patent Trials and Appeals Board

Dec 7, 2020

2020002680 (P.T.A.B. Dec. 7, 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.
15/317,831 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