L'OREAL

Patent Trials and Appeals Board

Jun 3, 2021

2020005604 (P.T.A.B. Jun. 3, 2021)

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.
14/243,466 04/02/2014 Michael DEGEORGE 085137-573867 7193
143687 7590 06/03/2021
POLSINELLI PC (L''Oreal USA)
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/03/2021 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):
DC-IPDocketing@Polsinelli.com
LBrabson@Polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DEGEORGE and MARK BENN1
Appeal 2020-005604
Application 14/243,466
Technology Center 1600
Before DEBORAH KATZ, JOHN G. NEW, and ROBERT A. POLLOCK,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as L’OREAL S.A.
Appeal Br. 2.
Appeal 2020-005604
Application 14/243,466
2
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–24, 26–29, and 31 as unpatentable
under 35 U.S.C. § 103 as being obvious over Legrand (US 6,444,197 B2,
September 3, 2002) (“Legrand”) and Caskey (US 5,575,989, November 19,
1996) (“Caskey”).2
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to powder compositions
containing an alkaline material comprising hydroxide-containing
compounds, a starch, a silica material, a liquid fatty substance, an acrylic
polymer, a wax, and a chelant compound. Abstr. The powder may be
mixed with water to form a ready-to-use composition for relaxing or
straightening hair. Id.

REPRESENTATIVE CLAIM
Independent claim 1 is representative of independent claims 28, 29,
and 31, and recites:
1. A powder composition comprising:

(a) from about 1% to about 30% by weight of at least one
hydroxide-containing compound selected from the group
consisting of alkali metal hydroxides, alkaline earth metal

2 The Examiner withdrew the rejection of claims 21–24, 26, and 27 as
indefinite under 35 U.S.C. § 112(b). Ans. 3.
Appeal 2020-005604
Application 14/243,466
3
hydroxides, transition metal hydroxides, and mixtures
thereof;

(b) from about 1% to about 25% by weight of at least one starch;

(c) from about 0.1 % to about 20% by weight of at least one silica
material;

(d) from about 5% to about 50% by weight of at least one liquid
fatty substance;

(e) from about 0.5% to about 15% by weight of at least one
acrylic polymer;

(f) from about 0.5% to about 20% by weight of at least one wax;
and

(g) from about 0.5% to about 5% by weight of at least one chelant
compound;

all weights above being based on the total weight of the powder
composition.
App. Br. 21.
ISSUES AND ANALYSIS
We decline to adopt the Examiner’s findings, reasoning, and
conclusion that the claims on appeal are prima facie obvious over the
combined cited prior art. We address the arguments raised by Appellant
below.

Appeal 2020-005604
Application 14/243,466
4
1. Rejection of claims 1, 28, 29, and 31 over Legrand and Caskey
Issue
Appellant argues that the Examiner erred by failing to identify a
reason to pick out and combine the instantly claimed compounds, as claimed
in a single composition. App. Br. 16.

Analysis
The Examiner finds that Legrand teaches a ready-to-use hair-treating
powder composition. See Final Act. 5–6. The Examiner finds that Legrand
teaches the powder composition may include a polyurethane polyether
combined with maltodextrin, i.e., a starch. Id. at 6 (citing Legrand col. 2,
ll. 50–55; col. 22, ll. 26–45 (Example 1)); see also Ans. 4 (citing col. 23,
ll. 16–31, 51–61 (claims 1, 8–11)). The Examiner finds that in a specific
example, the polyurethane polyether may include Aculyn 46, containing 4%
maltodextrin. Id. The Examiner finds that Legrand teaches the composition
further includes 1% by weight of ethylenediaminetetraacetic acid (“EDTA”),
i.e., a chelating agent. Id. at 7 (citing Legrand col. 22, ll. 30–50 (Example
1)); see also Ans. 5.
The Examiner also finds that Legrand teaches various additives for the
powder composition. Ans. 4–5. For example, Legrand teaches 0.05% to
30% by weight alkali metal hydroxide, e.g., sodium hydroxide and
potassium hydroxide. Id. at 4 (citing Legrand, col. 20, ll. 58–67; col. 26,
ll. 1–11 (claims 44, 45)). The Examiner finds that Legrand teaches at least
one additive present in an amount ranging from 0% to 30% by weight of the
composition, the additive including silica, oils, and waxes. Id. at 5 (citing
Legrand, col. 21, ll. 20–26, 46–48, 52; col. 26, ll. 39–55 (claims 49–51)).
Finally, the Examiner finds that Legrand teaches 0.05% to 10% by weight
Appeal 2020-005604
Application 14/243,466
5
crosslinked acrylic acid polymer used as a thickener. Id. at 5 (citing Legrand
col. 20, ll. 39–41, 46, 54–56).
With respect to the reason to combine Legrand’s various components,
the Examiner reasons that Legrand teaches “that a person skilled in the art
would take care to select the optional additional compound(s) mentioned
above such that the advantageous properties intrinsically associated with the
composition usage are not, or at least are not substantially, adversely
affected by the addition(s) envisaged.” Ans. 5. The Examiner finds that the
additional ingredients were all commonly known in the relevant art and
would have been selected based on their known use and functions. Id. at 6.
The Examiner concludes that:
LEGRAND provides clear suggestion and direction to a person
of ordinary skilled in the art why the claimed components (a),
(b), (c), (d), (e) and (g) are suitable additives and how they can
be selected for use in treating human hair. Therefore, it would
have been prima facie obvious to a person of ordinary skilled in
the art at the time the invention was made to combine
LEGRAND with CASEY to arrive at the present invention.
Id.
Appellant argues that “Legrand, the primary reference[], does not
require any of the seven claimed components (a), (b), (c), (d), (e), (f), and
(g). Therefore, deriving what is claimed requires simultaneously selecting
all seven of the instantly claimed components from long lists of optional
ingredients.” App. Br. 15 (emphases omitted). Appellant contends that the
Examiner is “working backwards using applicants’ disclosure as a guide” to
select the various components of Legrand’s teachings. Id. at 16. Appellant
highlights the Examiner’s reliance on Legrand’s teaching of “maltodextrin,
which is included as an additive (4%) in Aculyn 46®, a commercial
Appeal 2020-005604
Application 14/243,466
6
polyurethane.” Id. at 15. Appellant contends that “maltodextrin is
circumstantially present in the [cited] commercial product.” Id. at 16.
Appellant contends that “[a]rbitrarily picking out and relying upon a
circumstantial additive is quintessential evidence of hindsight,” and as such,
the rejection should be reversed.
We agree with Appellant that the Examiner failed to establish a prima
facie case of obviousness over Legrand and Caskey. The Examiner
identified that the cited art teaches the separate components of the claimed
powder composition. However, as explained by the Supreme Court,
“[i]nventions usually rely upon building blocks long since uncovered, and
claimed discoveries almost necessarily will be combinations of what, in
some sense, is already known.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Accordingly, “it can be important to identify a reason that
would have prompted a person of ordinary skill in the art to combine the
elements as the new invention does.” Id.
We find that the Examiner has failed to identify a reason that would
have prompted a person of ordinary skill in the art to combine the claimed
components as the new invention does. For example, the Examiner has not
identified which “optional additional compounds” would not adversely
affect the “advantageous properties intrinsically associated” with Legrand’s
composition. See Ans. 5. Notably, Legrand teaches a wide range of
optional additional components that may be used in the composition, and the
Examiner has not identified a reason to select and combine these
independently listed components, absent Appellant’s disclosure. Likewise,
the Examiner’s reliance on the known uses and functions of Legrand’s
optional additional compounds does not provide a reason for forming the
claimed combination. See id. at 6. “[R]ejections on obviousness grounds
Appeal 2020-005604
Application 14/243,466
7
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.” KSR, 550 U.S. at 418.
Without a reason to combine the claimed components apart from their
known uses, the Examiner’s reasoning relies on “hindsight reconstruction to
pick and choose among isolated disclosures in the prior art.” Ecolochem,
Inc. v. S. California Edison Co., 227 F.3d 1361, 1371 (Fed. Cir. 2000)
(holding that “[c]ombining prior art references without evidence of such a
suggestion, teaching, or motivation simply takes the inventor’s disclosure as
a blueprint for piecing together the prior art to defeat patentability—the
essence of hindsight”). Id. at 1371–1372. Because the Examiner failed
articulate a reason to combine an alkaline metal hydroxide, a starch, silica, a
liquid fatty substance, an acrylic polymer, wax, and a chelant compound in
the amounts recited in claim 1, we do not sustain the Examiner’s rejection of
the claims. And because this issue is dispositive of the Examiner’s rejection
of the claims 1, 28, 29, and 31 upon this ground, we do not reach
Appellant’s additional arguments.

2. Claims 2–24, 26 and 27
Dependent claims 2–24, 26, and 27 all depend, directly or indirectly,
from independent claim 1. Because we reverse the Examiner’s rejection of
claim 1, we similarly, and for the same reasons, reverse the Examiner’s
rejection of claims 2–24, 26, and 27.
CONCLUSION
The Examiner’s rejection of claims 1–24, 26–29, and 31 under 35
U.S.C. § 103 is reversed.
Appeal 2020-005604
Application 14/243,466
8

REVERSED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24, 26–
29, 31
103 Legrand, Caskey 1–24, 26–
29, 31