The Procter & Gamble Company

Patent Trials and Appeals Board

Jan 11, 2021

2020003396 (P.T.A.B. Jan. 11, 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.
14/291,401 05/30/2014 Jun HASEGAWA AA885M 7055
27752 7590 01/11/2021
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
LOVE, TREVOR M
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
01/11/2021 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JUN HASEGAWA and TAISUKE OKU
__________

Appeal 2020-003396
Application 14/291,401
Technology Center 1600
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a non-
aqueous hair care composition. The Examiner rejected the claims as
obvious. 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. Appellant identifies the Real Party in Interest as The Procter
& Gamble Company (see Appeal Br. 1). We have considered the
Specification of May 30, 2014 (“Spec.”); Final Office Action of Apr. 22,
2019 (“Final Action”); Appeal Brief of Nov. 22, 2019 (“Appeal Br.”); and
Examiner’s Answer of Dec. 23, 2019 (“Ans.”).
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Statement of the Case
Background
Hair “[c]onditioning formulations can be in the form of rinse-off
products or leave-on products, and can be in the form of an emulsion, cream,
gel, spray, mousse, oil, liquid and serum” (Spec. 1:14–16). “One of the
leave-on products is a hair oil product which comprises a larger amount of
oily compounds and is often non-aqueous liquid product” (id. at 1:17–18).
While there are prior art hair compositions (see id. at 1:18–25), the
Specification teaches “there is still a need for non-aqueous liquid hair oil
product to provide balanced dry performance, i.e., providing dry
conditioning such as smoothness, shine, and balanced hair volume while not
providing greasiness/stickiness” (id. at 1:26–28).
The Claims
Claims 1, 4, and 9–12 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A non-aqueous hair care composition comprising by
weight:
(d) from about 50% to about 99.9% of a base oil being a
volatile isoparaffin;
(e) from about 0.025% to about 15% of a silicone
elastomer, wherein the silicone elastomer is silicone chains
which are crosslinked by silicone or hydrocarbon ; and
(f) from about 1 % to about 40% of a solubilizer for the
silicone elastomer which is a non-volatile silicone having a
viscosity from about 100 to about 30,000 mm2·s-1 wherein the
weight ratio of the solubilizer to the silicone elastomer is from
about 2:1 to about 20:1 and wherein the non-aqueous hair care
composition comprises 1 % or less of water and wherein the
non-volatile silicone is a non-volatile non-amino modified
silicone.

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The issue
The Examiner rejected claims 1, 4, and 9–12 under 35 U.S.C. § 103(a)
as obvious over Girier Dufournier2 and Perry3 (Final Act. 3–5).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Girier Dufournier and Perry render the claims
obvious?
(ii) If so, has Appellant provided evidence of unexpected results that,
when considered with the prima facie case, results in a finding that the
evidence considered as a whole does not support the obviousness of claims 1
and 12?
Findings of Fact
1. Girier Dufournier teaches “cosmetic treatment of the skin”
(Girier Dufournier ¶ 1).
2. Girier Dufournier teaches the “liquid fatty phase of the soft-
focus composition may comprise at least one volatile oil” including “C8-C16
isoparaffins, for instance Isopar L, E, G or H®, mixtures thereof” (Girier
Dufournier ¶¶ 111, 118).
3. Girier Dufournier teaches the “volatile oils may be present in
the soft-focus composition . . . especially in a content ranging from 20% to
75% by weight” (Girier Dufournier ¶ 120).

2 Girier Dufournier et al., US 2005/0031658 A1, published Feb. 10, 2005.
3 Perry et al., TOSPEARL: Silicone Resin for Industrial Applications –
Chapter 36, pp. 533–43 in Clarson et al.; Silicones and Silicone-Modified
Materials ACS Symposium Series; American Chemical Society (2000).
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4. Girier Dufournier teaches fillers including “silicone elastomers
and silica powders of the Sunsphere type, silicone resin microbeads such as
those sold under the name Tospearl” that “may be present in amounts
ranging from 0.01% to 20% by weight and preferably from 1% to 10% by
weight” (Girier Dufournier ¶¶ 197–198).
5. Girier Dufournier, in claim 7, specifically prefers fillers
“especially about 8% by weight” (Girier Dufournier 10, claim 7).
6. Perry teaches: “Tospearl particles are crosslinked siloxanes
made by the controlled hydrolysis and condensation of methyltri-
methoxysilane. Their spherical nature, narrow particle size distribution and
chemical and thermal stability make them ideal for use in wear resistance,
antiblocking and light diffusing applications” (Perry 533, abstract).
7. Girier Dufournier teaches “poly(C1-C20)alkylsiloxanes and
especially those containing trimethylsilyl end groups, preferably those with a
viscosity of less than 0.06 m2/s [60,000 mm2/s], among which mention may
be made of linear polydimethylsiloxanes and alkylmethylpolysiloxanes such
as cetyldimethicone” (Girier Dufournier ¶ 125).
8. Girier Dufournier claims a “[p]rocess according to any one of
the preceding claims, characterized in that the composition comprises a
nonvolatile fatty fraction present in a proportion . . . especially from 1 % to
30% by weight” (Girier Dufournier 11, claim 16).
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9. The Examiner acknowledges Girier Dufournier “does not
directly exemplify in a singular example the components” which are recited
in the claim, and relies upon some selection from lists of compounds, but
does find Girier Dufournier teaches “ranges that overlap with the instantly
claimed ratios” (Final Act. 4).
10. The Examiner finds:
Girier Dufournier does teach the solubilizer as present in an
amount of 1-30% (for instance, claim 16), wherein the silicone
elastomer is taught as being present in an amount of 1-12% . . .
especially 8% (for instance, claim 17). When the silicone
elastomer is at 8% . . . the ratio of solubilizer to silicone
elastomer is 1:3.75 (8%:30%) to 8:1 (8%:1%). Therefore, the
overlap of the ratio range is 2:1 to 8:1 (not including the
flexibility of the term "about" in the instantly claimed ratio
range) this significantly overlaps with the instantly claimed
range, particularly the narrowly claimed range of about 3:1 to
about 10:1.
(Ans. 6).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Prima facie obviousness can be rebutted by presenting evidence of
secondary considerations and when such evidence is submitted, all of the
evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472–73
(Fed. Cir. 1984).
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Analysis
Prima facie obviousness
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 3–5, FF 1–10). We agree that the cited prior art renders the
claims obvious. We address Appellant’s arguments below.
Appellant contends “that there is no clear guidance in Girier
Dufournier to arrive at the instantly claimed components. Therefore, the
Examiner’s rejection is conclusory” (Appeal Br. 8).
We find this argument unpersuasive because Girier Dufournier
specifically teaches a cosmetic composition that may be composed of listed
components including isoparaffin in amounts from 20% to 75% by weight
(FF 1–3), fillers like the silicone elastomer Tospearl in amounts about 8% by
weight (FF 4–6), and solubilizers like polydimethylsiloxanes with viscosities
below 60,000 mm2/s (FF 7).
In particular, we reject Appellant’s position that equates obviousness
with anticipation and requires a prior art example in order to render a claim
obvious. Indeed, “picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant must be
afforded an opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the subject matter which
he claims to the prior art.” In re Arkley, 455 F.2d 586, 587–88 (CCPA
1972). Here, where the picking is from lists disclosed in Girier Dufournier,
selection from such lists would have been obvious because the claims
“recite[] a combination of elements that were all known in the prior art, and
all that was required to obtain that combination was to substitute one well-
known . . . agent for another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA
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LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). It is not conclusory to find that
a reference teaching compositions composed of lists of elements renders a
particular composition selected from those lists obvious.
Appellant contends
that one of skill in the art would not selectively choose the
specific weight ratio between the solubilizer and the silicone
elastomer in order to prevent phase separation between
isoparaffin base oil and silicone elastomer. Appellants assert
that this is not mere routine optimization of components, as the
Office Action asserts. Further, Girier Dufournier provides no
guidance on how to selectively choose the specific weight ratio
between the solubilizer and the silicone elastomer in order to
prevent phase separation between isoparaffin base oil and
silicone elastomer. Girier Dufournier is talking about fil[l]ers -
there is no guidance on [how] to selectively choose the specific
weight ratio between the solubilizer and the silicone elastomer
in order to prevent phase separation between isoparaffin base
oil and silicone elastomer. Therefore, the Examiner’s rejection
is conclusory.
(Appeal Br. 9; cf. Appeal Br. 10).
We are not persuaded. As the Examiner explains, selecting the
preferred filler concentration and the preferred range of solubilizer
concentrations in Girier Dufournier necessarily results in weight ratios
between 1:3.75 (8%:30%) to 8:1 (8%:1%) that fall within the range required
by claim 1 (FF 10). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.”)
We agree with the Examiner that the ordinary skilled artisan would
optimize to select preferred weight ratios suggested by the Girier Dufournier
reference. “[D]iscovery of an optimum value of a result effective variable in
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a known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980). Here, the ranges demonstrate that the filler and
solubilizer concentrations were results effective variables and that
optimizing them would have been routine. In re Aller, 220 F.2d 454, 456
(CCPA 1955). That Appellant chose to represent the optimized weights for
each component as a ratio of the two components rather than simply giving
amounts for each component that would result in those ratios does not render
the ratios unobvious given that the preferred values in Girier Dufournier
result in an overlapping ratio range (FF 10).
Appellant also argues that the claimed composition avoids phase
separation (see, e.g., Appeal Br. 9). As to the issue of phase separation, that
the prior art has a different basis for selection of the ranges in Girier
Dufournier that result in ratios that fall within the ratio range recited by
claim 1 is of no moment as long as there is a sufficient reason to make the
selection of these ranges. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996) (“[T]he motivation in the prior art to combine the references does not
have to be identical to that of the applicant to establish obviousness.”) Here,
Girier Dufournier specifically suggests and prefers both 8% filler in claim 7
(FF 5) and 1–30% non-volatile silicone in claim 16 (FF 8), values that
necessarily result in ratios within the ranges required by claim 1. We also
note that claim 1 does not include a recitation requiring that the ratio results
in preventing phase separation. Therefore, as to the phase separation issue,
“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”) In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
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Secondary Considerations
Appellant contends
that independent Claim 12 is directed to a non-volatile non-
amino modified silicone wherein the non-volatile silicone is
polydimethylsiloxane. Therefore, Appellant's examples are
in scope with this claim and thus allowable.
Specifically, Examples 1 through 9 are compositions of
the present invention which are particularly useful for leave-on
use. The embodiments disclosed and represented by the
previous “Ex. 1” through “Ex. 9” have many advantages. For
example, they provide a balanced dry performance. They also
provide improved stability, especially reduced phase separation
of silicone elastomer at lower temperature. They also have a
clear product appearance.
Such advantages can be understood by the comparison
between the examples of the present invention and comparative
examples “CEx. I” through “CEx. iii”.
(Appeal Br. 11).
We are not persuaded. As Appellant notes, claim 1 is not limited to
the claimed silicone elastomer being polydimethysiloxane, amounts of
which are used in every example. Therefore, the results are clearly not
commensurate in scope with claim 1, Unexpected results must be
“commensurate in scope with the degree of protection sought by the claimed
subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Claim 12, however, is limited to polydimethysiloxane. However,
even as to this claim, we find the argument unpersuasive because the
Specification never identifies the results as surprising or unexpected. “[A]ny
superior property must be unexpected to be considered as evidence of non-
obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007). “It is well settled that unexpected results must be established by
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factual evidence. Mere argument or conclusory statements . . . [do] not
suffice.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). The only indication
that any of these properties constitutes an unexpected result is attorney
argument in the brief. However, “attorney argument [is] not the kind of
factual evidence that is required to rebut a prima facie case of obviousness.”
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
We also note that there was no comparison with the closest cited prior
art of Girier Dufournier. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
Also, Appellant provides no evidence that the changes shown are
different in kind. See In re Huang, 100 F.3d 135, 139 (Fed.Cir.1996)
(holding that claimed ranges must “produce a new and unexpected result
which is different in kind and not merely in degree from results of the prior
art”). The Court explained that a “32–43% increase in stress-rupture life,
however, does not represent a ‘difference in kind’ that is required to show
unexpected results.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Here, no evidence of the magnitude of the change is provided, and certainly
there is no showing of a “difference in kind.”
Conclusion of Law
(i) A preponderance of the evidence of record supports the Examiner’s
conclusion that Girier Dufournier and Perry render the claims obvious.
(ii) Appellant has not provided evidence of unexpected results that,
when considered with the prima facie case, results in a finding that the
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evidence considered as a whole does not support the obviousness of claims 1
and 12.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 9–12 103(a) Girier Dufournier,
Perry
1, 4, 9–12

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