The Procter & Gamble Company

Patent Trials and Appeals Board

Dec 18, 2020

2020003390 (P.T.A.B. Dec. 18, 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.
14/174,317 02/06/2014 Kenji NMN TAKAHASHI AA864 4243
27752 7590 12/18/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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):
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 KENJI NMN TAKAHASHI
__________

Appeal 2020-003390
Application 14/174,317
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
TAWEN CHANG, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method of
preparing antidandruff compositions.1 The Examiner rejected the claims as obvious
and on the ground of nonstatutory obviousness-type double patenting. 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 Feb. 6, 2014 (“Spec.”); Final
Office Action of Apr. 8, 2019 (“Final Action”); Appeal Brief of Sept. 9, 2019
(“Appeal Br.”); and Examiner’s Answer of Dec. 12, 2019 (“Ans.”).
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Statement of the Case
Background
“A common method of providing [hair] conditioning benefit is through the use
of conditioning agents such as cationic surfactants and polymers, high melting point
fatty compounds, low melting point oils, silicone compounds, and mixtures thereof”
(Spec. 1:11–14). The Specification teaches using an “antidandruff agent selected
from metal pyrithiones” including zinc pyrithione (id. at 11:1–2, 5–6). “However, it
has been found that, in such compositions containing zinc pyrithione, the zinc
pyrithione often forms agglomeration” that “may provide undesirable product
appearance, and/or sticking to manufacturing equipment (id. at 1:31–32, 2:1–2).
The Specification teaches “a need for a method for preparing antidandruff hair
conditioning compositions, to provide reduced agglomeration, especially reduced
larger particle size of agglomeration of antidandruff agents” (Spec. 2:3–5).
The Claims
Claims 1–4, 7, and 11 are on appeal. Independent claim 1 is representative and
reads as follows:
1. A method of preparing a antidandruff compositions,
wherein the composition comprises:
(a) a cationic surfactant system;
(b) a high melting point fatty compound having a melting
point of from about 40° to about 65°C;
(c) aqueous carrier;
(d) an antidandruff agent selected from metal pyrithiones;
and wherein the method comprises the steps of:
(1) mixing the cationic surfactant system, high melting point
fatty compound and aqueous carrier to form an emulsion;
(2) adding the antidandruff agent to the emulsion having a
temperature of from about 48°C to about 55°C wherein the total
level of the cationic surfactant system and high melting point fatty
compound is 5.0% or less and wherein the composition further
contains silicone compounds selected from the group consisting of
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aminosilicone, silicone copolyol, aminosilicone copolyol,
quaternized silicone, quaternized silicone copolyol, and mixtures
thereof.
The issues
A. The Examiner provisionally rejected claims 1–4, and 7 on the ground of
nonstatutory double patenting as being unpatentable over claims 1–4, 6–9 and 11 of
copending Application No. US 14/1743772 (Final Act. 8).
B. The Examiner provisionally rejected claim 11 on the ground of nonstatutory
double patenting as being unpatentable over claims 1–9 and 11 of copending
Application No. US 14/174377 in view of Chuchotiros3 and Shiah4 (Final Act. 8–9).
C. The Examiner provisionally rejected claims 1–4, and 7 on the ground of
nonstatutory double patenting as being unpatentable over claims 1–5, 7 and 8 of
copending Application No. 14/174,3625 (Final Act. 9).
D. The Examiner provisionally rejected claim 11 on the ground of nonstatutory
double patenting as being unpatentable over claims 1–5, 7 and 8 of copending
Application No. 14/174,362 in view of Chuchotiros and Shiah (Final Act. 8–9).
E. The Examiner rejected claims 1–3, 7, and 11 under 35 U.S.C. § 103(a) as
obvious over Uehara, Sakai, and Chuchotiros (Final Act. 2–6).
F. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as obvious over
Uehara, Sakai, Chuchotiros, and Deckner (Final Act. 6).

A.–D. Obviousness-type Double Patenting

2 This application issued as Takahashi et al., US 10,226,404 B2, Mar. 12,
2019.
3 Chuchotiros et al., US 8,153,572 B2, issued Apr. 10, 2012.
4 Shiah, C., US 4,173,453, issued Nov. 6, 1979.
5 This application issued as Takahashi, K., US 9,974,718 B2, May 22, 2018.
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Appellant does not dispute the rejection of the claims based on obviousness-
type double patenting on the merits (See generally Appeal Br.). Appellant has also
not filed a terminal disclaimer that would otherwise moot the obviousness-type double
patenting rejection. We therefore summarily affirm the obviousness-type double
patenting rejections over copending Application No. 14/174,377 that matured into US
10,226,404 and copending Application No. 14/174,362 that matured into US
9,974,718. See Manual of Patent Examining Procedure § 1205.02 (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief, that ground
of rejection will be summarily sustained by the Board.”); see also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of
rejection to the Board . . . the Board may treat any argument with respect to that
ground of rejection as waived.”)

E. 35 U.S.C. § 103(a) over Uehara, Sakai, and Chuchotiros
The issue with respect to this rejection is: Does a preponderance of the evidence
of record support the Examiner’s conclusion that Uehara, Sakai, and Chuchotiros
render the claims obvious?
Findings of Fact
1. Uehara teaches
a hair conditioning composition comprising: (a) a quaternized silicone
polymer; (b) a grafted silicone copolyol; (c) a cationic surfactant system
comprising a dialkyl quaternized ammonium salt cationic surfactant; (d)
a high melting point fatty compound; and (e) an aqueous carrier. The
present invention provide improved conditioning benefits such as smooth
feel and reduced friction in conditioning compositions.
(Uehara ¶ 2).
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2. Uehara teaches, regarding element (a) of claim 1, that a “cationic
surfactant system comprising di-alkyl quaternized ammonium salt cationic surfactants
provides improved friction reduction benefit” (Uehara ¶ 34).
3. Uehara teaches, regarding element (b) of claim 1, including “from about
1% to about 20% by weight of the composition of a high melting point fatty
compound” (Uehara ¶ 10).
4. Uehara teaches, regarding element (b) of claim 1, “[p]referred fatty
alcohols include, for example, cetyl alcohol” (Uehara ¶ 52).
5. Table 4 of Chuchotiros is reproduced, in part, below:

“Table 4 shows the transition temperatures of compositions” (Chuchotiros 9:13–28).
6. Uehara teaches, regarding element (c) of claim 1, including “an aqueous
carrier” (Uehara ¶ 10).
7. Uehara teaches, regarding element (d) of claim 1, that a “wide variety of
other additional components can be formulated into the present compositions. These
include: . . . agents such as zinc pyrithione” (Uehara ¶ 77).
8. Uehara teaches, regarding step (1) of claim 1, that a “cationic
surfactant and the high melting point fatty compound are combined with the water to
form a mixture” (Uehara ¶ 58).
9. Uehara teaches, regarding step (2) of claim 1, that
After mixing until no solids are observed, the mixture is gradually cooled
(e.g., at a rate of from about 1° C./minute to about 5° C./minute) to a
temperature below 60° C., preferably less than about 55° C. During this
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gradual cooling process, a significant viscosity increase is observed at
between about 55° C. and about 75° C. This indicates the formation of
gel matrix. The high molecular weight water-soluble cationic polymer
can be added to the mixture with agitation at about 55° C., or prior to the
cooling down. Additional components are then combined with the gel
matrix, and cooled to room temperature.
(Uehara ¶ 58; emphasis aded).
10. Uehara teaches, regarding the use of silicone compounds in step (2) of
claim 1, including “from about 0.1% to about 15% of a silicone polymer containing
quaternary groups” (Uehara ¶ 10).
11. Sakai teaches, regarding components (a), (b), (c), and (d) of claim 1, “a
hair conditioning composition containing an antidandruff agent” (Skai 1:7–8) that
comprises:
(a) from about 0.1 % to about 15% of a high melting point fatty
compound having a melting point of 25° C. or higher;
(b) from about 0.1 % to about 10% of a cationic conditioning
agent; . . .
(d) a safe and effective amount of an antidandruff agent; . . . (f)
an aqueous carrier.
(Sakai 2:19–33).
12. Sakai teaches anti-dandruff compositions such as the “zinc salt of 1-
hydroxy-2-pyridinethione known in the art as zinc pyrithione” (Sakai 5:28–30).
13. Sakai teaches, regarding step (1) of claim 1, the hair condition
composition may be
suitably made as follows: when included in the composition, polymeric
materials such as polypropylene glycol are dispersed in water at room
temperature to make a polymer solution, and heated up 65 to above 70°
C. Amidoamine and acid, and when present, other cationic surfactants,
ester oil of low melting point oil are added in the solution with agitation.
Then high melting point fatty compound, and when present, other low
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melting point oils and benzyl alcohol are also added in the solution with
agitation.
(Sakai 24:61 to 25:3).
14. Sakai teaches, regarding step (2) of claim 1, that the “mixture thus
obtained is cooled down to below 60° C., and the remaining components such as zinc
pyrithione, silicone compound, and menthol are added with agitation, and further
cooled down to about 30° C” (Sakai 25:3–6).
15. Sakai also teaches, regarding step (2) of claim 1, that silicone compounds
may be used, specifically “[p]olyalkyleneoxide-modified siloxanes useful herein
include, for example, polypropylene oxide modified and polyethylene oxide modified
polydimethylsiloxane” (Sakai 16:5–7).
16. Sakai teaches, in Example 7, a composition comprising (a) 0.75%
ditallow dimethyl ammonium chloride (a cationic surfactant system), (b) 0.96% cetyl
alcohol (a high melting point fatty acid), (c) deonized water q.s. to 100%, and (d) 2%
zinc pyrithione (Sakai 23:57 to 24:22, Example 7). Sakai teaches these compositions
were prepared by combining water and a polymeric material with amidoamine
cationic surfactant and the high melting point fatty compound at temperatures about
70°C, and then cooling to below 60°C to add zinc pyrithione (see FF 14).
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).
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Analysis
Except as otherwise noted, we adopt the Examiner’s findings of fact and
conclusion of law (see Final Act. 2–6, FF 1–15) and agree that Uehara, Sakai, and
Chuchotiros render claim 1 obvious. We address Appellant’s arguments below.
Appellant contends
the purpose of the present invention, as previously amended and claimed,
is to provide a method for preparing an antidandruff hair conditioning
composition having reduced agglomeration of antidandruff agents.
Uehara in view of Sakai as evidenced by Chuchotiros does not recognize
or make awareness of the agglomeration problem per se. Furthermore,
Uehara in view of Sakai as evidenced by Chuchotiros does not disclose
or make awareness of conditions which cause more agglomerations
and/or larger agglomerations. Thus, Uehara in view of Sakai as
evidenced by Chuchotiros provides no motivation to achieve the present
invention.
(Appeal Br. 7). Appellant further contends the “Final Office Action fails to state any
articulated reasoning with some rational underpinning to support the legal conclusion
of obviousness. Therefore, the Examiner’s rejection is conclusory” (id. at 8).
We find these arguments unpersuasive. A “person of ordinary skill has good
reason to pursue the known options within his or her technical grasp. If this leads to
the anticipated success, it is likely the product not of innovation but of ordinary skill
and common sense.” KSR, 550 U.S. at 421.
First, Uehara alone reasonably suggests the method of claim 1.6 Uehara
suggests preparing a composition composed of (a) cationic surfactant system (FF 1–
2), (b) a high melting point fatty acid such as cetyl alcohol (FF 3–5), (c) aqueous
carrier (FF 6), and (d) zinc pyrithione (FF 7). Uehara teaches the method of preparing

6 We note the Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground of
rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961).
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the composition begins with a step (1) where “cationic surfactant and the high melting
point fatty compound are combined with the water to form a mixture” (FF 8).
While the Examiner states regarding step (2) of claim 1 that “Uehara does not
specifically disclose the range of temperature at which zinc pyrithione is added” (Final
Act. 4), this statement is not actually correct.
Uehara teaches the mixture of step (1) is cooled “to a temperature . . .
preferably less than about 55° C. . . . The high molecular weight water-soluble
cationic polymer can be added to the mixture with agitation at about 55° C. . . .
Additional components are then combined with the gel matrix” (FF 9). Uehara’s
teaching of “additional components” that may be added at 55°C includes specified
“additional components . . . such as zinc pyrithione” (FF 7). Thus, the ordinary
artisan would have reasonably followed Uehara’s guidance to add zinc pyrithione at
about 55°C. Consequently, Uehara alone suggests all the elements of the claim.
Second, even if we accepted the Examiner’s misunderstanding of Uehara to
require the teaching of Sakai that the “mixture thus obtained is cooled down to below
60° C., and the remaining components such as zinc pyrithione, silicone compound,
and menthol are added with agitation” (FF 14), we find the combination obvious
because the “combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at
416. Here, Appellant provides no evidence of unpredictability or other secondary
consideration when adding zinc pyrithione at temperatures below 60° C.
We also note that Appellant has not explained whether the examples in the
Specification include the closest prior art of Example 7 of Sakai (FF 16), nor
demonstrated results commensurate in scope with claim 1 broadly drawn to any
cationic surfactant system, any high melting point fatty compound, and any metal
pyrithione along with the large number of silicone compounds. Moreover, even if one
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of the Specification examples is Example 7 of Sakai, the Specification does not state
that any reduced agglomeration is unexpected or surprising.
Third, again if we accept the Examiner’s Uehara position, we note that “where
the general conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re Aller,
220 F.2d 454, 456 (CCPA 1955). In the current context, where Uehara teaches
addition of additional components at 55°C, the ordinary artisan would routinely
optimize addition of known desirable components based on the knowledge in the prior
art (see FF 9). In this case, Sakai in the same art suggests that an optimal temperature
for adding zinc pyrithione is below 60°C (FF 14). It would have been obvious to
optimize this addition temperature. Aller, 220 F.2d at 456.
Appellant contends “the piecemeal reconstruction of an invention by assertedly
finding its individual elements in disparate documents and then combining them to
arrive at the invention is not the standard of §103. Such hindsight reconstruction of
the invention is impermissible” (Appeal Br. 9).
We are not persuaded. While we are aware that hindsight bias may plague
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we
are also mindful that the Supreme Court has clearly stated that the “combination of
familiar elements according to known methods is likely to be obvious when it does no
more than yield predictable results.” KSR, 550 U.S. at 416. The process of claim 1 at
best is simply the combination of familiar elements that yields predictable results and
is therefore obvious because combining known methods of adding components such
as zinc pyrithione to hair conditioning compositions at known temperatures represents
selection of known options available to the ordinary artisan. “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
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Appellant contends based on “the disclosure, as originally filed, that Sakai
teaches away from the present invention. If one of skill in the art were to follow the
disclosure of Sakai, one would not arrive at the present invention” (Appeal Br. 10).
We find this argument unpersuasive for several reasons. First, while Appellant
contends that following Example 7 of Sakai would result in agglomerations (see Spec.
1:31 to 2:2), claim 1 does not exclude the presence of agglomerations. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”) Second,
Appellant does not identify any teaching in either Uehara or Sakai that criticizes,
discredits, or otherwise discourages the addition of zinc pyrithione at a temperature of
55°C along with silicone compounds. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed.”) The only
teaching that Sakai’s process results in agglomerations is provided by a statement in
the Specification and no evidence that the closest prior art of Example 7 of Sakai
generates agglomerations is provided.
Appellant contends
that Uehara cooling down to about 55°C and no other cooling step
mentioned other than cooling to room temperature - which may be
approximately 20 to 25°C, does not provide a person of ordinary skill in
the art to consider adding the antidandruff agent at 48°C to about 55°C,
as required by Claim 1.
(Appeal Br. 11).
We are not persuaded. Uehara expressly teaches that the “cationic polymer can
be added to the mixture with agitation at about 55°C., or prior to cooling down.
Additional components are then combined with the gel matrix, and cooled to room
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temperature” (FF 9). The plain understanding of Uehara’s language is that additional
components, which Uehara expressly teaches may include zinc pyrithione (FF 7), are
added prior to cooling down, when the mixture remains at 55°C (FF 9). Uehara’s
teaching to add “prior to cooling down” provides an express reason to the ordinary
artisan to add at temperatures such as the 55°C temperature of the mixture prior to the
cooling down phase. This teaching, in combination with Sakai’s teaching to also add
zinc pyrithione before cooling down at temperatures below 60°C, reasonably suggests
optimizing adding zinc pyrithione at temperatures within the range recited by claim 1.
Appellant contends “Uehara in view of Sakai as evidenced by Chuchotiros does
not recognize th[e] purpose [of the claimed invention] and does not provide the
technical features for achieving this purpose” (Appeal Br. 13).
We find this argument unpersuasive. That the prior art has a different basis to
combine Uehara and Sakai is of no moment as long as there is a sufficient reason to
make the combination. 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.”). KSR provides the reasoning that the
“combination of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Appellant provides no evidence of unpredictable results relative to the closest prior art
of Example 7 of Sakai.
Conclusion of Law
A preponderance of the evidence of record support the Examiner’s conclusion
that Uehara, Sakai, and Chuchotiros render the claims obvious.

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F. 35 U.S.C. § 103(a) over Uehara, Sakai, Chuchotiros, and Deckner
Claim 4
Appellant recites the same arguments as those recited for claim 1, and does not
address the specific limitation of claim 4 that “the perfume has a Dielectric Constant
(DC) of 15 or lower.” That is, while Appellant recognizes that Deckner is added to
teach perfume oils with dielectric constants below 15 (see Appeal Br. 13–14),
Appellant does not argue that the limitation of claim 4 is unobvious, but rather
reiterates the arguments addressed above regarding claim 1 and agglomeration (see
Appeal Br. 14–17). We remain unpersuaded for the reasons given above.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–4, 7 Double
Patenting
US 14/174, 377 1–4, 7
11 Double
Patenting
US 14/174, 377,
Chuchotiros,
Shiah
11
1–4, 7 Double
Patenting
US 14/174,362 1–4, 7
11 Double
Patenting
US 14/174,362,
Chuchotiros,
Shiah
11
1–3, 7, 11 103 Uehara, Sakai,
Chuchotiros
1–3, 7, 11
4 103 Uehara, Sakai,
Chuchotiros,
Deckner
4
Overall 1–4, 7, 11
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Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
Outcome

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

AFFIRMED