The Procter & Gamble Company

Patent Trials and Appeals Board

Apr 26, 2021

2020005041 (P.T.A.B. Apr. 26, 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.
14/271,021 05/06/2014 Jennifer Mary Marsh 12874M 6610
27752 7590 04/26/2021
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
RIGGS II, LARRY D
ART UNIT PAPER NUMBER
1658
NOTIFICATION DATE DELIVERY MODE
04/26/2021 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 JENNIFER MARY MARSH, TOSHIYUKI IWATA,
and PHAN SHEAN LIM1
____________

Appeal 2020-005041
Application 14/271,021
Technology Center 1600
____________

Before FRANCISCO C. PRATS, JOHN G. NEW, and TAWEN CHANG,
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. Appellant identifies The Procter & Gamble Company of
Cincinnati, Ohio as the real party-in-interest. App. Br. 1.

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Application 14/271,021

2

SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 31–34 as unpatentable under 35 U.S.C.
§ 103 as being obvious over the combination of Ellis et al. (US
2001/0008631 A1, July 19, 2001) (“Ellis”) and Okada et al. (US
2009/0324527 A1, December 31, 2009) (“Okada”), and as evidenced by P.
Deschamps et al., The Saga of Copper(II)-L-Histidine, 249 COORDINATION
CHEM. REVS. 895–909 (2004) (“Deschamps”) and G. Eby, Stability
Constants (logK1) of Various Metal Chelates, in Sequestrants in Foods
(Chapter 6), CRC HANDBOOK OF FOOD ADDITIVES, 2d Ed. (T.E. Furia, ed.)
(1972) (“Eby”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to a hair care composition
having from about from about 0.025% to about 0.25% by weight of the
composition of histidine. Spec. Abstr.

REPRESENTATIVE CLAIM
Independent claim 31 is representative of the claims on appeal and
recites:
31. A stable hair care composition comprising:

a. from about 0.025% to about 0.15% by weight of the
composition of histidine; and

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b. a gel matrix comprising:

i. from about 1 % to about 15% by weight of
one or more high melting point fatty
compounds selected from the group
consisting of cetyl alcohol, stearyl alcohol,
and mixtures thereof;

ii. from about 0.8% to about 10% by weight of
a cationic surfactant system comprising
cationic surfactant having a single straight
alkyl chain with 22 carbon atoms, by weight
of said hair care composition; and

iii. at least 20% of an aqueous carrier, by weight
of said hair care composition; and

c. from about 0.2 % to about 5 % by weight a silicone
conditioning agent wherein the composition remains
stable as measured by no yellowing of the composition.

App. Br. 6.

ISSUES AND ANALYSIS
We agree with, and adopt, the Examiner’s findings, reasoning, and
conclusion that the claims are obvious over the combined cited prior art. We
address below the arguments raised by Appellant.

Issue
Appellant argues that the Examiner erred because a person of ordinary
skill in the art would not have been motivated to select the elements of claim
31 from the teachings of Ellis. App. Br. 2.

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Analysis
The Examiner finds that Ellis teaches hair-conditioning compositions
comprising 0.005–0.5%, and optimally 0.1–0.3%, basic amino acid by
weight, with L-histidine and DL-histidine, and ester derivatives thereof
taught as being suitable basic amino acids. Final Act. 3 (citing Ellis ¶¶ 15–
18, 20). The Examiner finds that the compositions taught by Ellis further
comprise a fatty alcohol such as cetyl alcohol, stearyl alcohol, and mixtures
thereof, in amounts of 0.01–10%, and preferably 0.1–5%, by weight. Id. at 4
(citing Ellis ¶¶ 87–89, Ex. 3).
The Examiner also finds that Ellis generally teaches that its
compositions comprise approximately 0.1–10 wt% of a cationic surfactant
system, and expressly teaches behenyl trimethylammonium chloride, as a
suitable species. Final Act. 4 (citing Ellis ¶¶ 78, 80, 86). The Examiner
notes that behenyl trimethylammonium chloride is a cationic surfactant
having a single straight alkyl chain with 22 carbon atoms, as recited in claim
31). The Examiner finds that Ellis teaches an aqueous solvent as the
preferred carrier in its compositions, which comprise more than 20% water.
Id. (citing Ellis ¶ 107, Ex. 1–3).
Furthermore, the Examiner finds, Ellis teaches silicone conditioning
agents as particularly preferred ingredients in its compositions, in amounts
of 0.3–5 wt%. Final Act. 4 (citing Ellis ¶¶ 90–106). The Examiner points
out that the concentrations for all of constituents taught by Ellis lie within or
overlap the claimed ranges, which supports a prima facie case of
obviousness. Id. (citing In re Wertheim, 541 F.2d 257, 271 (C.C.P.A.
1976)).
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The Examiner acknowledges that Ellis does not teach that the
composition yellows. Final Act. 4. However, the Examiner finds that Ellis
teaches that the pH of the composition is adjusted to 6–7 by adding acid,
such as citric acid. Id. (citing Ellis ¶¶ 35, 37, 84–85, 115, Ex. 1). The
Examiner points out that Appellant’s Specification discloses that yellowing
is minimized by reducing the pH to about 4.7–7.3, by the addition, e.g., of
citric acid. Id. (citing Spec. ¶ 126). The Examiner therefore reasons that the
compositions of Ellis can be considered to inherently meet the limitation of
claim 31 regarding no yellowing of the composition, absent any evidence to
the contrary.
The Examiner further finds that, with respect to claims 32–33, Ellis
teaches that its compositions may also comprise chelating agents (e.g.,
EDTA), vitamin E derivatives, fragrances, antimicrobials, and coloring
agents. Final Act. 4 (citing Ellis ¶ 108).
The Examiner reasons that Ellis inherently teaches a gel matrix, as
recited in the claims, by teaching shampoo/conditioning compositions,
which are typically “gels” within the meaning of the claims on appeal. Final
Act. 5. However, the Examiner also relies upon Okada as expressly teaching
a similar composition constituting “gel matrix” within the meaning of the
instant claims. Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to compose the compositions of Ellis by (1)
combining the behenyl trimethylammonium cationic surfactant with the high
melting point fatty compounds (e.g., cetyl alcohol and/or stearyl alcohol)
and the aqueous carrier and (2) forming a gel matrix, to provide improved
stability and conditioning benefits, such as slippery feel during the
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application to wet hair and softness and moisturized feel on dry hair, product
appearance, and rheology, as taught by Okada. Final Act. 6 (citing Okada ¶¶
17–18, 47, 55, 113). The Examiner reasons that a skilled artisan would have
been motivated to combine the elements of Ellis in the form of a gel matrix,
yielding a product with a richer, thicker, and/or more concentrated product
appearance, as taught by Okada. Id. (citing Okada ¶ 7)
Appellant argues that a person of ordinary skill in the art would not
have been motivated to select the constituents comprising histidine and a
cationic surfactant comprising a C22 alkyl moiety, because, Appellant
asserts, Ellis does not suggest these elements. App. Br. 2–3.
Appellant also argues that the Examiner has failed to demonstrate that
a skilled artisan would have been motivated to: (1) modify the teachings of
the Ellis and Okada, neither of which are technically similar to the crux of
Appellant’s invention (viz., selective metal chelation without impacting hair
care composition integrity); 2) consider and combine the teachings of Ellis
and Okada, from among all the prior art concerning hair care compositions;
3) modify Ellis based on only certain teachings of a reference with much
different disclosure and that is directed to a different problem and solution,
and 4) without any motivation to do so–other than the fact that the individual
elements of the claims are found in multiple references discussing hair care
compositions–combine the specific teachings from Ellis and Okada to arrive
at a composition of Appellants' claims. Id. Appellant alleges that the
Examiner has impermissibly relied upon hindsight analysis in constructing a
prima facie case of obviousness. Id.
Alternatively, Appellant argues, even if the Examiner has established
a prima facie case of obviousness, any such case is overcome by the
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showing of unexpected results in Appellant’s Specification. App. Br. 3
(citing Spec. 2–3, 31–32). Appellant points to the Specification’s disclosure
that:
It has been found that a chelant having a high Stability Constant
for Copper (KCuL) in combination with a low Stability Constant
for Calcium (KCaL) will demonstrate a sufficient level of
selective affinity for these redox metals and thus inhibit the
deposition of the minerals onto hair. Chelants having this
selective affinity may also reduce the quantities of redox metals
already deposited. Suitable chelants for high affinity for
transition metals such as copper and iron generally have at least
one negative charge such as amino carboxylates or amino
phosphonates. However, chelants with a negative charge, for
example EDDS, can interfere with the stability of the product and
specifically form a precipitate with the cationic surfactants which
ultimately can lead to a difficulties maintaining the desired
viscosity of the conditioner, making it runny and not acceptable
for use. In addition the higher charged anionic materials increase
ionic strength of the system which can lead to phase separation.
Specifically, the longer chain cationic surfactants (C22) will
form a turbid solution when these anionic chelants are added,
even at low levels. (See Fig. 1) These longer chain surfactants
(C22) will be more sensitive to the addition of anionic chelants
than the shorter chain surfactants (C18) due to their higher
molecular weight. In addition, the longer chain C22 cationic
surfactants are more hydrophobic than C18 cationic surfactants
and have lower water solubility. The C22 cationic surfactants are
important to deliver a high level of wet hair feel conditioning
performance because the structures formed have a higher
percentage of lamella structure which drives deposition of
silicone and the surfactant/fatty alcohol gel matrix which
ultimately leads to improved wet conditioning performance vs.
the C18 cationic surfactants.

App. Br. 3–4 (quoting Spec. 2–3). Appellant argues that the claimed
conditioner composition thus comprises a “chelant that can inhibit the
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deposition of minerals in hair but not interfere with the stability of the
conditioner and its wet conditioning performance and deliver superior
conditioning performance.” Id.
Furthermore, contends Appellant the Specification discloses that:
To demonstrate the stability of histidine in a hair conditioning
composition, the histidine level in Example 1 was varied from
0% up to 0.25% and the viscosity was measured. The viscosity
remains stable with histidine at a level of 0.10% and 0.25%, as
demonstrated by the viscosity measurements included in Table
1.

App. Br. 4 (quoting Spec. 32–33, Table 1).
We are not persuaded by Appellant’s arguments. As an initial matter,
and contrary to Appellant’s contention that Ellis does not suggest
“compositions comprising histidine and a cationic surfactant comprising a
C22 alkyl moiety” (App. Br. 2–3), Ellis expressly teaches:
Compositions of the invention contain as a further essential
component, a hair benefit agent which is a mixture of a basic
amino acid and a fatty acid.
…
By “basic amino acid” is meant those amino acids having more
basic groups than carboxyl groups. Suitable basic amino acids
are L-arginine, DL-arginine hydrochloride, L-histidine, DL-
histidine, L-lysine, and DL-lysine. L-Arginine is particularly
preferred.

Ellis ¶¶ 14–15 (emphasis added). Ellis thus expressly teaches “histidine.”
Although Ellis teaches that L-arginine is “particularly preferred,” that does
not negate Ellis’ express teaching of histidine. In our obviousness analysis
“all disclosures of the prior art, including unpreferred embodiments, must be
considered.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
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(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A.
1976)). Histidine is one of a very small genus of basic amino acids taught
by Ellis as acceptable in its compositions.
Ellis also teaches:
Such a conditioner will comprise one or more conditioning
surfactants which are cosmetically acceptable and suitable for
topical application to the hair.

Suitable conditioning surfactants are selected from cationic
surfactants, used singly or in admixture.

Examples of suitable cationic conditioning surfactants include
quaternary ammonium cationic surfactants.

Suitable quaternary ammonium cationic surfactants for use in
hair conditioners of the invention include
cetyltrimethylammonium chloride, behenyltrimethylammonium
chloride,….

Ellis ¶¶ 77–80 (emphasis added). Behenyl trimethylammonium chloride is a
“cationic surfactant having a single straight alkyl chain with 22 carbon
atoms,” as recited in claim 1. See, e.g., Chemical Book, Behenyl Trimethyl
Ammonium Chloride, available at: https://www.chemicalbook.com/
ChemicalProductProperty_EN_CB31122373.htm (last visited April 16,
2021). Both histidine and behenyl trimethylammonium chloride are taught
by Ellis in ranges of concentrations that are within, or substantially overlap
those recited in claim 31. See Ellis ¶¶ 20, 86. Ellis thus expressly teaches
the constituents disputed by Appellant.
Appellant argues that a person of ordinary skill in the art would have
had no reason to modify the teachings of Ellis and Okada, neither of which
are technically similar to the crux of Appellant’s invention. App. Br. 3.
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However, both Ellis and Okada teach hair conditioner compositions (see
Ellis Abstr., Okada Abstr.), and Ellis expressly teaches the constituents and
concentration ranges recited in the claims, which, with the exception of
histidine and behenyl trimethylammonium chloride, Appellant does not
dispute.
Appellant also argues that the Examiner has failed to demonstrate that
a skilled artisan would have been motivated to “consider and combine the
teachings of Ellis and Okada, from among all the prior art concerning hair
care compositions.” App. Br. 3. Both Ellis and Okada are analogous art,
teaching hair conditioning compositions; Ellis expressly teaches the
constituents and concentration ranges recited in the claims, and Okada’s
compositions substantially overlap this teaching. Furthermore, a person of
ordinary skill is “presumed to be aware of all the pertinent prior art.”
Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir.
1985) (emphasis added). Consequently, the Examiner need not provide a
further motivation to seek out the cited references.
Appellant argues further that the Examiner has failed to demonstrate
why a person of ordinary skill in the art would have been motivated to
“modify Ellis based on only certain teachings of a reference with much
different disclosure and that is directed to a different problem and solution.”
App. Br. 3. We are not persuaded. Claim 31 is directed to a “stable hair
care composition.” As we have explained, Ellis and Okada are both directed
to hair care compositions, and Ellis expressly teaches all of the constituents
and concentration ranges recited by the claims on appeal. It is not necessary
to “modify” the teachings of Ellis when directly following its express
teachings and suggestions.
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Appellant’s alleged demonstration of “unexpected results” is no more
persuasive. As an initial matter, “when unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). In this instance, the closest prior art is the Ellis
reference, as cited by the Examiner. Appellant makes no showing of record
that the compositions of Ellis, which comply with the requirements of the
claimed composition, would not also possess the same allegedly unexpected
properties. Indeed:
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product.… Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977). Absent any such
comparative showing by Appellant, we are not persuaded that the claimed
composition possesses unexpected properties.
Furthermore, Appellant argues that its claimed conditioner
composition comprises a “chelant that can inhibit the deposition of minerals
in hair but not interfere with the stability of the conditioner and its wet
conditioning performance and deliver superior conditioning performance.”
See App. Br. 4 (citing Spec. 2–3).
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As an initial matter, we note that only dependent claim 33 recites a
“chelants” as part of a genus of “additional benefit agents,” without further
elaboration.
Moreover, Ellis teaches:
Compositions of this invention may contain any other ingredient
normally used in hair treatment formulations. These other
ingredients may include viscosity modifiers, preservatives,
colouring agents, polyols such as glycerine and polypropylene
glycol, chelating agents such as EDTA, antioxidants such as
vitamin E acetate, fragrances, antimicrobials and sunscreens.
Each of these ingredients will be present in an amount effective
to accomplish its purpose.

Ellis ¶ 108 (emphasis added). Ellis thus expressly teaches a “chelant” as an
additional constituent.
As for the properties of such a chelant, as argued by Appellant, viz.,
that it can “inhibit the deposition of minerals in hair but not interfere with
the stability of the conditioner and its wet conditioning performance and
deliver superior conditioning performance,” no such functional limitation is
recited in the claims on appeal. Consequently, these properties are not
limiting upon claim 33. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (holding that although the claims are interpreted in light of the
specification, limitations from the specification may not be read into the
claims).
Because we are not persuaded by Appellant that the Examiner has
either failed to establish a prima facie case, or that Appellant’s unexpected
results overcome any prima facie conclusion of obviousness, we affirm the
Examiner’s rejection of claims 31–34.

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CONCLUSION
The rejection of claims 31–34 as unpatentable under 35 U.S.C. § 101
is affirmed.

AFFIRMED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
31–34 103 Ellis, Okada 31–34