The Procter & Gamble Company

Patent Trials and Appeals Board

May 27, 2020

14174433 - (D) (P.T.A.B. May. 27, 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.
14/174,433 02/06/2014 Kristine Suzanne So YU AA907 4492
27752 7590 05/27/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
BERRIOS, JENNIFER A
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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 KRISTINE SUZANNE SO YU, MANNIE LEE CLAPP,
CHETAN KANTILAL YAGNIK, and MANIVANNAN KANDASAMY
____________

Appeal 2019-005461
Application 14/174,433
Technology Center 1600
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
ULRIKE W. JENKS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1, 2, and 9–12. 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 of Cincinnati, Ohio” (Appellant’s February 20, 2020
Appeal Brief (Br.) 1).
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Application 14/174,433

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STATEMENT OF THE CASE
Appellant’s disclosure “relates to a method of providing cleanness to
hair and/or scalp, for example, providing hair volume and/or providing less
oiliness on hair and/or scalp, by applying a hair care composition comprising
cationic surfactants, high melting point fatty compounds, metal pyrithione,
and metal salts other than metal pyrithiones” (Spec. 1: 4–7). Appellant’s
only independent claim, claim 1, is representative and reproduced below:
1. A method of providing cleanness to hair and/or scalp,
comprising following steps:
(i) after shampooing hair, applying to the hair and/or scalp an
effective amount of a hair care composition; and
(ii) then rinsing the hair;
wherein the hair care composition comprises by weight:
(a) from about 0.1% to about 10% of a cationic surfactant
system;
(b) from about 0.1% to about 20% of a high melting point fatty
compound, wherein the high melting point fatty compound is a
fatty compound having a melting point of 25° or higher;
(c) from about 0.01% to about 5.0% of a metal pyrithione
wherein the metal pyrithione is zinc pyrithione;
(d) from about 0.05% to about 10% of a metal salt other than
metal pyrithiones wherein the metal salt is basic zinc carbonate;
and
(e) an aqueous carrier wherein the composition further
comprises from about 0.01% to about 0.5% of polyquaternium-
6; wherein the polyquaternium-6 has a molecular weight of
from about 1,200 g/mol to about 150,000 g/mol; and wherein
the weight ratio of polyquaternium-6 to the metal pyrithione is
from about 1:5 to about 1:15.
(Br. 13.)

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Grounds of rejection before this Panel for review:2
Claims 1, 2, and 9–12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sakai,3 Schwartz,4 and Gross.5
Claims 1, 2, and 9–12 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–3, 6, 8, and 9 of copending Application No. 14/174,389 in view of
Schwartz and Sakai.
Claims 1, 2, and 9–12 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1, 6, and 9–15 of copending Application No. 14/174,401 in view of
Schwartz and Sakai.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Sakai discloses that “[a]ntidandruff hair conditioning compositions
are advantageous in that the composition is applied to the hair after the

2 Application 14/174,415 abandoned March 9, 2020. Thus, the provisional
nonstatutory obviousness-type double patenting rejection over claims 1 and
4–9 of this Application in view of Schwartz is moot and will not be
discussed further.
3 Sakai et al., US 6,979,439 B1, issued Dec. 27, 2005.
4 Schwartz et al., US 2004/0213751 A1, published Oct. 28, 2004.
5 Gross et al., WO 2010/130513 A2, published Nov. 18, 2010. Examiner
relies on Gross et al., US 2012/0058071 A1, published Mar. 8, 2012, as the
English language equivalent of WO 2010/130513 A2.
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shampoo stage, thus, effective deposition on the scalp can be expected”
(Sakai 1:28–31; see Ans.6 4).
FF 2. Sakai discloses:
[A] hair conditioning composition (hereafter “Hair care
composition B”) comprising by weight:
(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;
(c) from about 0.1% to about 10% of a low melting point oil
having a melting point of less than 25° C;
(d) a safe and effective amount of an antidandruff agent;
(e) a preservative system comprising, by weight of the entire
composition, from about 0.1% to about 1.0% of benzyl alcohol,
from about 0.1% to about 1.0% of phenoxy ethanol, from about
0.05% to about 1.0% of methyl paraben, and from about 0.01%
to about 1.0% of propyl paraben; and
(f) an aqueous carrier;
wherein the hair conditioning composition is substantially free
of the group selected from a chelating agent,
methylchloroisothiazolinone, and methylisothiazolinone.
(Sakai 2:16–36; see also id. Abstract; Ans. 4; Ans. 5 (citing Sakai 23–24:
Examples 7–8).)
FF 3. Sakai discloses cetyl alcohol, stearyl alcohol, and behenyl alcohol as
preferred high melting point fatty compounds (Sakai 4:13–17; see Ans. 4).
FF 4. Sakai discloses the use of 0.1% to about 5% zinc pyrithione as the
antidandruff agent (Sakai 5:25–33; see Ans. 4).

6 Examiner’s May 8, 2019 Answer.
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FF 5. Sakai discloses that
hair conditioning composition B of the present invention
comprises a cationic conditioning agent. This cationic
conditioning agent, together with the high melting point fatty
compounds, provide a gel network suitable for providing
various conditioning benefits such as slippery and slick feel on
wet hair, and such as softness, moisturized feel, and fly-away
control on dry hair.
(Sakai 6:32–38; see id. at 18:16–17 (Sakai discloses that its composition
may “take the form of a rinse-off hair care composition”); Ans. 4 and 7.)
FF 6. Sakai’s “cationic conditioning agent is selected from the group
consisting of cationic surfactants, cationic polymers, and mixtures thereof,”
wherein preferred cationic surfactants include behenyl trimethylammonium
chloride, cetyl trimethyl ammonium chloride, ditallow alkyl dimethyl
ammonium chloride, dicetyl dimethylammonium chloride, etc. (Sakai 6:48–
50 and 7:24–35; see Ans. 4–5).
FF 7. Examiner finds that Sakai does not disclose a composition
comprising zinc carbonate (see Ans. 6).
FF 8. Schwartz discloses “a composition comprising an effective amount
of metal salts of pyrithione and an effective amount of a zinc containing
layered material which provides an augmentation factor greater than 1. . .
[and] methods for the treatment of dandruff and compositions, which
provide improved antidandruff activity” (Schwartz ¶ 2; see id. ¶ 5 (Schwartz
discloses that “[z]inc pyrithione is known as an anti-dandruff component in
shampoos”); id. ¶ 13 (Schwartz discloses that “zinc pyrithione . . . [is] a
well-known anti-microbial material”); id. ¶ 179 (Schwartz discloses that
“[z]inc pyrithione . . . is an effective antifungal material”); Ans. 6).
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FF 9. Schwartz discloses that “[m]aterials which have little or no
independent activity, yet increase the activity of an anti-microbial material,
are ‘augmenting’ agents” (Schwartz ¶ 12).
FF 10. Schwartz discloses:
[T]he term augmentation is intended to mean enhancement of
the antifungal activity of a [zinc pyrithione]-containing
composition by the augmenting material to an extent sufficient
to permit the use of a lower amount of [zinc pyrithione] without
reducing the antifungal inhibition provided by the composition,
as compared to the antifungal inhibition that is provided by an
otherwise-identical [zinc pyrithione]-containing composition
that is free of the augmenting material.
(Schwartz ¶ 179.)
FF 11. Schwartz discloses that zinc-containing layered materials, such as
basic zinc carbonate, augment the anti-microbial, antifungal, activity of zinc
pyrithione (Schwartz ¶¶ 13, 28, and 179; see Ans. 6).
FF 12. Schwartz discloses a composition that includes “from about 0.001 %
to about 10% of a zinc-containing layered material” and “from about 0.01%
to about 5% of a pyrithione or polyvalent metal salt of a pyrithione”
(Schwartz ¶¶ 25 and 39; id. at pgs. 20–21:Example 55; see Ans. 6).
FF 13. Examiner finds that the combination of Sakai and Schwartz fails to
suggest a composition comprising “polyquaternium-6” (Ans. 7).
FF 14. Gross “relates to conditioning and/or cleaning hair-treatment agents
based on a special combination of an acetylpyridinium salt with a cationic
and/or zwitterionic surfactant, and use of the agent for increasing hair-
conditioning properties” (Gross ¶ 2; see Ans. 7).
FF 15. Gross discloses that compositions comprising 0.01–10 wt. %, and in
particular 0.1 to 3 wt. %, of a cationic polymer, such as polyquaternium-6
(i.e., Merquat®100), increases the deposition of active cosmetic skin- and
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hair-care substances, such as anti-dandruff agents (i.e., zinc pyrithione), and
provides skin and hair conditioning (see Gross ¶¶ 146, 153, and 166; see
also Ans. 7–8; see Ans. 8 (Examiner finds that Appellant’s Specification
discloses that “Merquat 100 has a[] Mw of 150,000 g/mol”)).
ANALYSIS
Based on the combination of Sakai and Schwartz, and Gross,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious “to modify the teachings of Sakai with
those of Schwartz and add 0.1-5% of basic zinc carbonate to the composition
of Sakai,” because “Schwartz teaches that basic zinc carbonate augments the
antifungal activity of [zinc pyrithione] containing compositions and the
combination of [zinc pyrithione] and zinc carbonate can be effectively used
to treat dandruff” (Ans. 6; see also id. at 6–7 (Examiner finds that “Schwartz
teaches that the use of [zinc pyrithione] and zinc carbonate are well-known
by those of skill in the art to be used to formulate antidandruff compositions
for hair.”); see also FF 1–12). In addition, based on the combination of
Sakai, Schwartz, and Gross, Examiner concludes that, at the time
Appellant’s invention was made, it would have been prima facie obvious “to
modify the teachings of Sakai and Schwartz with those of Gross and add
0.1-3% of polyquaternium-6, such as Merquat 100, to the anti-dandruff
composition of Sakai,” because “Gross teaches that said compound is well-
known to be a hair and skin conditioning agent and also increases the
deposition of active cosmetic hair care and skincare substances” (Ans. 8; see
FF 1–15). In this regard, Examiner reasons that a person of ordinary skill in
this art “would have [had] a reasonable expectation of success” formulating
such a composition because the combination of Sakai and Schwartz suggest
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antidandruff compositions comprising “conditioning additives . . . and Gross
teaches the polyquaternium-6 can be used in compositions which can further
comprise antidandruff agents such as zinc pyrithione” (Ans. 8; see FF 1–15).
The amount of each ingredient of the composition suggested by the
combination of Sakai, Schwartz, and Gross is the same as, overlaps with, or
falls within, the concentration range for each ingredient set forth in
Appellant’s claim 1 (see FF 2, 4, 12, and 15; cf. Br. 13). See In re Geisler,
116 F.3d 1465, 1468 (Fed. Cir. 1997) (Overlapping ranges support a prima
facie case of obviousness); Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1322 (Fed. Cir. 2004) (“[W]here there is a range disclosed in
the prior art, and the claimed invention falls within that range, there is a
presumption of obviousness.”). “[W]here[, as here,] 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). Thus, the concentration range for each
ingredient set forth in Appellant’s claim 1, is prima facie obvious over the
combination of Sakai, Schwartz, and Gross (see FF 1–15; see e.g., Ans. 8
(Examiner reasons, for example, that because Gross discloses a composition
comprising 0.1–3% polyquaternium-6, which overlaps with Appellant’s
claimed range of about 0.01–0.5%, and Sakai exemplifies a composition
comprising 2% zinc pyrithione, the combination of Sakai, Schwartz, and
Gross makes obvious a weight ratio of 1:0.66–20 polyquaternium-6 to metal
pyrithione, which overlaps Appellant’s claimed ratio)).
For the foregoing reasons, we find no error in Examiner’s prima facie
case of obviousness. Thus, we are not persuaded by Appellant’s contention
that the combination of Sakai, Schwartz, and Gross fails to make obvious
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Appellant’s claimed invention (Br. 8; see also id. at 9 (Appellant contends
that the combination of Sakai, Schwartz, and Gross fails to make obvious a
composition comprising the claimed range of polyquaternium-6)).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner “fail[ed] to state any articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness,”
and, therefore, “Examiner’s rejection is conclusory” (Br. 10; see also id. at
10–11 (Appellant contends that Examiner failed to “identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way [Appellant’s] claimed . . .
invention does”)). For the same reasons, we are not persuaded by
Appellant’s contention that Examiner “selectively pick[ed]-and-[chose]
various components from the encyclopedic disclosures found in . . . [Sakai,
Schwartz, and Gross,] reassembl[ing] them unerringly to arrive at the
present invention;” relied upon impermissible hindsight reconstruction (id. at
10).
We recognize Appellant’s contentions regarding unexpected results
(Br. 8–9 (citing Iwata Decl.7)). According to Appellant, “Example 55 of
Schwartz . . . is chosen as a representative example of the cited prior art”
(Br. 8). Stated differently, Appellant contends that Schwartz’s Example 55
is the closest prior art. “[W]hen 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). Appellant, however, concedes that the comparative example,

7 Declaration of Toshiyuki Iwata, signed Nov. 29, 2017.
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CEx. i, set forth in the Iwata Declaration “is not Example 55 of Schwartz”
and “is not an example according to Schwartz” (Br. 8). Thus, Appellant
failed to establish unexpected results compared against the closed prior art
on this record.
In addition, in order to be persuasive of non-obviousness, “[e]vidence
of secondary considerations must be reasonably commensurate with the
scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011). As Examiner explains, Appellant tested a single 1:10
polyquaternium-6 to metal pyrithione ratio (see Ans. 16; cf. Br. 8–9; Iwata
Decl. ¶ 3:Table 1). Appellant’s independent claim 1, however, recites a
polyquaternium-6 to metal pyrithione ratio of from about 1:5 to about 1:15
(see Br. 13). Thus, we agree with Examiner’s finding that Appellant’s
evidence of unexpected results is not reasonably commensurate with the
scope of Appellant’s independent claim (see Ans. 16).
For the foregoing reasons, we are not persuaded by Appellant’s
evidence of unexpected results.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sakai, Schwartz, and Gross
is affirmed. Claims 2 and 9–12 are not separately argued and fall with claim
1.

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Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?
ANALYSIS
Appellant’s claim 1, reproduced above, is representative.
Appellant does not contest: (a) the provisional rejection of claim 1
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over claims 1–3, 6, 8, and 9 of copending Application
No. 14/174,389 in view of Schwartz and Sakai or (b) the provisional
rejection of claim 1 under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1, 6, and 9–15 of
copending Application No. 14/174,401 in view of Schwartz and Sakai.
Appellant also did not file a terminal disclaimer to moot the obviousness-
type double patenting rejections.
“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.” Manual of Patent
Examining Procedure § 1205.02 (9th Ed., Rev. 08.2017 (Jan. 2018)).
For the foregoing reasons, the provisional obviousness-type double
patenting rejections are summarily affirmed.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness-type double patenting.
The provisional rejection of claim 1 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
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claims 1–3, 6, 8, and 9 of copending Application No. 14/174,389 in view of
Schwartz and Sakai is affirmed. Claims 2 and 9–12 are not separately
argued and fall with claim 1.
The provisional rejection of claim 1 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1, 6, and 9–15 of copending Application No. 14/174,401 in view of
Schwartz and Sakai is affirmed. Claims 2 and 9–12 are not separately
argued and fall with claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 9–12 103(a) Sakai, Schwartz,
Gross
1, 2, 9–12
1, 2, 9–12 Nonstatutory
Double Patenting,
copending
14/174,389,
Schwartz, Sakai
1, 2, 9–12
1, 2, 9–12 Nonstatutory
Double Patenting,
copending
14/174,401,
Schwartz, Sakai
1, 2, 9–12
Overall
Outcome
1, 2, 9–12

TIME PERIOD FOR RESPONSE
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