L'OREAL

Patent Trials and Appeals Board

Sep 23, 2021

2021000081 (P.T.A.B. Sep. 23, 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.
15/152,956 05/12/2016 Andrea Elsen 085137-541275 1036
30678 7590 09/23/2021
POLSINELLI PC
(DC OFFICE)
PO Box 140310
Kansas City, MO 64114-0310
EXAMINER
SHIN, MONICA A
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/23/2021 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA ELSEN, CHARLES SHAW, NGHI VAN NGUYEN,
and JIM SINGER
Appeal 2021-000081
Application 15/152,956
Technology Center 1600
Before LINDA M. GAUDETTE, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 8–17, 19, and 21–24.3
We affirm.

1 The following documents are of record: Specification filed May 12, 2016
(“Spec.”); Declaration of Nghi Van Nguyen Pursuant to 37 C.F.R. § 1.132,
executed Sept. 19, 2018 (Decl.); Final Office Action dated January 14, 2019
(“Final Act.”); Corrected Appeal Brief filed September 3, 2019 (“Appeal
Br.”), citations to pages 20–22 being to the Claims Appendix; and
Examiner’s Answer dated May 26, 2020 (“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as L’OREAL. Appeal Br. 2
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
The invention relates to methods for treating hair with lactones (such as
meadowlactone) to impart a variety of beneficial effects to the hair. Spec. 1:4–
6. According to the Specification, “[w]hen hair is treated with certain
chemical compositions such as those for permanently shaping the hair (such
as reducing agents), the hair becomes damaged and loses hydrophobicity (and
can become dry and brittle).” Id. at 3:1–3. The inventive methods restore
hydrophobicity and repair the hair. Id. at 3:3–5. Claim 8, reproduced below, is
illustrative of the claimed subject matter:
8. A method for treating hair comprising:
(a) applying to the hair a reducing composition
comprising one or more reducing agents that reduces disulfide
bonds of the hair to free thiols; and
(b) subsequently applying a composition comprising
one or more lactones to the hair and reacting the one or more
lactones with the free thiols to form a covalent thioester bond,
thereby increasing the hydrophobicity of the hair.
Appeal Br. 20.
REJECTIONS
Claims 8–12, 14–17, 19, 21, and 24 are rejected under 35 U.S.C. § 103
as unpatentable over Pressly (US 2015/0034117 Al, published February 5,
2015) and Wohlman (US 2007/0092465 A1, published April 26, 2007).4
Ans. 3.

4 The Examiner entered the Appellant’s August 5, 2019 Amendment after
Appeal, cancelling finally rejected claims 25–29. Advisory Action dated
September 12, 2019.
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Claims 13, 22, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Pressly, Wohlman, and Kolc (US 5,223,252, issued June
29, 1993). Ans. 3.
ISSUES
The Examiner’s and the Appellant’s respective positions raise the
following issues on appeal:
1. Has the Appellant identified reversible error in the Examiner’s
finding that applying Pressly’s composition, as modified to include
Wohlman’s meadowlactone conditioning agent, to hair would inherently
result in covalent thioester bond formation as recited in independent claim 8?
See Appeal Br. 7–9; see Final Act. 9.
2. Has the Appellant shown that the Examiner relied on improper
hindsight reasoning in finding that applying Pressly’s composition, as
modified to include Wohlman’s meadowlactone conditioning agent, to hair
would increase its hydrophobicity as recited in independent claim 8? See
Appeal Br. 9–10; Final Act. 10.
3. Has the Appellant shown that the Examiner relied on improper
hindsight reasoning in finding that applying Pressly’s composition, as
modified to include Wohlman’s meadowlactone conditioning agent, to hair
would improve its curl retention as recited in dependent claim 19? See Appeal
Br. 10; Final Act. 9.
4. Has the Appellant shown that Wohlman teaches away from
replacing the meadowfoam seed oil in Pressly’s composition with
meadowlactone? See Appeal Br. 11–13; Final Act. 8.
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5. Has the Appellant shown that Wohlman teaches away from
adding surfactants, as recited in claims 21 and 23, to a meadowlactone-
containing composition? See Appeal Br. 14–15; Final Act. 6.
6. Has the Appellant shown that the Examiner reversibly erred in
determining that, after taking into account the Appellant’s unexpected results
evidence, a preponderance of the evidence still favors the Examiner’s
obviousness conclusion? See Appeal Br. 15–18.
We decide each of the above-listed issues, as well as any additional
issues raised in the Appeal Brief, in favor of the Examiner’s position. The
Examiner has fully addressed the Appellant’s arguments and we adopt as part
of this decision the Examiner’s explanations of why the Appellant’s
arguments and evidence are unpersuasive of reversible error in the
obviousness rejections. See Final Act. 13–18; Ans. 3–12.

OPINION
The Examiner found that Pressly describes a hair treatment method that
includes applying a reducing agent to hair to reduce disulfide bonds to free
thiols. Final Act. 4; see Pressly ¶ 157 (“[T]he reducing formulation [is]
capable of reducing the disulfide bonds in the hair and producing free thiol
groups.”). The Examiner found that in Pressly’s Example 1, the reducing
agent remained on the hair for 10 minutes to 1 hour at room temperature
(approximately 20–25 ⁰C), and was then rinsed from the hair with water. Final
Act. 5 (citing Pressly ¶ 224). The inventive method uses substantially the
same reducing treatment conditions “to reduce disulfide bonds of the hair to
free thiols.” Spec. 6:1–12, 20–21.
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As found by the Examiner, in Example 1, Pressly performed a
subsequent step of applying a binding formulation that was left on the hair for
7.5 minutes at room temperature. Final Act. 5 (citing Pressly ¶ 225). This step
was then repeated, such that the binding formulation remained on the hair for
a total of 15 minutes. Pressly ¶ 225; see Final Act. 5. Similar to Pressly’s
binding formulation application step, the Specification describes a subsequent
step of applying a composition to hair “for about 1 to about 30 minutes at a
temperature of 20 to 45°C.” Spec. 7:14–17. Both the Specification and Pressly
disclose including excipients in these compositions. Id. at 9:13–14; Pressly
¶ 104. Pressly’s and the Specification’s lists of acceptable excipients are
similar. Compare Pressly ¶ 136 (“In some embodiments, the formulation
contains water, a preservative, fragrance, the binding agent, and a hair
conditioning agent.”), with Spec. 9:13–22 (“water, preservatives, . . .
fragrances, . . . hair conditioning agents, . . . and combinations thereof”). The
Specification’s and Pressly’s lists of suitable conditioning agents are also
substantially identical, and include meadowfoam seed oil. Compare Spec.
12:27–13:6, with Pressly ¶ 124.
The Examiner found that Pressly’s method differs from the claim 8
method in that Pressly does not explicitly describe lactones as components of
the binding formulation used in the step following application of the reducing
composition. See Final Act. 6. Therefore, Pressly does not describe reacting a
lactone with free thiols formed in the reducing step to form covalent thio-ester
bonds. Instead, Pressly discloses that the binding formulations contain one or
more binding agents that form covalent bonds with the free thiols. Pressly
¶¶ 44, 46, 51. But the Examiner concluded that the claim 8 method would
have been obvious because the ordinary artisan would have used
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meadowlactone in place of meadowfoam seed oil as a conditioner in Pressly’s
binding formulation. Specifically, the Examiner found that Wohlman teaches
that hair compositions, such as conditioners, ¶ 114, containing about 1 to 5
wt % meadowlactone derived from meadowfoam seed oil, ¶¶ 93–94,
“produce[] a marked sensory improvement in both the feel and appearance of .
. . hair,” ¶ 93. See Final Act. 8. The Examiner determined that “absent
evidence to the contrary,” Pressly’s method, as modified in view of Wohlman,
would have “result[ed] in the meadowlactone reacting with the free thiols
(formed after application of Pressly’s reducing composition) to form a
covalent thioester bond.” Id. at 9.5
The Appellant argues that “none of the references describe reacting
a lactone with a free thiol to form a covalent bond with hair,” Appeal Br. 9
and “[t]he Examiner has provided no evidence to show that if meadowlactone
were added into Pressly’s composition as a conditioning agent that it would
actually chemically react with a free thiol to form a covalent bond with hair,”
id. at 8 n.1 (emphasis omitted). The Appellant confuses the Examiner’s and
the Appellant’s respective burdens.
The Examiner has the initial burden to establish that the claimed and
prior art processes appear to be the same. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254–56 (CCPA 1977). As
discussed below, the Examiner’s fact finding and reasoning is sufficient to
meet this burden.

5 We note that in the Final Office Action (pages 7, 9, 14, and 16) and the
Answer (page 6), the Examiner finds that various prior art disclosures read
on claim limitations. Cited prior-art references do not “read on” claim
limitations, rather, a particular claim limitation “reads on” the corresponding
feature(s) found in the cited prior art.
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There is no dispute that Pressly and the Specification describe similar
steps of applying reducing agents to reduce disulfide bonds of the hair to
free thiols. The composition of claim 8 step (b) reads on Pressly’s binding
formulation, as modified to replace meadowfoam seed oil with
meadowlactone as a conditioner. Moreover, other than Pressly’s binding
agent, both compositions include substantially the same components. Both
the Specification and Pressly also describe reacting their respective
compositions to form covalent bonds with thiol groups at room temperature
and for the same time periods. Compare Spec. 7:20–23, with Pressly ¶¶ 77,
196.
Although Pressly’s binding agent reacts with the thiol groups, the
Examiner had a reasonable basis to conclude that at least a portion of the
meadowlactone and the free thiols would have reacted and formed covalent
thioester bonds: Pressly discloses that the binding agents are present in small
amounts, most preferably, in an amount “from about 1 wt % to about 10
wt %,” ¶ 48, but may be present in amounts as low as 0.01 wt %, see, e.g.,
¶ 142; and Pressly indicates that the reaction rate between the binding agents
and free thiols may be affected by adding one or more excipients, id. ¶ 77,
which includes conditioning agents, id. ¶136. In other words, the burden
shifted to the Appellant to provide evidence that performing Pressly’s
method using Pressly’s binding formulation, as modified to replace
meadowfoam seed oil with meadowlactone, would not have formed thio-
ester bonds. See Spada, 911 F.2d at 708; Best, 562 F.2d at 1254–56.
The Appellant has not met this burden and, therefore, has not identified
reversible error in the Examiner’s finding that applying Pressly’s composition,
as modified to include Wohlman’s meadowlactone conditioning agent, to hair
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inherently would have resulted in covalent thioester bond formation, as recited
in independent claim 8. See Issue 1, above.
The Appellant argues that the claimed method must increase the
hydrophobicity of the treated hair and that claim 19 further requires an
improvement in curl retention. See Appeal Br. 9–11. The Appellant argues
that neither Pressly nor Wohlman discloses that their methods achieve these
properties. See id.
These arguments are not persuasive. Discovery of a property inherent to
a prior art process does not render that process patentable, even if the prior art
did not appreciate the property. Verdegaal Bros. Inc. v. Union Oil Co., 814
F.2d 628, 633 (Fed. Cir. 1987); In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable.”).
Appellant’s “application itself instructs” that hydrophobicity and curl
retention are “not . . . additional requirement[s] imposed by the claims . . . ,
but rather . . . propert[ies] necessarily present” in hair treated by the claimed
method, In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)6:
Without being bound to any one theory, the inventors
believe that the reaction of a lactone with free thiols on hair that
has been treated with one or more reducing agents results in the

6 See also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“Substantial
evidence supports the Board’s finding, based upon the specification, which
confirms that the claimed ‘food effect’ is an inherent property of the
oxymorphone itself.”) Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)
(“The fact that appellant has recognized another advantage which would
flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise be obvious.”).
.

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formation of a complex containing thio-ester bonds, with said
complex being similar to or “mimicking” the natural 18-MEA
lipids of the hair and thereby imparting hydrophobicity to the
hair. Thus, the quality of damaged and/or chemically treated
hair can be improved. The increased/improved hydrophobicity
of the hair can also contribute to the styling hold on the hair as
exhibited by better and/or longer lasting curl retention, even at
high humidity conditions.
Spec. 3:19–4:2.
Accordingly, we are not persuaded that the Examiner relied on
improper hindsight reasoning in finding that applying Pressly’s composition,
as modified to include Wohlman’s meadowlactone conditioning agent, to hair
would increase its hydrophobicity and improve its curl retention. See Issues 2
and 3, above.
The Appellant argues that Wohlman teaches away from combining
meadowlactone “with any other active agents, especially other active agents
that are in large enough quantities to produce an effect or change the
morphology, tone, texture and/or appearance of hair.” Appeal Br. 13.
Therefore, the ordinary artisan would not have included meadowlactone in
Pressly’s binding formulation because “[t]he entire purpose of the active agent
in Pressley is to produce a change of morphology, tone, texture and/or
appearance of hair.” Id. In support of this argument, the Appellant cites the
Nguyen Declaration. See id. at 12.
Quoting Wohlman paragraphs 39, 93, and 97, Inventor Nguyen testified
that Wohlman would have discouraged the ordinary artisan from using
meadowlactone in Pressly’s binding formulation. Decl. ¶¶ 7–9. The quoted
language from each of these paragraphs begins with “It is preferred” or “It is
also preferred.” See id. (quoting Wohlman ¶¶ 39, 93, 97). “A statement that a
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particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.” Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005).
As acknowledged by Inventor Nguyen, Decl. ¶ 10, Wohlman expressly
teaches: “The compositions that are employed in the methods of the invention
may, in some cases, optionally, contain one or more other active or inactive
ingredients,” Wohlman ¶ 108. But Inventor Nguyen testified that Wohlman’s
statement “do[es] not contradict or mitigate the express teachings in
paragraphs [0039] and [0097] of Wohlman” because paragraph 108’s list of
optional active or inactive ingredients does not include Pressly’s binding
agent, and the listed ingredients “are not described in large enough quantities
‘to produce an effect or change to the morphology, tone, texture and/or
appearance of the skin or hair.’” Decl. ¶ 10.
“The Board has broad discretion as to the weight to give to
declarations offered in the course of prosecution,” and is entitled to weigh
declarations expressing opinions as to fact and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004); see also In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n
affidavit by an applicant or co-applicant as to the advantages of [their]
invention is less persuasive than one made by a disinterested person.”). We
give little weight to Inventor Nguyen’s testimony that Wohlman would have
discouraged the ordinary artisan from using meadowlactone in Pressly’s
binding formulation. First, Wohlman’s list of optional ingredients is
preceded by “such as,” indicating that the list is not exclusive. See Wohlman
¶ 108. Second, paragraph 108 does not list any optional ingredient amounts,
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and paragraph 97 indicates that excluding other active agents is merely a
preference. See Decl. ¶ 10. Finally, paragraph 108’s concluding sentence
further supports a finding that Wohlman would not have discouraged the
ordinary artisan from combining meadowlactone with another active agent,
such as Pressly’s binding agent: “However, the compositions need not
include any ingredients other than the Meadowlactone (active agent) and
base (including one or more inactive ingredients).” Wohlman ¶ 108
(emphasis added).
The Appellant’s argument that Wohlman teaches away from adding
surfactants to a meadowlactone-containing composition, Appeal Br. 14–15, is
likewise unpersuasive. As found by the Examiner, Ans. 10, Wohlman’s
Example 20 meadowlactone-containing composition includes a surfactant. See
Wohlman ¶ 240. Wohlman also includes surfactants in the optional ingredient
list. Wohlman ¶ 108.
In sum, we are not persuaded that Wohlman teaches away from
replacing the meadowfoam seed oil in Pressly’s composition with
meadowlactone, or from including surfactants in a meadowlactone-containing
composition. See Issues 4 and 5, above.
The Appellant argues that the “[S]pecification includes data
illustrating the significant and surprising improvement in hair-repair
properties (e.g., hydrophobicity and curl retention) provided by the
claimed methods.” Appeal Br. 16. The Appellant provides a table showing
that hair treated with meadowlactone in accordance with the inventive
method exhibited higher curl retention compared to untreated hair and
hydrogen peroxide-treated hair. Id. at 17. The Appellant notes that, in
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contrast, “Pressly report[ed] that its binding composition did not improve
curl retention.” Id.
We agree with the Examiner’s detailed analysis and explanation of
why the Appellant’s evidence, including Inventor Nguyen’s supporting
testimony, see Decl. ¶¶ 12–20, are not persuasive of unexpected results. See
Ans. 11–12 (explaining, e.g., that the Appellant does not compare the
claimed invention with the closest prior art, Pressly); cf. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996) (Even though “[a] modification results in
great improvement and utility over the prior art, it may still not be patentable
if the modification was within the capabilities of one skilled in the art, unless
the claimed ranges ‘produce a new and unexpected result which is different
in kind and not merely in degree from the results of the prior art.’”). We
conclude that the Appellant has not shown reversible error in the Examiner’s
determination that, taking into account the Appellant’s unexpected results
evidence, a preponderance of the evidence still favors the Examiner’s
obviousness conclusion. See Issue 6, above.
In sum, we are not persuaded of reversible error in the Examiner’s
rejection of claims 8–12, 14–17, 19, 21, and 24 as unpatentable over the
combination of Pressly and Wohlman. As the Appellant’s arguments in
support of separately rejected claims 13, 22, and 23 are limited to an
assertion that Kolc does not cure the deficiencies of Pressly and Wohlman,
see Appeal Br. 18, we are likewise unpersuaded of reversible error in the
Examiner’s rejection of these claims.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
8–12, 14–
17, 19, 21,
24
103 Pressly, Wohlman 8–12, 14–
17, 19, 21,
24

13, 22, 23 103 Pressly, Wohlman,
Kolc
13, 22, 23
Overall
Outcome

8–17, 19,
21–24

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