DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Pursuant to the amendment dated 06/08/2026, claims 8 and 9 have been cancelled. Claims 10-12 and 18 have been cancelled in a prior communication. Claims 1-7, 13-17, and 19-48 are pending and under current examination.
All rejections not reiterated have been withdrawn.
Information Disclosure Statement
An information disclosure statement was filed on 03/30/2026 and included two citations of “all office actions” for specific serial numbers for a United States patent application. These entries were lined through because they do not comply with 37 CFR 1.98. The citations list neither author or inventor nor publication date as required by the rule. Also, an application is not a single document, and it is unclear to what documents within the application the citation is intended to refer. Moreover, each application is under prosecution and is constantly changing due to correspondence between Applicant and the Office. Accordingly, it is not clear what would be signified by an indication that the Examiner had considered the application.
Claim Objections
Claims 5-7, 13, 22, 24, and 25 are objected to because of the following informalities:
In each of claims 5-7, 13, 24, and 25 there is a space between the “%” and the comma.
In claim 22, there is an extra comma in line 3.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-7, 13-17, 19-25, 30-39, and 41-48 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,291,616 in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘616 patent embrace a composition comprising anionic surfactants meeting the structural requirements recited in the instant claims; piroctone olamine or climbazole (i.e. a surfactant soluble antidandruff agent); a cationic polymer. The composition may contain a silicone conditioning agent and also may further comprise zinc pyrithione (a scalp health agent). The composition may contain a perfume and an amphoteric, nonionic or zwitterionic co-surfactant.
With regard to the cationic polymer, page 18 of the ‘616 specification indicates that this term embraces guar hydroxypropyltrimonium chloride.
Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘998 application to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
The composition may be dispensed as a foam, aerosol foam, pumped foam, or applied with an applicator and in the event that the composition is formulated as an aerosol, it further comprises a propellant that is either a chemically inert hydrocarbon, a halogenated hydrocarbon, and mixtures thereof.
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘998 application because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
With regard to instant claims 1, 8-13, and claims 14-17, the claims of the ‘998 application do not recite a limitation requiring the presence of an anionic polymer, nor do they require a thickening polymer.
Bebot discloses (meth)acrylic polymers were known in the art at the time the instant invention was filed as thickening polymers for cosmetic compositions and that said compositions may contain one or more (meth)acrylic thickening polymer (abstract). The thickening polymers disclosed by Bebot have anionic charge, e.g. methacrylic and acrylic polymers.
It would have been prima facie obvious to add one or more thickening polymers to the composition embraced by the ‘998 application. The skilled artisan would have been motivated to do so in order to add an aesthetically pleasing thickness to the composition. The artisan of ordinary skill would have had a reasonable expectation of success because Bebot discloses these polymers were known to provide a thickening effect in compositions comparable to those embraced by the ‘998 application.
It is noted that Bebot discloses that shampoos may contain one or more thickening polymers, thus, the instant claims read on embodiments wherein the composition comprises more than one thickening polymer disclosed by Bebot. With regard to the amount of anionic polymer present in the composition, please see MPEP 2144.05 regarding the obviousness of routine optimization, as noted above.
With regard to the limitation of instant claims 14 and 15, the examiner considers the thickening polymers to be capable of raising the viscosity of the composition to the claimed range because they are known to serve this purpose.
With regard to instant claim 17, Bebot discloses that, for example, the thickener may be crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified polyacrylates; para 0038).
Claims 26-29 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,291,616 in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-9, 13-17, 19-25, 30-39, and 41-48 and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘616 patent and the Bebot disclosure are set forth above. The claims of the ‘616 patent are silent with respect to the composition containing a gel network.
Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate composition embraced by the ‘616 patent to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to the pH of the composition, gel network compositions are disclosed by Murray to have pH in the range of from 5-6.5 (table following para 0101). It would have been prima facie obvious to formulate the gel network embraced by the ‘616 patent to have a pH in the range disclosed by Murray because this pH is known in the art to be suitable for gel network shampoo compositions (see MPEP 2144.07). It is noted that this range overlaps with the range recited in instant claims 26-29. See MPEP 2144.05 regarding overlapping ranges: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claims 1-7, 13-17, 19-39, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-51 of U.S. Patent No. 11,684,558.
Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims render obvious the instant claims.
Inter alia, the claims of the ‘558 patent embrace a composition comprising anionic surfactants meeting the structural requirements recited in the instant claims; piroctone olamine or climbazole (i.e. a surfactant soluble antidandruff agent); a cationic polymer, and a thickening polymer, wherein the thickening polymer such as the polyacrylates or hydrophobically-modified alkali swellable acrylic copolymer recited in the instant claims as either thickening polymers or anionic polymers. The composition may further comprise zinc pyrithione (a scalp health agent). The composition may contain an amphoteric, nonionic or zwitterionic co-surfactant. The claims of the ‘558 patent recite guar hydroxypropyltrimonium chloride. The pH of the compositions may be from about 4 to about 9 or from about 4 to about 5. Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘558 patent to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘558 patent because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
With regard to claim 48, the composition is considered suitable for application to hair using an applicator because this would merely require applying any composition to an applicator first followed by a step of applying to hair.
Claims 40-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-51 of U.S. Patent No. 11,684,558 as applied to claims 1-7, 13-17, 19-39, and 48 above and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘558 patent are set forth above. The ‘558 patent does not recite a limitation on a gel network or on a conditioning agent.
With regard to claim 40, Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate the composition to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to claims 41 and 42, Murray discloses adding a silicone conditioning agent to the composition (0064). It would have been prima facie obvious to add a silicone to the composition of the ‘558 patent. The skilled artisan would have been motivated to do so to provide a conditioning effect to hair and would have had reasonable expectation of success because this practice was routine in the art as of the instant effective filing date.
With regard to claim 43, adding perfume was well known in the art of hair care compositions. For example, Murray discloses compositions containing perfume (example 1, following para 0100). It would have been prima facie obvious to add a perfume to the composition of the ‘558 patent. The skilled artisan would have been motivated to do so in order to provide a pleasant smell to the composition and would have had reasonable expectation of success because this would merely require adding the perfume as was routine in the art as of the instant effective filing date.
Claims 44-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-51 of U.S. Patent No. 11,684,558 as applied to claims 1-7, 13-17, 19-39, and 48 above and further in view of Brautigam et al. (US 2005/0152863; publication date: 07/14/2005; of record).
The relevant limitations of the ‘558 patent are set forth above. The ‘558 patent is silent with respect to the composition being in the form of a foam; however, such was known in the art:
Brautigam discloses that hair cleansing compositions can be formulated as conventional thickened compositions or may be formulated for delivery as an aerosol or pump foam (para 0020).
It would have been prima facie obvious to formulate the ‘558 composition as an aerosol or pump foam because these are known alternative formulations of hair cleansing compositions. Please refer to MPEP 2143(A) regarding combining prior art elements according to known methods to yield predictable results.
With regard to instant claim 46, Brautigam discloses further that if the composition is formulated for delivery as an aerosol foam, it should contain a propellant (para 0020) and that conventional propellants include a propane butane mixture (i.e. a chemically inert hydrocarbon).
Claims 1-7, 13-17, 19-31, 34-39, 41-43, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 11,523,979 in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4).
Inter alia, the claims of the ‘979 patent embrace a composition comprising sodium laureth-1sulfate and sodium deceth-1-sulfate.
The claims of the ‘979 patent do not recite a limitation on an anionic surfactant having a branched alkyl chain.
Ainger, in the analogous art of personal cleansing compositions (title), discloses that both straight chain and branched chain anionic surfactants having formula R-0-(CH2CH2-0)n-S03-M+ were known to function as cleansing surfactants as of the instant effective filing date (abstract).
It would have been prima facie obvious to combine a branched chain ethoxylated metal sulfate surfactant with the ethoxylated metal sulfate surfactants required by the claims of the ‘979 patent because these substances were known to serve the same purpose as of the instant effective filing date. See MPEP 2144.06.
The claims of the ‘979 patent embrace compositions comprising piroctone olamine (i.e. a surfactant soluble antidandruff agent); a cationic polymer, and a thickening polymer, wherein the thickening polymer such as the polyacrylates, including hydrophobically-modified alkali swellable acrylic copolymers, recited in the instant claims as either thickening polymers or anionic polymers. The composition may further comprise zinc pyrithione (a scalp health agent). The composition may contain an amphoteric, nonionic or zwitterionic co-surfactant. The claims of the ‘979 patent recite guar hydroxypropyltrimonium chloride. The pH of the compositions may be from about 4 to about 9 or from about 4 to about 5. Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘979 patent application to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘979 patent because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
With regard to claims 41-43, Ainger discloses silicone skin conditioning agents and perfumes. It would have been prima facie obvious to add these ingredients to the ‘979 composition. The skilled artisan would have been motivated to do so to provide conditioning effects and a pleasant smell to the composition and would have had reasonable expectation of success because these ingredients are routinely added to hair care compositions.
With regard to claim 48, the composition is considered suitable for application to hair using an applicator because this would merely require applying any composition to an applicator first followed by a step of applying to hair.
Claims 32 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 11,523,979 as applied to claims 1-7, 13-17, 19-31, 34-39, 41-43, and 48 above and further in view of Jayaswal et al. (WO 2015/055432; publication date: 04/23/2015; of record).
The relevant limitations of the ‘979 patent are set forth above and as noted embrace the antidandruff agent piroctone olamine but do not mention climbazole.
Jayaswal discloses that climbazole and piroctone olamine (octopirox) were both known to be antidandruff agents as of the instant effective filing date (page 13, lines 5-10).
It would have been prima facie obvious to combine or replace the piroctone olamine with climbazole because both of these agents were known to serve the same purpose as of the instant effective filing date. See MPEP 2144.06.
Claim 40 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 11,523,979 as applied to claims 1-7, 13-17, 19-31, 34-39, 41-43, and 48 above and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘979 patent are set forth above. The ‘979 patent does not recite a limitation on a gel network or on a conditioning agent.
With regard to claim 40, Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate the composition to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
Claims 44-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 11,523,979 as applied to claims 1-7, 13-17, 19-31, 34-39, 41-43, and 48 above and further in view of Brautigam et al. (US 2005/0152863; publication date: 07/14/2005; of record).
The relevant limitations of the ‘979 patent are set forth above. The ‘979 patent is silent with respect to the composition being in the form of a foam; however, such was known in the art:
Brautigam discloses that hair cleansing compositions can be formulated as conventional thickened compositions or may be formulated for delivery as an aerosol or pump foam (para 0020).
It would have been prima facie obvious to formulate the ‘979 composition as an aerosol or pump foam because these are known alternative formulations of hair cleansing compositions. Please refer to MPEP 2143(A) regarding combining prior art elements according to known methods to yield predictable results.
With regard to instant claim 46, Brautigam discloses further that if the composition is formulated for delivery as an aerosol foam, it should contain a propellant (para 0020) and that conventional propellants include a propane butane mixture (i.e. a chemically inert hydrocarbon).
Claims 1-7, 13-17, 19-25 and 30-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 10,881,597 in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘597 patent embrace a composition comprising anionic surfactants (see col 7 for what is embraced by the term “anionic surfactant” recited in the claims of the ‘597 patent) meeting the structural requirements recited in the instant claims; piroctone olamine or climbazole (i.e. a surfactant soluble antidandruff agent); a cationic polymer that may be guar hydroxypropyltrimonium chloride. The composition may contain a silicone conditioning agent and a gel network, and also may further comprise zinc pyrithione (a scalp health agent). The composition may contain a perfume and an amphoteric, nonionic or zwitterionic co-surfactant.
Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘597 patent to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
The composition may be dispensed as a foam, aerosol foam, pumped foam, or applied with an applicator and in the event that the composition is formulated as an aerosol, it further comprises a propellant that is either a chemically inert hydrocarbon, a halogenated hydrocarbon, and mixtures thereof.
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘597 patent because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
With regard to instant claims 1, 13, and claims 14-17, the claims of the ‘597 patent do not recite a limitation requiring the presence of an anionic polymer, nor do they require a thickening polymer.
Bebot discloses (meth)acrylic polymers were known in the art at the time the instant invention was filed as thickening polymers for cosmetic compositions and that said compositions may contain one or more (meth)acrylic thickening polymer (abstract). The thickening polymers disclosed by Bebot have anionic charge, e.g. methacrylic and acrylic polymers, and crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified acrylic polymer; para 0038).
It would have been prima facie obvious to add one or more thickening polymers to the composition embraced by the ‘597 patent. The skilled artisan would have been motivated to do so in order to add an aesthetically pleasing thickness to the composition. The artisan of ordinary skill would have had a reasonable expectation of success because Bebot discloses these polymers were known to provide a thickening effect in compositions comparable to those embraced by the ‘597 patent.
It is noted that Bebot discloses that shampoos may contain one or more thickening polymers, thus, the instant claims read on embodiments wherein the composition comprises more than one thickening polymer disclosed by Bebot. With regard to the amount of anionic polymer present in the composition, please see MPEP 2144.05 regarding the obviousness of routine optimization, as noted above.
With regard to the limitation of instant claims 14 and 15 the examiner considers the thickening polymers to be capable of raising the viscosity of the composition to the claimed range because they are known to serve this purpose.
With regard to instant claim 17, Bebot discloses that, for example, the thickener may be crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified polyacrylates; para 0038).
Claims 26-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 10,881,597 in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-25 and 30-48 above, and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘597 patent are set forth above. As noted supra, the claims of the ‘597 patent embrace compositions containing a gel network; however, the claims are silent with respect to the pH of the composition.
With regard to the pH of the composition, gel network compositions are disclosed by Murray to have pH in the range of from 5-6.5 (table following para 0101). It would have been prima facie obvious to formulate the gel network embraced by the ‘597 patent to have a pH in the range disclosed by Murray because this pH is known in the art to be suitable for gel network shampoo compositions (see MPEP 2144.07). It is noted that this range overlaps with the range recited in instant claims 26-29. See MPEP 2144.05 regarding overlapping ranges: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claims 1-7, 13-17, 19-25, 30-39 41-43, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,441,519 in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘519 patent embrace a composition comprising branched anionic surfactants meeting the structural requirements recited in the instant claims; piroctone olamine or climbazole (i.e. a surfactant soluble antidandruff agent); a cationic polymer that may be guar hydroxypropyltrimonium chloride. The composition may contain a silicone conditioning agent, and also may further comprise zinc pyrithione (a scalp health agent). The composition may contain a perfume and an amphoteric co-surfactant.
Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘519 patent to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘519 patent because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
With regard to instant claims 1, 8-13, and claims 14-17, the claims of the ‘597 patent do not recite a limitation requiring the presence of an anionic polymer, nor do they require a thickening polymer.
Bebot discloses (meth)acrylic polymers were known in the art at the time the instant invention was filed as thickening polymers for cosmetic compositions and that said compositions may contain one or more (meth)acrylic thickening polymer (abstract). The thickening polymers disclosed by Bebot have anionic charge, e.g. methacrylic and acrylic polymers and crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified acrylic polymer; para 0038).
It would have been prima facie obvious to add one or more thickening polymers to the composition embraced by the ‘519 patent. The skilled artisan would have been motivated to do so in order to add an aesthetically pleasing thickness to the composition. The artisan of ordinary skill would have had a reasonable expectation of success because Bebot discloses these polymers were known to provide a thickening effect in compositions comparable to those embraced by the ‘519 patent.
It is noted that Bebot discloses that shampoos may contain one or more thickening polymers, thus, the instant claims read on embodiments wherein the composition comprises more than one thickening polymer disclosed by Bebot. With regard to the amount of anionic polymer present in the composition, please see MPEP 2144.05 regarding the obviousness of routine optimization, as noted above.
With regard to the limitation of instant claims 14 and 15 the examiner considers the thickening polymers to be capable of raising the viscosity of the composition to the claimed range because they are known to serve this purpose.
With regard to instant claim 17, Bebot discloses that, for example, the thickener may be crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified polyacrylates; para 0038).
Claims 26-29 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,441,519 in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-25, 30-39 41-43, and 48 above and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘519 patent are set forth above. The ‘519 patent does not recite a limitation on a gel network or on a conditioning agent.
With regard to claim 40, Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate the composition to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to the pH of the composition, gel network compositions are disclosed by Murray to have pH in the range of from 5-6.5 (table following para 0101). It would have been prima facie obvious to formulate the gel network embraced by the ‘519 patent to have a pH in the range disclosed by Murray because this pH is known in the art to be suitable for gel network shampoo compositions (see MPEP 2144.07). It is noted that this range overlaps with the range recited in instant claims 26-29. See MPEP 2144.05 regarding overlapping ranges: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claims 44-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,441,519 in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-25, 30-39 41-43, and 48 above and further in view of Brautigam et al. (US 2005/0152863; publication date: 07/14/2005; of record).
The relevant limitations of the ‘519 patent are set forth above. The ‘519 patent is silent with respect to the composition being in the form of a foam; however, such was known in the art:
Brautigam discloses that hair cleansing compositions can be formulated as conventional thickened compositions or may be formulated for delivery as an aerosol or pump foam (para 0020).
It would have been prima facie obvious to formulate the ‘519 composition as an aerosol or pump foam because these are known alternative formulations of hair cleansing compositions. Please refer to MPEP 2143(A) regarding combining prior art elements according to known methods to yield predictable results.
With regard to instant claim 46, Brautigam discloses further that if the composition is formulated for delivery as an aerosol foam, it should contain a propellant (para 0020) and that conventional propellants include a propane butane mixture (i.e. a chemically inert hydrocarbon).
Claims 1-7, 13-17, 19-39, and 48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, 14-31, and 33-38 of copending Application No. 16/170,516 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘516 application embrace a composition comprising anionic surfactants meeting the structural requirements recited in the instant claims; piroctone olamine or climbazole (i.e. a surfactant soluble antidandruff agent); a cationic polymer, and a thickening polymer, wherein the thickening polymer substances claimed in the ‘516 application share identity to the anionic polymers and thickening polymers recited in the instant claims. The composition may comprise zinc pyrithione (a scalp health agent). The composition may contain an amphoteric, nonionic or zwitterionic co-surfactant. The claims of the ‘516 application recite guar hydroxypropyltrimonium chloride. The pH of the compositions may be from about 4 to about 9 or from about 4 to about 5. Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘516 application to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘516 application because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 40-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, 14-31, and 33-38 of copending Application No. 16/170,516 (reference application) as applied to claims 1-7, 13-17, 19-39, and 48 above, and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘516 application are set forth above. The ‘516 application does not recite a limitation on a gel network or on a conditioning agent.
With regard to claim 40, Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate the composition to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to claims 41 and 42, Murray discloses adding a silicone conditioning agent to the composition (0064). It would have been prima facie obvious to add a silicone to the composition of the ‘516 application. The skilled artisan would have been motivated to do so to provide a conditioning effect to hair and would have had reasonable expectation of success because this practice was routine in the art as of the instant effective filing date.
With regard to claim 43, adding perfume was well known in the art of hair care compositions. For example, Murray discloses compositions containing perfume (example 1, following para 0100). It would have been prima facie obvious to add a perfume to the composition of the ‘516 application. The skilled artisan would have been motivated to do so in order to provide a pleasant smell to the composition and would have had reasonable expectation of success because this would merely require adding the perfume as was routine in the art as of the instant effective filing date.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 44-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, 14-31, and 33-38 of copending Application No. 16/170,516 (reference application) as applied to claims 1-7, 13-17, 19-39, and 48 above, and further in view of Brautigam et al. (US 2005/0152863; publication date: 07/14/2005; of record).
The relevant limitations of the ‘516 application are set forth above. The ‘516 application is silent with respect to the composition being in the form of a foam; however, such was known in the art:
Brautigam discloses that hair cleansing compositions can be formulated as conventional thickened compositions or may be formulated for delivery as an aerosol or pump foam (para 0020).
It would have been prima facie obvious to formulate the ‘516 composition as an aerosol or pump foam because these are known alternative formulations of hair cleansing compositions. Please refer to MPEP 2143(A) regarding combining prior art elements according to known methods to yield predictable results.
With regard to instant claim 46, Brautigam discloses further that if the composition is formulated for delivery as an aerosol foam, it should contain a propellant (para 0020) and that conventional propellants include a propane butane mixture (i.e. a chemically inert hydrocarbon).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 13-17, and 19-48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1, 3, 4, 7, 12, 13, and 18-55 of copending Application No. 17/078,781 (reference application);
claims 1-18, 21-29, and 31-48 of copending Application No. 15/962,351 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘781 and ‘351 applications embrace a composition comprising anionic surfactants meeting the structural requirements recited in the instant claims; the claimed anionic polymers; piroctone olamine or climbazole (i.e. a surfactant soluble antidandruff agent); a cationic polymer, and a thickening polymer, wherein the thickening polymer substances claimed in the ‘351 application share identity to those recited in the instant claims. The composition may contain a silicone conditioning agent and a gel network, and also may further comprise zinc pyrithione (a scalp health agent). The composition may contain a perfume and an amphoteric, nonionic or zwitterionic co-surfactant.
The claims of the ‘781 application recite guar hydroxypropyltrimonium chloride. With regard to the cationic polymer, page 13 of the ‘351 specification indicates that this term embraces guar hydroxypropyltrimonium chloride.
Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘781 and ‘351 applications to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
The pH of the compositions may be from about 4 to about 9 or from about 4 to about 5.
The composition may be dispensed as a foam, aerosol foam, pumped foam, or applied with an applicator and in the event that the composition is formulated as an aerosol, it further comprises a propellant that is either a chemically inert hydrocarbon, a halogenated hydrocarbon, and mixtures thereof.
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘781 and ‘351 applications because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 13-17, 19-25, 30-39, and 41-48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1 and 5-22 of copending Application No. 17/694,270 (reference application); and
claims 1, 3-8, and 13-24 of copending Application No. 18680005 (reference application)
in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the applications embrace a composition comprising anionic surfactants meeting the structural requirements recited in the instant claims; piroctone olamine or climbazole (i.e. a surfactant soluble antidandruff agent). The composition may contain a silicone conditioning agent, and also may further comprise zinc pyrithione (a scalp health agent). The composition may contain a perfume and an amphoteric, nonionic or zwitterionic co-surfactant. The claims of the ‘270 application recite “cationic polymer”, which the ‘270 specification indicates to embrace guar hydroxypropyltrimonium chloride (see page 15). Each of the substances listed supra is present in amounts falling within or overlapping with the amounts required by the instant claims. Moreover, the examiner considers arriving at optimal working concentrations for the ingredients embraced by the ‘270 application to be a matter of routine experimentation for the Artisan of ordinary skill. See MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
With regard to the functional language recited in instant claims 1 and 2 with regard to deposition properties, the examiner considers this to be an inherent property of the compositions embraced by the ‘270 application because all structural limitations of the instant claims are addressed. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
The composition may be dispensed as a foam, aerosol foam, pumped foam, or applied with an applicator and in the event that the composition is formulated as an aerosol, it further comprises a propellant that is either a chemically inert hydrocarbon, a halogenated hydrocarbon, and mixtures thereof.
With regard to instant claims 1, 8-13, and claims 14-17, the claims of the copending applications do not recite a limitation requiring the presence of an anionic polymer, nor do they require a thickening polymer.
Bebot discloses (meth)acrylic polymers were known in the art at the time the instant invention was filed as thickening polymers for cosmetic compositions and that said compositions may contain one or more (meth)acrylic thickening polymer (abstract). The thickening polymers disclosed by Bebot have anionic charge, e.g. methacrylic and acrylic polymers and crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified acrylic polymer; para 0038).
It would have been prima facie obvious to add one or more thickening polymers to the composition embraced by the ‘270 application. The skilled artisan would have been motivated to do so in order to add an aesthetically pleasing thickness to the composition. The artisan of ordinary skill would have had a reasonable expectation of success because Bebot discloses these polymers were known to provide a thickening effect in compositions comparable to those embraced by the ‘270 application.
It is noted that Bebot discloses that shampoos may contain one or more thickening polymers, thus, the instant claims read on embodiments wherein the composition comprises more than one thickening polymer disclosed by Bebot. With regard to the amount of anionic polymer present in the composition, please see MPEP 2144.05 regarding the obviousness of routine optimization, as noted above.
With regard to the limitation of instant claims 14 and 15 the examiner considers the thickening polymers to be capable of raising the viscosity of the composition to the claimed range because they are known to serve this purpose.
With regard to instant claim 17, Bebot discloses that, for example, the thickener may be crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified polyacrylates; para 0038).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 26-29 and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1 and 5-22 of copending Application No. 17/694,270 (reference application); and
claims 1, 3-8, and 13-24 of copending Application No. 18680005 (reference application)
in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-25, 30-39, and 41-48 above and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the applications are set forth above. The applications do not recite a limitation on a gel network or on a conditioning agent.
With regard to claim 40, Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate the composition to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to the pH of the composition, gel network compositions are disclosed by Murray to have pH in the range of from 5-6.5 (table following para 0101). It would have been prima facie obvious to formulate the gel network embraced by the ‘270 application to have a pH in the range disclosed by Murray because this pH is known in the art to be suitable for gel network shampoo compositions (see MPEP 2144.07). It is noted that this range overlaps with the range recited in instant claims 26-29. See MPEP 2144.05 regarding overlapping ranges: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claims 1-7, 13-17, 19-25, 30, 31, 34-39, and 48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-9, and 12-14 of copending Application No. 17/960,867 (reference application) in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia the claims of the ‘867 application embrace compositions comprising an anionic surfactant, a cationic polymer and the surfactant soluble antidandruff agent, piroctone olamine. The composition also comprises an amphoteric surfactant and may contain zinc pyrithione. The examiner considers it a matter of routine for one having ordinary skill in the art to optimize the content of each of the claimed ingredients. See MPEP 2144.05. With regard to the cationic polymer, the claims of the ‘867 application recite “cationic guar”, which the ‘867 specification identifies as including guar hydroxypropyltrimonium chloride (see page 9).
The claims of the ‘867 application do not recite a limitation on an anionic surfactant having a branched alkyl chain but do list ethoxylated sulfonate surfactants as a type of anionic surfactant.
Ainger, in the analogous art of personal cleansing compositions (title), discloses that both straight chain and branched chain anionic surfactants having formula R-0-(CH2CH2-0)n-S03-M+ were known to function as cleansing surfactants as of the instant effective filing date (abstract).
It would have been prima facie obvious to use the branched chain ethoxylated metal sulfate surfactant as the ethoxylated metal sulfate surfactants recited in the claims of the ‘867 application because these substances were known substances within this category of surfactant. See MPEP 2144.07.
The claims of the ‘867 application do not disclose an anionic polymer or a thickener as required by the instant claims.
Bebot discloses (meth)acrylic polymers were known in the art at the time the instant invention was filed as thickening polymers for cosmetic compositions and that said compositions may contain one or more (meth)acrylic thickening polymer (abstract). The thickening polymers disclosed by Bebot have anionic charge, e.g. methacrylic and acrylic polymers and crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified acrylic polymer; para 0038).
It would have been prima facie obvious to add one or more thickening polymers to the composition embraced by the ‘867 application. The skilled artisan would have been motivated to do so in order to add an aesthetically pleasing thickness to the composition. The artisan of ordinary skill would have had a reasonable expectation of success because Bebot discloses these polymers were known to provide a thickening effect in compositions comparable to those embraced by the ‘867 application.
It is noted that Bebot discloses that shampoos may contain one or more thickening polymers, thus, the instant claims read on embodiments wherein the composition comprises more than one thickening polymer disclosed by Bebot. With regard to the amount of anionic polymer present in the composition, please see MPEP 2144.05 regarding the obviousness of routine optimization, as noted above.
With regard to the limitation of instant claims 14 and 15 the examiner considers the thickening polymers to be capable of raising the viscosity of the composition to the claimed range because they are known to serve this purpose.
With regard to instant claim 17, Bebot discloses that, for example, the thickener may be crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified polyacrylates; para 0038).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 26-29 and 40-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-9, and 12-14 of copending Application No. 17/960,867 (reference application) in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-25, 30, 31, 34-39, and 48 above and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘867 application are set forth above. The ‘867 application does not recite a limitation on a gel network, pH of the composition, or on a conditioning agent.
With regard to claim 40, Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate the composition to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to the pH of the composition, gel network compositions are disclosed by Murray to have pH in the range of from 5-6.5 (table following para 0101). It would have been prima facie obvious to formulate the gel network embraced by the ‘867 patent to have a pH in the range disclosed by Murray because this pH is known in the art to be suitable for gel network shampoo compositions (see MPEP 2144.07). It is noted that this range overlaps with the range recited in instant claims 26-29. See MPEP 2144.05 regarding overlapping ranges: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
With regard to claims 41 and 42, Murray discloses adding a silicone conditioning agent to the composition (0064). It would have been prima facie obvious to add a silicone to the composition of the ‘867 application. The skilled artisan would have been motivated to do so to provide a conditioning effect to hair and would have had reasonable expectation of success because this practice was routine in the art as of the instant effective filing date.
With regard to claim 43, adding perfume was well known in the art of hair care compositions. For example, Murray discloses compositions containing perfume (example 1, following para 0100). It would have been prima facie obvious to add a perfume to the composition of the ‘867 application. The skilled artisan would have been motivated to do so in order to provide a pleasant smell to the composition and would have had reasonable expectation of success because this would merely require adding the perfume as was routine in the art as of the instant effective filing date.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 32 and 33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-9, and 12-14 of copending Application No. 17/960,867 (reference application) in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-25, 30, 31, 34-39, and 48 above and further in view of Jayaswal et al. (WO 2015/055432; publication date: 04/23/2015; of record).
The relevant limitations of the ‘867 application are set forth above and as noted embrace the antidandruff agent piroctone olamine but do not mention climbazole.
Jayaswal discloses that climbazole and piroctone olamine were both known to be antidandruff agents as of the instant effective filing date (0079).
It would have been prima facie obvious to combine or replace the piroctone olamine with climbazole because both of these agents were known to serve the same purpose as of the instant effective filing date. See MPEP 2144.06.
Claims 44-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-9, and 12-14 of copending Application No. 17/960,867 (reference application) in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-25, 30, 31, 34-39, and 48 above and further in view of Brautigam et al. (US 2005/0152863; publication date: 07/14/2005; of record).
The relevant limitations of the ‘867 application are set forth above. The ‘867 application is silent with respect to the composition being in the form of a foam; however, such was known in the art:
Brautigam discloses that hair cleansing compositions can be formulated as conventional thickened compositions or may be formulated for delivery as an aerosol or pump foam (para 0020).
It would have been prima facie obvious to formulate the ‘867 composition as an aerosol or pump foam because these are known alternative formulations of hair cleansing compositions. Please refer to MPEP 2143(A) regarding combining prior art elements according to known methods to yield predictable results.
With regard to instant claim 46, Brautigam discloses further that if the composition is formulated for delivery as an aerosol foam, it should contain a propellant (para 0020) and that conventional propellants include a propane butane mixture (i.e. a chemically inert hydrocarbon).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 13-17, 19-31, 34, 38, 39, and 48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-9 and 11-20 of copending Application No. 17/961,142 (reference application); and
claims 1-20 of copending Application No. 17/961,148 (reference application)
in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia the claims of the ‘142 and ‘148 applications embrace compositions comprising an anionic surfactant, a cationic polymer and the surfactant soluble antidandruff agent, piroctone olamine. The cationic polymer is guar hydroxypropyltrimonium chloride. The composition also comprises an amphoteric surfactant and has pH that overlaps with the pH required by the instant claims. The examiner considers it a matter of routine for one having ordinary skill in the art to optimize the content of each of the claimed ingredients. See MPEP 2144.05.
The claims of the ‘142 and ‘148 applications do not recite a limitation on an anionic surfactant having a branched alkyl chain but do list ethoxylated sulfonate surfactants as a type of anionic surfactant.
Ainger, in the analogous art of personal cleansing compositions (title), discloses that both straight chain and branched chain anionic surfactants having formula R-0-(CH2CH2-0)n-S03-M+ were known to function as cleansing surfactants as of the instant effective filing date (abstract).
It would have been prima facie obvious to use the branched chain ethoxylated metal sulfate surfactant as the ethoxylated metal sulfate surfactants recited in the claims of the ‘142 and ‘148 applications because these substances were known substances within this category of surfactant. See MPEP 2144.07.
The claims of the ‘142 and ‘148 applications do not disclose an anionic polymer or a thickener as required by the instant claims.
Bebot discloses (meth)acrylic polymers were known in the art at the time the instant invention was filed as thickening polymers for cosmetic compositions and that said compositions may contain one or more (meth)acrylic thickening polymer (abstract). The thickening polymers disclosed by Bebot have anionic charge, e.g. methacrylic and acrylic polymers and crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified acrylic polymer; para 0038).
It would have been prima facie obvious to add one or more thickening polymers to the composition embraced by the ‘142 and ‘148 applications. The skilled artisan would have been motivated to do so in order to add an aesthetically pleasing thickness to the composition. The artisan of ordinary skill would have had a reasonable expectation of success because Bebot discloses these polymers were known to provide a thickening effect in compositions comparable to those embraced by the ‘142 and ‘148 applications.
It is noted that Bebot discloses that shampoos may contain one or more thickening polymers, thus, the instant claims read on embodiments wherein the composition comprises more than one thickening polymer disclosed by Bebot. With regard to the amount of anionic polymer present in the composition, please see MPEP 2144.05 regarding the obviousness of routine optimization, as noted above.
With regard to the limitation of instant claims 14 and 15 the examiner considers the thickening polymers to be capable of raising the viscosity of the composition to the claimed range because they are known to serve this purpose.
With regard to instant claim 17, Bebot discloses that, for example, the thickener may be crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified polyacrylates; para 0038).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 32, 33, and 35-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-9 and 11-20 of copending Application No. 17/961,142 (reference application); and
claims 1-20 of copending Application No. 17/961,148 (reference application)
in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-9, 13-17, 19-31, 34, 38, 39, and 48 above, and further in view of Jayaswal et al. (WO 2015/055432; publication date: 04/23/2015; of record).
The relevant limitations of the ‘142 and ‘148 applications are set forth above and as noted embrace the antidandruff agent piroctone olamine but do not mention climbazole or zinc pyrithione.
Jayaswal discloses that climbazole, zinc pyrithione and octopirox (i.e. piroctone olamine) were both known to be antidandruff agents as of the instant effective filing date (page 13, lines 5-10).
It would have been prima facie obvious to combine or replace the piroctone olamine with climbazole and/or zinc pyrithione because both of these agents were known to serve the same purpose as of the instant effective filing date. See MPEP 2144.06.
Claims 40-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-9 and 11-20 of copending Application No. 17/961,142 (reference application); and
claims 1-20 of copending Application No. 17/961,148 (reference application)
in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-31, 34, 38, 39, and 48 above, and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
The relevant limitations of the ‘142 and ‘148 applications are set forth above. The ‘142 and ‘148 applications do not recite a limitation on a gel network or on a conditioning agent.
With regard to claim 40, Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate the compositions to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to claims 41 and 42, Murray discloses adding a silicone conditioning agent to the composition (0064). It would have been prima facie obvious to add a silicone to the composition of the ‘142 and 148 applications. The skilled artisan would have been motivated to do so to provide a conditioning effect to hair and would have had reasonable expectation of success because this practice was routine in the art as of the instant effective filing date.
With regard to claim 43, adding perfume was well known in the art of hair care compositions. For example, Murray discloses compositions containing perfume (example 1, following para 0100). It would have been prima facie obvious to add a perfume to the composition of the ‘142 and ‘148 applications. The skilled artisan would have been motivated to do so in order to provide a pleasant smell to the composition and would have had reasonable expectation of success because this would merely require adding the perfume as was routine in the art as of the instant effective filing date.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 44-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-9 and 11-20 of copending Application No. 17/961,142 (reference application); and
claims 1-20 of copending Application No. 17/961,148 (reference application)
in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013; of record) as applied to claims 1-7, 13-17, 19-31, 34, 38, 39, and 48 above, and further in view of Brautigam et al. (US 2005/0152863; publication date: 07/14/2005; of record).
The relevant limitations of the ‘142 and ‘148 applications are set forth above. The ‘867 application is silent with respect to the composition being in the form of a foam; however, such was known in the art:
Brautigam discloses that hair cleansing compositions can be formulated as conventional thickened compositions or may be formulated for delivery as an aerosol or pump foam (para 0020).
It would have been prima facie obvious to formulate the ‘142 and ‘148 compositions as an aerosol or pump foam because these are known alternative formulations of hair cleansing compositions. Please refer to MPEP 2143(A) regarding combining prior art elements according to known methods to yield predictable results.
With regard to instant claim 46, Brautigam discloses further that if the composition is formulated for delivery as an aerosol foam, it should contain a propellant (para 0020) and that conventional propellants include a propane butane mixture (i.e. a chemically inert hydrocarbon).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's comments that they will address the double patenting rejections at such time when patentable subject matter is identified on page 48 of the remarks filed 06/08/2026 are noted. Regarding Applicant's argument that the double patenting rejections should be held in abeyance, the double patenting rejections apply to the claims as they are currently written, therefore these double patenting rejections are maintained. Further, Applicants’ request to hold the rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the rejection is maintained in the absence of a terminal disclaimer.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7, 13-17, 19-25, 30-39, 41-43 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Jayaswal et al. (WO 2015/055432; publication date: 04/23/2015; of record) in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and further in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013).
With regard to claims 1 and 19-21, in table 1 spanning pages 14-15, Jayaswal teaches an example composition containing cleansing surfactants that may be alkyl ether sulfates (page 11), sample 10, which comprises: 14% sodium laureth sulfate (i.e. an anionic surfactant alkyl ether sulfate). Sodium laureth sulfate has a 12 carbon chain of formula R1O(C2H40)xSO3M. Jayaswal also discloses that preferred anionic surfactants are the alkyl sulfates and alkyl ether sulfates having formula R2OSO3M and R1O(C2H40)xSO3M, wherein R2 is alkyl or alkenyl of from 8 to 18 carbons, x is an integer having value of from 1-10 and M is a cation (page 11). Jayaswal does not particularly specify that the R may be branched.
Ainger, in the analogous art of personal cleansing compositions (title), discloses that both straight chain and branched chain anionic surfactants having formula R-0-(CH2CH2-0)n-S03-M+ were known to function as cleansing surfactants as of the instant effective filing date (abstract).
It would have been prima facie obvious to use a branched cleansing surfactant such as those specified by Ainger in addition to or in exchange for the surfactants used by Jayaswal because both of these substances were known for the same purpose as of the instant effective filing date. Please refer to MPEP 2144.06.
The surfactant in Jayaswal’s composition is present in an amount falling within the ranges required by instant claims 1, and 23-24); 0.5% climbazole (i.e. a surfactant soluble antidandruff agent meeting the requirements of instant claims 1, 32, and 33, and falling within the concentration required by instant claims 1, 38 and 39); 0.6 % by weight of acrylic acid polymer (carbomer; i.e. an anionic polymer falling within the metes and bounds of instant claims 14-17, see further discussion of these claims below); and 0.15% guar, hydroxypropyltrimonium chloride (i.e. a cationic polymer meeting the limitations of instant claims 1, 3, and 4 and falling within the range required by instant claims 5-7. The examiner notes that claim 7 recites “about 0.4%”, Jayaswal discloses a range in first and second cationic polymer of from 0.001 to 1% for each polymer (0044 and 0045). This range embraces the range recited in the instant claims of about 0.4 to about 1 %. See MPEP 2144.05.
With regard to claim 1, as noted above, Jayaswal discloses a composition containing the acrylic acid polymer, carbomer, but Jayaswal does not disclose an anionic polymer that is an alkali swellable and hydrophobically modified acrylic copolymer.
Bebot discloses (meth)acrylic polymers were known in the art at the time the instant invention was filed as thickening polymers for cosmetic compositions (abstract; 0044), noting that “(Meth)acrylic” is understood to mean, within the meaning of the present patent application, “acrylic or methacrylic” (Bebot: 0026). The (meth)acrylic thickening polymers include carbopol (i.e. INCI name: carbomer; 0062, 0363; such as the polymer used in Jayaswal’s example cited above) and crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate (i.e. hydrophobically modified acrylic polymer; para 0038). Both polymers were recognized in the art to function as thickeners for hair care compositions and therefore it would have been prima facie obvious to combine the carbopol (i.e. carbomer) used by Jayaswal with the additional thickener, crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate. The instant application indicates that the aforementioned polymer is also alkali swellable (see instant claim 17). Thus, it would have been prima facie obvious to use an alkali swellable hydrophobically modified acrylic polymer in Jayaswal’s composition.
With regard to instant claims 1 and 13 limiting the amount of anionic polymer, Bebot teaches using the (meth)acrylic thickening polymer in amounts ranging between 0.5 and 20% by weight (Bebot: claim 18). This would have given the artisan of ordinary skill a starting point to optimize the thickening effect of the polymer. See MPEP 2144.05(I): In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and MPEP 2144.05(II)(A): Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]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, 105 USPQ 233, 235 (CCPA 1955).
With respect to the functional language recited in instant claims 1 and 2 regarding deposition, as an initial matter, the examiner notes that Jayaswal discloses that the compositions exhibit good deposition (para 0005). The composition also contains the polymer indicated in the instant application to be responsible for improved deposition efficiency (cationic and anionic polymer) and finally, the composition disclosed by Jayaswal meets all of the structural limitations recited in the instant claims. 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 the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 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, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
With regard to claims 14-17, as detailed above, Jayaswal’s example composition contains carbomer, it would have been obvious to a person of ordinary skill to combine the carbomer with crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate, and Bebot discloses that these categories of polymer provide a thickening effect. Carbomer in the prima facie obvious composition of Jayaswal/Ainger/Bebot, containing both carbomer and crosslinked copolymers of (meth)acrylic acid and of (C1-C6)alkyl acrylate falls within the scope of the additional thickening polymer required by instant claims 14-17. With regard to the limitation of instant claims 14 and 15 the examiner considers the thickening polymers to be capable of raising the viscosity of the composition to the claimed range because they are known to serve this purpose. The examiner considers the broad disclosure of Jayaswal to embrace compositions that cannot be thickened, as the most basic invention includes only the conditioning agent and the cationically modified guar (abstract).
With regard to instant claim 22, the composition contains cocoamidopropyl betaine at 1.6% (i.e. an amphoteric surfactant falling within the range required by instant claim 22).
With regard to instant claim 25, sample 10 contains surfactant in an amount greater than permitted by instant claim 25; however, the broader disclosure of Jayaswal indicates that the surfactant may be present in amounts ranging from 0.5% to 45% (para 0073). See MPEP 2144.05 regarding overlapping ranges: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
With regard to instant claims 30 and 31, the example compositions contain climbazole; however, it would be obvious to use piroctone olamine because Jayaswal discloses this as a suitable antidandruff agent (page 13, lines 5-10 discloses “octopirox” which is a synonym for piroctone olamine: CAS Registry No.: 68890-66-4).
With regard to instant claims 34-39, the composition contains 1.0% zinc pyrithione.
With regard to instant claims 41 and 42, the composition contains the silicones dimethicone and dimethiconol.
With regard to instant claim 43, the composition contains 0.7% of a perfume.
With regard to instant claim 48, claim 48 does not further limit the composition beyond that it must be possible to apply with an applicator. The examiner considers Jayaswal to anticipate claim 48, absent evidence that the composition could not be applied with any applicator.
Claims 26-29 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Jayaswal et al. (WO 2015/055432; publication date: 04/23/2015; of record) in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013) as applied to claims 1-7, 13-17, 19-25, 30-39, 41-43 and 48 above and further in view of Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
With regard to claims 26-29 and 40, the relevant disclosure of Jayaswal is set forth above. Jayaswal discloses further that the composition may comprise a pH adjusting agent (page 13); however, Jayaswal is silent with respect to the specific pH of the composition. Jayaswal also discloses that the composition contains a conditioning agent but is silent with respect to including a gel network as required by instant claim 40.
Murray discloses that anionic gel networks comprising an anionic surfactant and a fatty material are beneficial in antidandruff shampoos (title, abstract).
It would have been prima facie obvious to formulate Jayaswal’s composition to contain a gel network. One of ordinary skill in the art would have been motivated to do so in order to take advantage of the delivery of fatty conditioning substance via gel network formulations. The skilled Artisan would have had a reasonable expectation of success because this was a well-known type of formulation at the time the instant invention was filed.
With regard to the pH of the composition, gel network compositions are disclosed by Murray to have pH in the range of from 5-6.5 (table following para 0101). See MPEP 2144.05 regarding overlapping ranges: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claims 44-47 are rejected under 35 U.S.C. 103 as being unpatentable over Jayaswal et al. (WO 2015/055432; publication date: 04/23/2015; of record) in view of Ainger (WO 2017/042004; publication date: 03/16/2004; available as prior art under 35 USC 102(a)(1) and 102(a)(2); effectively filed date: 09/10/2015, with support in EPO Application No. EP15184746.4) and Bebot et al. (US 2013/0243718; publication date: 09/19/2013) as applied to claims 1-7, 13-17, 19-25, 30-39, 41-43 and 48 above and further in view of Brautigam et al. (US 2005/0152863; publication date: 07/14/2005).
The relevant disclosures of Jayaswal, Ainger, and Bebot are set forth above.
With regard to claims 44, 45, and 47, Jayaswal is silent with respect to the composition being in the form of a foam; however, such was known in the art:
Brautigam discloses that hair cleansing compositions can be formulated as conventional thickened compositions or may be formulated for delivery as an aerosol or pump foam (para 0020).
It would have been prima facie obvious to formulate Jayaswal’s composition as an aerosol or pump foam because these are known alternative formulations of hair cleansing compositions. Please refer to MPEP 2143(A) regarding combining prior art elements according to known methods to yield predictable results.
With regard to instant claim 46, Brautigam discloses further that if the composition is formulated for delivery as an aerosol foam, it should contain a propellant (para 0020) and that conventional propellants include a propane butane mixture (i.e. a chemically inert hydrocarbon).
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
The new grounds of rejection above have addressed the amendments to the claims requiring an alkali swellable and hydrophobically-modified acrylic copolymer in the composition of claim 1 and the amendment to the range of cationic polymer recited in claim 7.
Each of the arguments presented in traversal of the obviousness rejection, particularly that one having ordinary skill would have lacked motivation to make the proposed modifications to the surfactant in the obviousness rejection and that the instant invention, as claimed, results in unexpectedly superior deposition, have been responded to by the examiner in the examiner’s answer mailed 10/25/2024 and by the Patent Trial and Appeal Board in the decision mailed 12/23/2025. Therefore, Applicant’s arguments are cumulative. In addition to maintaining the rejection for the reasons set forth in the examiner’s answer mailed 10/25/2024, the examiner adopts as her own the reasoning provided in the Patent Trial and Appeal Board decision mailed 12/23/2025.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
Prosecution Insights