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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/23/2026 has been entered.
Status of the Claims
Pursuant to the amendment dated 02/23/2026, claim 18 has been cancelled. Claims 10-12 have been cancelled in a prior communication. Claims 1-9, 13-17, and 19-48 are pending and under current examination.
All rejections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitation "the surfactant" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Specifically, the term “the surfactant” in claim 20, which depends from claim 19 could find antecedent basis in “the surfactant” recited in claim 1 or in “the anionic surfactant” recited in claim 19. As such the antecedent basis is unclear. Amending the claim to include the word “anionic” preceding “surfactant” would obviate the rejection.
Claim 21 recites the limitation "the surfactant" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Specifically, the term “the surfactant” in claim 21, which depends from claim 19 could find antecedent basis in “the surfactant” recited in claim 1 or in “the anionic surfactant” recited in claim 19. As such the antecedent basis is unclear. Amending the claim to include the word “anionic” preceding “surfactant” would obviate the rejection.
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 1-9, 13-25, 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, 13-25, 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 1-9, 13-39, 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 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 1-9, 13-39, 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 1-9, 13-39, 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 1-9, 13-31, 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 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 1-9, 13-31, 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 1-9, 13-31, 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 1-9, 13-31, 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 1-9, 13-25 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, 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.
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 1-9 , 13-25 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 1-9, 13-25, 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.
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 1-9, 13-25, 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 1-9, 13-25, 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 1-9, 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 1-9, 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 1-9, 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 1-9, 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; 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).
The ‘781 claims embrace anionic polymers. With regard to instant claims 1 and 8-13, the claims of the ‘351 application do not expressly recite a limitation requiring the presence of an anionic polymer; however, the claims indicate that the composition contains one or more thickening polymers, and the thickening polymers have anionic charge, e.g. methacrylic and acrylic polymers, polyacrylate (claims 2 and 3 of the ‘351 application). Thus, the instant claims read on embodiments of the ‘351 application wherein the composition comprises more than one thickening polymer, and one of the thickening polymers is among the anionic polymers recited in claims 2 or 3 of the ‘351 application. With regard to instant claims 8 and 9, these claims read on embodiments of the ‘351 application wherein one of the polymers is, for example “polyacrylate” or “polymethacrylate” (see claim 3 of the ‘351 application). 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9, 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.
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 1-9, 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 1-9, 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.
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 1-9, 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 1-9, 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 1-9, 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 1-9, 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.
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 1-9, 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 1-9, 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 02/23/2026 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 1-9, 13, 19-43 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 Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record).
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 1, 8 and 9); 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 0.2%” as the lower limit on the amount of cationic polymer permitted within the claimed composition. Regarding claim 7, the examiner considers 0.15% to fall within the range of amounts embraced by “about 0.2%). Additionally, 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 0.2 to about 1 %. See MPEP 2144.05.
With regard to instant claims 1 and 13, as noted above, the examiner does not consider these limitations to patentably define over the cited prior art because one of ordinary skill in the art would not expect a minor increase of from 0.6% to “about 1%” to cause the composition to have markedly different properties. See MPEP 2144.05(I): A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Additionally, the anionic polymer used by Jayaswal, polyacrylic acid, was known in the art to act as a suspending agent (Murray: 0089). Jayaswal discloses that the compositions may contain suspending agents but does not disclose an amount for this type of substance. Murray discloses that suspending agents such as polyacrylic acids may be used in shampoo compositions in amounts from 0.1 to 10% by weight. The examiner also does not consider the limitation of instant claim 1 requiring the anionic polymer to be present in an amount of from 1% to 5% by weight to patentably define over the prior art because one having ordinary skill in the art would have recognized that this range of polyacrylic acid in Jayaswal’s composition would be suitable to act as a suspending agent.
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 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 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.”
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 14-17 and 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 Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record) as applied to claims 1-9, 13, 19-43 and 48 above and further in view of Bebot et al. (US 2013/0243718; publication date: 09/19/2013).
The relevant disclosures of Jayaswal, Ainger, and Murray are set forth above. Jayaswal discloses further that the composition may comprise a thickener (page 13); however, Jayaswal is silent with respect to the substances used to achieve this effect.
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; i.e. polymers based on acrylic acid or methacrylic acid; limitations of instant claims 14 and 16).
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 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 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 Murray et al. (US 2012/0100092; publication date: 04/26/2012; of record) as applied to claims 1-9, 13, 19-43 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 Murray are set forth above.
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 02/23/2026 have been fully considered but they are not persuasive.
Each of the arguments presented in traversal of the obviousness rejection 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.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617