DETAILED ACTION
Claims 1-3, 5-13, 15-23, 25-31, and 33-34 are pending. Of these, claims 21-23, 25-31, and 33-34 are withdrawn as directed to a nonelected invention. Therefore, claims 1-3, 5-13, and 15-20 are under consideration on the merits.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Rejections
The claim objection is withdrawn in view of the amendment.
The 103 rejection is maintained.
The double patenting rejection is maintained.
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 1-3, 5-8, 10-13, and 15-20 are rejected under 35 U.S.C. 103 as unpatentable over Stella et al. (US Pat. Pub. 2016/0095809).
As to claims 1-3, 5-8, 10-13, and 15-20, Stella discloses an oil in water emulsion (paragraph 19)(claim 19) for use in rinse off shampoo cleansing composition (claim 18)(paragraph 227) comprising 5-50 wt% anionic surfactant (claims 1 and 20)(paragraph 5) that is non-sulfate (claim 2) and that may be an acyl isethionate (claim 3) such as sodium cocoyl isethionate (claim 20)(paragraph 70), the foregoing range encompassing the range of claims 1 and 20. The composition further comprises a fatty alcohol (claims 1 and 20) in the amount of 0.1-30 wt% (which encompasses the ranges of claims 1 and 20) (paragraph 6) such as cetyl alcohyol, stearyl alcohol, cetearyl alcohol as recited by claim 5 (paragraph 81). The composition further comprises a fatty ester of claim 1 (paragraphs 5, 41) such as a glyceryl ester such as glyceryl stearate or glyceryl oleate (claims 6 and 20)(paragraph 43) and which is present in the amount of 0.1-50 wt%, or 2-20 wt% (paragraph 42), which encompasses the ranges of claims 1 and 20. The composition comprises at least one thickening agent such as a cationic polymer such as guar hydroxypropyl trimonium chloride (claims 1, 7, and 20)(paragraph 150) in the amount of 0.01 to less than about 0.6 wt% (paragraph 149), which overlaps the ranges of claims 1 and 20. The composition further may comprise a thickener/rheology modifier such as an associative polymer (paragraph 84) or guar gum or xanthan gum or hydroxypropyl starch phosphate (a “non-cationic polysaccharide” of claims 1 and 20)(paragraphs 175-176). Examples 39-42 disclose the use of 0.15 wt% of an associative polymer, which is slightly below the ranges of claims 1 and 20. The composition further may comprise 20-95 wt% water as a carrier (paragraph 58), which encompasses the range of claim 20. The composition may have a viscosity of 4000 cPs, which is within the claimed range of 14-45 uD, (i.e., about 3325-10,598 cP) (paragraph 202).
As to claim 8, the composition may comprise a starch hydrolysate (paragraph 157).
As to claim 10, the composition may comprise an amphoteric surfactant such as betaines, sultaines, or amphoacetates (paragraphs 73-74 and Examples 13-20).
Regarding claim 11, the composition may comprise a zinc-containing clay as an anti-dandruff agent (paragraph187).
Regarding claims 12-13, the Stella compositions may comprise an anionic alkyl sulfate surfactant, but its presence is not required (paragraph 47).
As to claims 1-3, 5-8, 10-13, and 15-20, Stella does not further expressly disclose that the amount of the non-cationic polysaccharide is within the ranges of claims 1 and 20, nor the hardness, thickness, or adhesiveness recited by claims 14-17.
As to claims 1-3, 5-8, 10-13, and 15-20, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to vary the amount of the non-cationic polysaccharide thickener to arrive at an amount that is within the range of claims 1 and 20, because said amount is a result effective variable that will affect the viscosity/rheology of the composition. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 15-17, the Stella composition is viewed as possessing a hardness, thickness, and adhesiveness within the ranges recited by these claims, since it comprises the same ingredients in the same amounts recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Stella et al. (US Pat. Pub. 2016/0095809) as applied to claims 1-3, 5-8, 10-13, and 15-20 above, and further in view of Brandt et al. (US Pat. Pub. 2003/0059382; of record).
The teachings of Stella are relied upon as discussed above, but they do not further disclose that the starch hydrolysate is hydrogenated.
Brandt discloses a cosmetic composition such as a shampoo (paragraph 114), the composition comprising a humectant to absorb and retain water such as hydrogenated starch hydrolysate (paragraph 91).
As to claim 9, it would have been prima facie obvious to modify the composition of Stella by incorporating hydrogenated starch hydrolysate in order to impart water retention properties to the composition, since Brandt expressly teaches that a cosmetic composition such as a shampoo may advantageously comprise hydrogenated starch hydrolysate to serve as a humectant. Such a modification is merely the combining of known prior art elements to obtain predictable results, which is prima facie obvious. MPEP 2143.
Response to Applicant’s Arguments
Applicant argues that the claims recite amounts of about 0.15 to 1.2 wt% for the cationic polymers and about 0.5 to 10 wt% for the non-cationic polysaccharides, which is said to be commensurate in scope with the data in the present examples showing the benefits of the inventive formula comprising the claimed combination with respect to viscosity and texture, compared to conventional hair mask formulas without such a combination.
In response, the Office has reviewed the working examples, and the specification states that both the inventive formulations and the tested conventional hair mask formulas were thicker and creamier relative to conventional aqueous shampoos, and that the hardness, thickness, and adhesiveness of the inventive formulas was also comparable to those of the conventional hair mask formulas (see page 64, lines 5-17). Therefore, the evidence of record does not appear to establish that the inventive formulations are superior to conventional formulations. Additionally, there is no evidence of record comparing the properties of the claimed composition to the Stella compositions. Since Stella teaches the same combination of surfactants, cationic polymers, and non-cationic polysaccharides that is recited by the claims as discussed in the rejection, the Stella compositions are viewed as possessing the same properties as the claimed compositions based upon the evidence of record.
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 § 2146 et seq. 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 1-3, 5-13, and 15-20 are rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-19 of U.S. Pat. No. 11,376,207, and in view of Stella et al. (US Pat. Pub. 2016/0095809) and/or Brandt et al. (US Pat. Pub. 2003/0059382) where indicated below.
The teachings of the cited secondary references are relied upon as discussed above.
The issued claims recite a hair care composition in solvent and comprising 2-13 wt% of an acylsarcosinate anionic surfactant, 0.3-1 wt% of a cationic guar gum such as hydroxypropyl guar hydroxypropytrimonium chloride, 0.2-3 wt% of a polysaccharide gum such as xanthan gum, and 2-5 wt% of a glyceryl ester such as glyceryl stearate, ad optionally an alkyl anionic sulfate surfactant.
Although the issued claims do not recite a fatty alcohol of the claims nor an amphoteric betaine surfactant nor clay nor a hydrogenated starch hydrolysate, it would have been prima facie obvious to incorporate these ingredients since Stella and Brandt et al teach that these are useful ingredients to add to a cosmetic composition such as a rinse off shampoo. Although the issued claims do not recite the viscosity of the composition, it would have been prima facie obvious to alter the viscosity of the shampoo as needed to arrive at the claimed range, since JP2006028095 expressly teaches that shampoos may have viscosities within the claimed range, and that it can be important to regulate the viscosity of shampoos, and that viscosity reducing agents and thickeners may be used to achieve such regulation. Additionally, discovering optimum or working ranges of the shampoo ingredients involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 15-17, the reference composition is viewed as possessing a hardness, thickness, and adhesiveness within the ranges recited by these claims, since it comprises the same ingredients in the same amounts recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
The claims are directed to an invention not patentably distinct from the claims of the copending application. Specifically, see above.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application of common ownership (see 37 CFR 42.411). The issued application, discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the Examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case.
Response to Applicant’s Arguments
Applicant has not submitted any substantive arguments against the rejection, which is therefore maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached on M-F 9AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/ Primary Examiner, Art Unit 1600