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 claims
Claims 18-37 are pending in the Claim Set filed 1/10/2025.
No claim has been amended.
Claims 1-17 are canceled.
Claim 36 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
Claims 18-35 and 37 are for examination.
Priority
Instant Application 16623591 filed 12/17/2019 is a National Stage entry of PCT/EP2018/066571, International Filing Date: 06/21/2018 claims foreign priority to FR1755647, filed 06/21/2017.
Withdrawn Rejections
The rejection of claims 18-35 and 37 under 35 U.S.C. 103 as being unpatentable over the combination of Paul et al (US 2018/0353396) [US ‘396] and Sun (U. S. Patent 6,613,316) [Patent ‘316] is withdrawn in view of Applicants’ arguments in favor of the New Grounds of Rejection.
New Grounds of Rejection
Claim Rejections - 35 USC § 103
Claims 18-35 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Paul et al (US 2018/0353396) [US ‘396] in view of Fernandes (WO 2015/013779) [Fernandes].
US ‘396 teaches mixture of emulsion comprising a mixture of silicones and under abstract teaches:
ABSTRACT
Present invention is related to an oil-in-water emulsion comprising a silicone mixture, a mixture of emulsifier having HLB value from 10 to 16, and the particle size of thesilicone mixture in the emulsion is less than 350 nm. A method of preparing the said emulsion comprising mixing a trialkylsilyl terminated dialkylpolysiloxane of viscosity of from 40,000 to less than 100,000 mPa.s at 25° C. and an amino silicone of viscosity of from 1,000 to 15,000 mPa.s at 25° C. and amine value of from 2 to 10 mg of KOH per gram of polymer, at a temperature of 25° C. to obtain a mixed silicone fluid and emulsifying the mixed silicone fluid by using plurality of the non-ionic emulsifier to obtain an oil-in-water emulsion, wherein D50 particle size of less than 350 nm. The invention is to use the emulsion composition in the hair cosmetic composition.
US ‘396 teaches the same oil-in-water emulsion claimed in the instant application under claims 18 and 37 drawn to (iii).
US ‘396 at ¶¶ [0021-0022] teaches:
PNG
media_image1.png
184
553
media_image1.png
Greyscale
This is same claimed in claim 28 (trialkylsilyl terminated dialkylpolysiloxane of viscosity of from 40,000 to less than 100,000 mPa.s at 25° C (See Abstract).
US ‘396 at ¶¶ [0024-0025] teaches amino silicones:
PNG
media_image2.png
426
572
media_image2.png
Greyscale
wherein the amino silicone has a viscosity of from 1,000 to 15,000 mPa.s at 25° C. and amine value of from 2 to 10 mg of KOH per gram
of polymer, at a temperature of 25° C (see Abstract). This is same amino silicones claimed in claim 29. Further, regarding viscosity and amine number claimed in claim 29, see ¶ [0017]. See example 1 at ¶ [0068]: 20% wt Aminosilicon (450 g); 80% wt trialkylsilyl terminated dialkylpolysiloxane (1800 g), and this is identical to example 1 of instant application regarding the amount of polydialkyl siloxane and amino silicone and thus meets claim 30.
US ‘396 at ¶¶ [0043-0044] teaches regarding non-ionic surfactants (i.e., emulsifiers):
PNG
media_image3.png
311
485
media_image3.png
Greyscale
PNG
media_image4.png
164
442
media_image4.png
Greyscale
Therefore, US ‘396 teaches the claimed non-ionic emulsifiers (See Specification at pages 15-18: p.18 Sterath-6; Trideceth-10; Trideceth-10) recited in claim 31.
US ‘396 at ¶ [0048] teaches:
PNG
media_image5.png
207
432
media_image5.png
Greyscale
Notably, [0048], as described above, includes water 35-45% wt., of which lies within the claimed amount of 25-50% wt as recited in claim 32.
Therefore, US ‘396 teaches the limitations of claim 32.
Further, US ‘396 at ¶ [0046] teaches claimed oil-in-water emulsion and under table 1 drawn to examples 4-6, teaches the particle size which is 175 nm, 170 nm and 190 nm and this is within, less than 350 nm that is claimed in claim 18, and this is within 100-300 nm as claimed in claim 33.
US ‘396 at ¶ [0053] teaches the amount of oil-in-water emulsions used in hair care (reads on claimed cosmetic) and this is 3-10% and this overlaps with claimed 0.1-10% of claim 18 and also overlaps with 0.2 to 8% by weight as claimed in claim 34.
US ‘396 at ¶ [0034] teaches the emulsion includes cetyltrimethylammonium chloride and this is at least one cationic surfactant species under component (ii) (claims 18, 23-25) and at ¶ [0054] teaches adding additional surfactants and fatty alcohols. US ‘396 at ¶ [0055] teaches:
PNG
media_image6.png
157
345
media_image6.png
Greyscale
PNG
media_image7.png
250
468
media_image7.png
Greyscale
US ’396 differs from the claims in that the document does not teach that the amount of cationic surfactant under (ii) and cationic surfactant under (i) and fatty alcohols of claim 35
However, Fernandes cures the deficiencies.
Fernandes teaches a composition comprising an aminosilicone, a cationic surfactant, an associative polymer and a thickening agent The present invention relates to a composition for treating keratin fibers, in particular human keratin fibers such as the hair, comprising (i) one or more amino silicones, (ii) one or more cationic surfactants different from (i), (iii) one or more associative polymers and (iv) one or more thickening agents different from (iii). The invention also concerns a process for treating keratin fibers, in particular, human keratin fibers such as the hair, and a use for hair care employing the said composition (Abstract). Further, Fernandes teaches silicones often have the drawback of making the hair very lank and heavy, which leads to the phenomenon commonly known as the "build-up effect". In other words, silicones become deposited in a large amount of material on the hair, which has the consequence of making the head of hair lank and of limiting the use of silicones for conditioning the hair. Therefore, there is a real need to develop compositions, for example, hair conditioners, that do not have the combination of drawbacks described above, i.e. which are capable of treating and positively nourishing the hair, namely by affording it softness, smoothness and suppleness while at the same time leaving it lighter and more natural (p.1, lns.27-36 to p.2, lns.1-20).
Moreover, Fernandes teaches that the Applicant has discovered, surprisingly, that it is possible to formulate compositions for the treatment of keratin fibres, which have the desired properties, by combining in these compositions comprising one or more amino silicones and one or more cationic surfactants. In particular, it has been found that the composition allows depositing selectively a suitable amount of aminosilicones on hair, in order to improve the cosmetic properties conferred to it while at the same time leaving it lighter and more natural. In other words, the treated hair is less lank and heavy while the cosmetic properties are improved (p.2., lns.3-12). Fernandes teaches the composition of the present invention is able to improve the cosmetic properties of keratin fibres, in particular human keratin fibres such as the hair, especially in terms of softness, smoothness and suppleness while at same time giving the hair a more natural look and feeling (p.2., lns.20-23). Fernandes teaches among the quaternary ammonium salts of formula (VI) (See Formula at page 8), preference is given to tetraalkylammonium chlorides, for example, dialkyldimethylammonium, (alkyl radical: 12 to 22 carbon atoms), cetyltrimethylammonium, distearyldimethylammonium, benzyldimethylstearylammonium and stearamidopropyldimethyl(myristyl acetate)-ammonium chloride, behenyltrimethylammonium and palmitylamidopropyl trimethylammonium chlorides (all these quaternary ammonium salts are listed in either instant claim 21 and/or claim 25) (p.8, lns.3-31); more preferably, the cationic surfactant is cetyltrimethylammonium chloride or behenyltrimethylammonium chloride (col.12, lns.30-36). The cationic surfactants used in the composition of the present invention may be present in said composition in an amount of from 0.1 wt% to 20% by wt%, more preferably from 0.5 to 15% by wt%, preferably from 1 by wt% to 10 by wt%, relative to the total weight of the composition (p.13, lns.5-8). These ranges based on the total weight of the composition overlap with the claimed ranges recited in instant claims 18, 22, 26, 27, 37). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976); In re Woodruff, 91 9 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Further, Fernandes teaches that the composition further comprises fatty alcohols having the structure R-OH in which R denotes a saturated or unsaturated, linear or branched radical containing from 8 to 30, carbon atoms; for example, cetyl alcohol, stearyl alcohol, oleyl alcohol, linoleyl alcohol, and undecylenyl alcohol and mixtures thereof (pp.32, lns.27-37 to p.33, lns.1-10). Noteworthy, all of these alcohols are listed in Specification at page 24.
One of ordinary skill in the art would have been motivated to modify the oil-in-water emulsion as taught by US ’396 to comprise one or more cationic surfactants (emulsifiers), such as, cetyltrimethylammonium, distearyldimethylammonium, benzyldimethylstearylammonium and stearamidopropyldimethyl(myristyl acetate)-ammonium chloride, behenyltrimethylammonium and palmitylamidopropyltrimethyl ammonium chlorides in an amount of from 1 wt% to 10 by wt% relative to the total weight of the composition in view of the teachings of Fernandes. These ranges based on the total weight of the composition overlap with the claimed ranges. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Moreover, one skilled in the art would have been motivated to do so because Fernandes teaches silicones become deposited in a large amount of material on the hair, which has the consequence of making the head of hair lank and heavy, which leads to the phenomenon commonly known as the "build-up effect". However, Fernandes teaches that the Applicant has discovered, surprisingly, that it is possible to formulate compositions for the treatment of keratin fibres, which have the desired properties, by providing these compositions comprising one or more amino silicones and one or more cationic surfactants such that the compositions allow depositing selectively a suitable amount of aminosilicones on hair, in order to improve the cosmetic properties conferred to it while at the same time leaving it more light and natural. In other words, the treated hair is less lank and heavy while the cosmetic properties are improved.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The issue here is whether one skilled in the art would have been motivated to include cationic surfactants in the claimed amounts, since US ’396 teaches the oil-in-water emulsion may further comprise cationic surfactant (emulsifiers), for example, cetyltrimethylammonium (See above: [0034]). In accordance with teachings of Fernandes the composition comprising cationic surfactants, for example, cetyltrimethylammonium, distearyldimethylammonium, benzyldimethylstearylammonium and stearamidopropyldimethyl(myristyl acetate)-ammonium chloride, behenyltrimethylammonium and palmitylamidopropyltrimethylammonium chlorides, overcome the drawback of build-up of aminosilicones on hair by including one or more cationic surfactant in an amount ranging from 1-10% wt of the total composition to provide the treated hair that is less lank and heavy while the cosmetic properties are improved.
Thus, it would have been prima facie obvious for one of ordinary skill in the art to modify oil-in-water emulsion as taught by U ‘0316 to provide an oil-in-water emulsion that comprises one or more silicone and one or more cationic surfactant in about 0.5 to 15% by wt% or 1 wt% to 10 wt% relative to the total weight of the composition in view of the teachings of US ’396 and Fernandes, as a whole, of which In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976); In re Woodruff, 91 9 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05. Instant Claims recite 0.5-5% by relative to the total weight of the composition, of which lies inside the cationic surfactant amount of 0.5 to 15% by weight relative to the total weight of the composition as taught by Fernandes.
Selecting a narrow range: 0.5-5% wt (claimed) from within a somewhat broader range disclosed in a prior art reference (Fernandes: 0.5 to 15%) is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when, as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of %weight ranges is the optimum combination. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA1980). Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. In addition, references are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In re Bozek, 163 USPQ 545 (CCPA 1969).
Furthermore, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant (In re Kahn, 78 USPQ2d 1329, 1336, Federal Circuit 2006).
All the claimed elements herein are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Thus, it would have been obvious for one of ordinary skill in the art to provide instantly claimed invention and one of ordinary skill would have had a reasonable expectation of success in producing the claimed invention. Therefore, in the absence of evidence to the contrary, the invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by Paul [396] and Fernandes, as a whole.
Response to Arguments
Applicants argue in the reply filed 1/10/2025 the following:
Applicants argue: Paul explains that "conditioning agents most commonly used to date in shampoos are cationic polymers, silicones and/or silicone derivatives which, in effect, impart to washed, dry or wet hair an ease of disentangling, softness and a smoothness which are markedly enhanced in comparison to what can be obtained with corresponding cleansing compositions which do not contain them. However, as Paul notes, prior silicone-containing personal care products were unsatisfactory, for example because silicone deposition is not very uniform and the desired performance is not achieved. As such, Paul sought to provide a "stable mechanical emulsion with an alkyl terminated siloxane and or alkyl terminated functional siloxane with the desired low particle size that could be used in "hair cosmetic composition[s]. For example, Paul describes examples where inventive and comparative emulsions are used in shampoo compositions to provide conditioning effects. As reported, the shampoo compositions prepared using inventive emulsions 4-6 and 13-15 provided "the best results regarding dry combing force, frictional force, panel test and silicone deposition, whereas the shampoo compositions prepared with comparative emulsions 1-3, 7-12, and 17-27 either provided too much silicone deposition "which is not at all desirable" or did not provide satisfactory dry combing and friction properties.
Applicants argue: there is no motivation or reasonable expectation of success in modifying Paul's shampoo compositions or any shampoo composition using Paul's disclosed emulsions by adding Sun's alkyl and dialkyl quats. Applicants argue a skilled person would not have been motivated to modify Paul's
shampoo compositions or to formulate any shampoo composition using Paul's emulsions with a reasonable expectation of success, at least because it is well known that shampoo compositions require the presence of cleaning surfactants, i.e. anionic and amphoteric surfactants. The skilled person, therefore,
would not be motivated to introduce strongly cationic alkyl quats (carrying a permanent positive charge) into an anionic system (See reply at pages 13-14). For example, a skilled formulator familiar with surfactant chemistry understands that oppositely charged anionic and cationic surfactants strongly interact through electrostatic ion pairing, forming insoluble complexes leading to coacervation and/or precipitation, as well as instability and loss of cleansing efficacy (See reply at page 14). Applicants report that it is known that conventional anionic and cationic surfactants are generally not compatible, tending to precipitate when mixed in aqueous solution. Precipitation is undesirable because it renders the surfactants substantially or completely ineffective. Therefore, anionic and cationic surfactants are difficult to mix without the risk of precipitation or instability (See reply at page 14, second para.).
Further, Applicants argue: In addition, Paul is specifically directed to compositions that provide conditioning benefits with a "reduced heavy feel and build up (See Paul, para. [0011], [0055]). As he (Paul) describes, this is achieved by controlling the amount of silicone deposited onto the hair to
balance the conditioning while avoiding heavy buildup. However, a skilled person would have known that fatty alkyl quats are waxy and highly substantive compounds that build-up over time, leaving the hair feeling heavy ((See reply at pages 14, third para.). Applicants report, quaternary compounds to the hair
dulls the hair and builds up on the hair, and that the buildup is not easily removed by conventional shampoo surfactants, and with continued use of the shampoo and the conditioner, the amount of this deposit or build-up tends to increase. In fact, cationic surfactants such as Sun's alkyl quats are considered "soil" that is left behind after treatment with a conditioner, which the shampoo composition must then remove (See reply at pages 14-15). Applicants report, that compounds such as monoalkyl or dialkyl quats are hard to remove from the hair once deposited, and lead to build-up: "mono-functional cationics are resistant to removal by anionic surfactant because they form adsorption complexes on hair and these have the potential to build up on hair (See reply at pages 15, middle of first para.). Applicants argue: as such, a skilled person would not have been motivated to add Sun's monoalkyl or dialkyl quats to Paul's shampoo for the additional reason that doing so would lead to the exact problem Paul was seeking to solve with the disclosed emulsions.
Applicants conclude: Accordingly, at least because of the known incompatibility between strong cationic conditioning surfactants such as alkyl and dialkyl quats, and because alkyl and dialkyl quats were known to have the very disadvantage Paul was seeking to overcome, a skilled person would not have been motivated to use Sun's monoalkyl and dialkyl quats in Paul's shampoo compositions, or in any shampoo composition using Paul's inventive emulsion.
Applicant’s arguments have been fully considered but they are not persuasive, because Paul (US’96) at para. [0034] teaches that the compositions may further comprise cationic surfactant (emulsifiers), as described above): reproduced below for Applicants convenience (shown below).
PNG
media_image6.png
157
345
media_image6.png
Greyscale
In fact, Paul teaches using cationic surfactants: e.g., cetyltrimethylammonium, of which is instantly claimed (See claim 25). Therefore, Paul does not teach away from including cationic surfactants (emulsifiers) in the compositions. Thus, Paul (US ‘396) does not criticize, discourage or otherwise discourage providing cationic surfactants (Quats’) in his compositions.
Further, the Examiner would like to point out that teachings of SUN reference (Sun's monoalkyl and dialkyl quats) is not included in the New Grounds of Rejection provided above).
Moreover, Fernandes teaches that the Applicant has discovered, surprisingly, that it is possible to formulate compositions for the treatment of keratin fibres, which have the desired properties, by combining in these compositions comprising one or more amino silicones and one or more cationic surfactants. In particular, it has been found that the composition allows depositing selectively a suitable amount of silicones on hair, in order to improve the cosmetic properties conferred to it while at the same time leaving it lighter and more natural. In other words, the treated hair is less lank and heavy while the cosmetic properties are improved (p.2., lns.3-12). Fernandes teaches the composition of the present invention is able to improve the cosmetic properties of keratin fibres, in particular human keratin fibres such as the hair, especially in terms of softness, smoothness and suppleness while at same time giving the hair a more natural look and feeling (p.2., lns.20-23). Fernandes teaches among the quaternary ammonium salts of formula (VI) (See Formula at page 8), preference is given to tetraalkylammonium chlorides, for example, dialkyldimethylammonium, (alkyl radical: 12 to 22 carbon atoms), cetyltrimethylammonium, distearyldimethylammonium, benzyldimethylstearylammonium and stearamidopropyldimethyl(myristyl acetate)-ammonium chloride, behenyltrimethylammonium and palmitylamidopropyltrimethylammonium chlorides (all these quaternary ammonium salts are listed in either instant claim 21 and/or claim 25) (p.8, lns.3-31).
MPEP 2144 II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006).
Thus, it would have been prima facie obvious to those skilled in the art in view of the teachings of Fernandes that the addition of cationic surfactant provides significant advantages to a hair care compositions comprising silicones having a reasonable expectation of success of treating silicon build up on the fibers of hair. Therefore, the teachings of Fernandes (WO2015/013779) provide support and motivation to provide Paul’s compositions US 2018/03533306) that further comprise cation surfactants, i.e., quats). Accordingly, the teachings of Fernandes are pertinent to the problem to be solved by Paul (US 2018/03533306). Noteworthy, the prior art of Fernandes (WO2015/013779) was published 5 February 2015, whereas the Paul reference (US ’396) was later published on December 13, 2018. Therefore, the teachings of the prior art of Fernandes provides reasonable rationale and/or motivation to modify Paul’s composition to achieve the problem that Paul addressed: Applicants argue: Paul is specifically directed to compositions that provide conditioning benefits with a "reduced heavy feel and build up (See Paul, para. [0011], [0055]).
Applicants’ exhibit A and Exhibit B directed cationic emulsifier (surfactants: quats) used in shampoos are needed in conditioner formulas that are too difficult remove have been considered but are not persuasive in view of the teachings of Paul (US ‘396 and Fernandes, as a whole. Fernandes clearly provides sufficient motivation to modify the teachings of Paul (US ‘396) having a reasonable expectation of success. USP 8557756 directed anionic and cationic surfactants are generally not compatible has been considered but not persuasive, at least for the reason that the compositions as taught by Paul (US ‘396) do not include anionic surfactants. USP 4818253 directed deposit of quaternary surfactants comprising anion surfactants produce deposit on the surface is not persuasive in view of the teachings of Paul (US ‘396 and Fernandes, as a whole, wherein Fernandes clearly teaching the benefit of including quaternary surfactants in an oil-in-water emulsion comprising silicones and furthermore, because the compositions as taught by Paul (US ‘396) do not include anionic surfactants.
Applicants argue that there is no motivation or reasonable expectation of success in preparing Paul's other hair compositions using the disclosed emulsions with Sun's alkyl and dialkyl quats. Applicants argue that Paul does not provide any guidance for preparing any other hair compositions other than shampoos. However, even if a skilled person were to formulate one of Paul's other identified hair compositions that the disclosed emulsions can be used for, i.e. "rinses, creams, or sprays," there still would have been no motivation or reasonable expectation of success in adding Sun's monoalkyl and dialkyl quats. Applicants argue that the skilled person would have recognized that doing so would be antithetical to Paul's stated goal of providing conditioning benefits with "reduced heavy feel and build up." Applicants argue that the skilled person would have expected that including both Paul's emulsion and Sun's alkyl and dialkyl quats in a single composition would have actually been disadvantageous to the effects of each. This is because cationic surfactants bind to negatively-charged sites on the hair fiber (See reply filed on page 15, last para.). On the other hand, silicone droplets such as those described in Paul are designed to adsorb onto hair fibers and form hydrophobic films. Paul, [0066]. Since Paul explains that the disclosed emulsions are very good at depositing silicone onto the hair (see Table 4 and para. [0077]), the skilled person would have expected Paul's silicone to effectively cover surface area of the hair fiber, thereby impeding the ability of Sun's cationic alkyl and dialkyl quats from binding to the underlying negative charges. In other words, a skilled person would have expected that the particularly effective deposition of Paul's silicone emulsion would interfere with ionic adsorption of Sun's cationic alkyl quats. As such, a skilled person would not have been motivated to combine Paul's disclosed silicone emulsions and Sun's cationic alkyl quats in the same rinse, cream, or spray composition, as doing so would have been expected to inhibit efficacy of the quats.
Applicant’s arguments have been fully considered but they are not persuasive, because Paul (US’316) at para. [0034] teaches that the compositions may further comprise cationic surfactant (emulsifiers), as described above): reproduced below for Applicants convenience (shown below).
PNG
media_image6.png
157
345
media_image6.png
Greyscale
In fact, Paul teaches using cationic surfactants: e.g., cetyltrimethylammonium, of which is instantly claimed (See claim 25). Therefore, Paul does not teach away from including cationic surfactants (emulsifiers) in the compositions. Thus, Paul (US ‘396) does not criticize, discourage or otherwise discourage providing cationic surfactants (Quats’) in his compositions.
Further, the Examiner would like to point out that teachings of SUN reference (Sun's monoalkyl and dialkyl quats) is not included in the New Grounds of Rejection provided above). Therefore, Applicants’ arguments that that a skilled person would not have been motivated to combine Paul's disclosed silicone emulsions and Sun's cationic alkyl quats in the same rinse, cream, or spray composition, as doing so would have been expected to inhibit efficacy of the quats is moot.
However, in view of Applicants’ arguments in view of the newly applied teachings of Fernandes; the teachings of the prior art of Fernandes provides reasonable rationale and/or motivation to modify Paul’s composition to achieve the problem that Paul addressed: Applicants argue: Paul is specifically directed to compositions that provide conditioning benefits with a "reduced heavy feel and build up (See Paul, para. [0011], [0055]).
However, Fernandes teaches the compositions comprising cationic surfactants, e.g., cetyltrimethylammonium (Noteworthy, Paul teaches the composition may further comprise cationic surfactant, e.g., cetyltrimethylammonium, of the present invention is able to improve the cosmetic properties of keratin fibres, in particular human keratin fibres such as the hair, especially in terms of softness, smoothness and suppleness while at same time giving the hair a more natural look and feeling (p.2., lns.20-23).
MPEP 2144 II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). Accordingly, the teachings of Fernandes are pertinent to the problem to be solved by Paul (US 2018/03533306).
Applicants argue that there is no motivation or expectation of success in modifying Paul's emulsions to achieve the claimed amount of cationic surfactant (ii) The Office recognizes that Paul's emulsions, which require a nonionic emulsifier and only optionally include an additional cationic emulsifier, do not overlap with the claimed 0.5% to 10% by weight, relative to the total weight of the composition. A skilled person would not have been motivated to modify Paul's emulsions to include an amount of cationic surfactant (ii) as claimed. Paul explains that the emulsions can be used in hair compositions in an amount ranging from 3% to 10% by weight of the hair composition. See Paul, para. [0053]. According to Paul, amounts of components in the emulsion are as follows: See reply on page 16, shows para. [0053]. Applicants argue even using the lowest end of the above ranges, Paul's emulsion includes 91.5% of just the required components. However, in order to arrive a cosmetic composition comprising cationic surfactant (ii) in an amount ranging from 0.5% to 10% by weight, relative to the total weight of the composition, as claimed, even if the emulsion was included in the hair composition at the highest amount (10%), it would require that the emulsion contain 33.3% of the optional cationic surfactant-almost 25% more than is even possible while also following Paul's direction on preparing the emulsion. In addition, Paul already explains that creating a stable emulsion is challenging. Paul at [0013]: it is a great challenge to make a stable mechanical emulsion with an alkyl terminated siloxane and or alkyl terminated functional siloxane with the desired low particle size"); see also Tables 2-3 (describing preparation of emulsions 37-76, all of which were characterized as "unstable"). As such, a skilled person would have already been cautious not to make significant changes to Paul's emulsions, understanding that doing so would risk instability, change droplet size, etc. Therefore, the skilled person would not have increased the amount of cationic surfactant, e.g. cetyltrimethyl ammonium chloride, to achieve an emulsion that would itself include a sufficient amount of cationic surfactant to achieve the claimed amount, contrary to the express teachings of Paul.
Applicant argue that a skilled person would not have been motivated to formulate Paul's shampoo compositions with Sun's alkyl and dialkyl quats, or in fact any shampoo composition, as doing so would have been expected to lead to precipitation and/or coacervation, causing instability, turbidity, and loss of surfactant efficacy. In addition, a skilled person would not have been motivated to formulate any of Paul's other identified hair compositions with the disclosed silicone emulsion in combination with Sun's alkyl and dialkyl quats because (1) Paul's emulsion is identified as specifically addressing the problem of conditioning components causing "heavy feel and build up" of the hair, and Sun's alkyl and dialkyl quats were known to build up with repeated use, and (2) Paul's emulsion effectively deposits silicone onto the hair fibers, which would be expected to interfere with the ability of the cationic quats to bind to the hair surface. Finally, a skilled person would not have been motivated to modify Paul's emulsions to achieve an amount of the optional cationic emulsifier that would be sufficient to achieve the claimed range in the final composition, because doing so would require an amount greater than is possible while keeping the amounts of required components within Paul's disclosed ranges.
Applicant’s presented closely aligned points and interconnected arguments in responses filed May 30, 2023 and May 8, 2023.
Thus, relying on Applicants’ calculation in their response filed November 30, 2023, on page 15 on the amount of cationic surfactant provided in the prior art of Paul (US ‘396), where Applicants admit that Paul teaches from 0.015-0.15% of cationic surfactants in the hair compositions comprising his emulsion.
However, Fernandes teaches among the quaternary ammonium salts of formula (VI) (See Formula at page 8), preference is given to tetraalkylammonium chlorides, for example, dialkyldimethylammonium, (alkyl radical: 12 to 22 carbon atoms), cetyltrimethylammonium, distearyldimethylammonium, benzyldimethylstearylammonium and stearamidopropyldimethyl(myristyl acetate)-ammonium chloride, behenyltrimethylammonium and palmitylamidopropyltrimethylammonium chlorides (all these quaternary ammonium salts are listed in either instant claim 21 and/or claim 25) (p.8, lns.3-31); more preferably, the cationic surfactant is cetyltrimethylammonium chloride or behenyltrimethylammonium chloride (col.12, lns.30-36). The cationic surfactants used in the composition of the present invention may be present in said composition in an amount of from 0.1 wt% to 20% by wt% relative to the total weight of the composition (p.13, lns.5-8)., wherein 0.1 wt% to 20% by wt% as Fernandes overlaps with the amount of cation surfactant as taught by Fernandes. So that the modification of 0.1 wt% to 20% of cationic surfactant as taught Fernandes would overlap with the scope of invention as taught by Paul (US ‘396) (0.015-0.15% of cationic surfactants). Moreover, the teachings of Fernandes are pertinent to the problem to be solved by Paul (US 2018/03533306). Therefore, the teachings of the prior art of Fernandes provides reasonable rationale and/or motivation to modify Paul’s composition to achieve the problem that Paul addressed: Applicants argue: Paul is specifically directed to compositions that provide conditioning benefits with a "reduced heavy feel and build up (See Paul, para. [0011], [0055]). Especially, since Fernandes teaches that it has been found that the composition allows depositing selectively a suitable amount of aminosilicones on hair, in order to improve the cosmetic properties conferred to it while at the same time leaving it lighter and more natural. In other words, the treated hair is less lank and heavy while the cosmetic properties are improved and address the problem of silicon build-up of silicon of the hair fibers. Moreover, 0.1 wt% to 20% by wt% of cationic surfactant as taught by encompasses the claimed amount of 0.5% to 10% by weight of the total composition.
Selecting a narrow range: 0.5-5% wt (claimed) from within a somewhat broader range disclosed in a prior art reference (Fernandes: 0.1 wt% to 20%) is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when, as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of % weight ranges are the optimum combination. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA1980). Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success. One would have been motivated to determine the optimal weight % of the cationic surfactant in order to best achieve the desired results of a composition that overcomes the problem of silicones become deposited in a large amount of material on the hair, which has the consequence of making the head of hair lank and of limiting the use of silicones for conditioning the hair. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955) & MPEP 2144.05
In addition, references are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In re Bozek, 163 USPQ 545 (CCPA 1969). Furthermore, references are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In re Bozek, 163 USPQ 545 (CCPA 1969). As here, the strongest rationale for combining references that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006).
Lastly, Fernandes teaches that Applicant has discovered, surprisingly, that it is possible to formulate compositions for the treatment of keratin fibers, which have the desired properties, by combining in compositions comprising one or more amino silicones, one or more cationic surfactants, wherein it was found that the compositions allow depositing selectively a suitable amount of silicones on hair, in order to improve the cosmetic properties conferred to it while at the same time leaving it lighter and more natural.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thurman Wheeler whose telephone number is (571)-270-1307. The examiner can normally be reached Monday-Friday 10:00am-6:00 PM EST.
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 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.W./ Examiner, Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619