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 . Claims included in prosecution are 1, 4-15, and 18-20.
Previous Rejections
Applicants' arguments, filed 12/11/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
New Rejections have been made in this office action that are not necessitated by amendment. Therefore, this action is made NON-FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
1. Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda et al. (US 5,720,946, Feb.24, 1998) (hereinafter Takeda).
Takeda discloses a hair revitalizing composition containing as effective ingredients amine oxide compounds (Abstract). Amine oxide which are anionic surface active agent are known to be usable for a hair conditioner composition and were found to have an excellent hair revitalizing effect (col 1, line 32-38). Suitable amine oxides for use include those represented by formula (1) (col 1, line 65-66). In said formula, R2 may be a branched chain C22-36 alkyl or alkenyl (col 2, line 9-10). Preferred compounds of formula (1) are of formula (1-a) (col 3, line 9-11).
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In the above formula, R2-a has the meaning defined for R2 of formula (1) (col 3, line 32-33). A particularly preferred compound belonging to the compound group of the formula (1) is N.N-dimethyl-2-decyltetradecylamine oxide (col 3, line 58-60). The hair revitalizing composition can be in any dosage form. provided that it can be applied to the outer skin (col 5, line 49-51). In comparative example 10, 0.1% N,N-dimethyl-2-decyltetradecylamine oxide is used (Table 7). In example 15, 0.5% N,N-dimethyl-2-decyltetradecylamine oxide is used (Table 7).
Regarding claim 1 reciting removing a cosmetic containing a dye, this is merely a recitation of the intended use of the claimed composition. Since the composition of Takeda is substantially the same as the claimed composition, comprising substantially the same active compound and can be applied topically, one would reasonably conclude that the composition of Takeda would be useable for removing a cosmetic containing a dye, whether the prior art discloses such use or not.
The prior art anticipates the indicated claim insofar as it discloses a topical composition comprising 0.5% N,N-dimethyl-2-decyltetradecylamine oxide.
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.
1. Claim(s) 1, 4-7, 9-14, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cauvin et al. (US 2018/0078467, Mar. 22, 2018) (hereinafter Cauvin) in view of Takeda et al. (US 5,720,946, Feb.24, 1998) (hereinafter Takeda) as evidenced by Lotioncrafter (Euxyl PE 9010) (hereinafter Lotioncrafter).
Cauvin teaches of methods for preparing emulsions of a silicone fluid having pituitous rheological properties and compositions comprising the emulsions. The compositions may be personal care compositions and compositions for hair shampoo, hair conditioner, and hair treatment composition (Abstract). The oil phase of the oil-in-water emulsion is formed combining a carrier fluid, a SiH-containing organopolysiloxane and an alkenyl-containing organopolysiloxane (¶ [0006]). The oil phase comprises from 40% to 80% by weight of the emulsion (reference claim 5). The emulsion includes a carrier fluid chosen from a silicone fluid (i.e., volatile oily component) (¶ [0071]). The carrier fluid is typically present in the emulsion in an amount from 1 % to 90% by weight of the emulsion (¶ [0072]). In some embodiments the emulsion is an oil-in-water emulsion and may include at least one surfactant such as an anionic, nonionic, cationic, an amphoteric surfactant, or a mixture of any of these surfactants (¶ [0075]). The surfactant may be in an amount from 0.01 % to 20% by weight of the emulsion or from 0.5% to 5% by weight of the emulsion (¶ [0076]). Suitable amphoteric surfactants include betaines (¶ [0079]). Typical solvents include ethanol, propanol, isopropanol, n-butyl alcohol, t-butyl alcohol, ethylene glycol, diethylene glycol, propylene glycol, dipropylene glycol, glycerol, propylene carbonate, and mixtures thereof. (i.e., water-soluble alcohol) (¶ [0093]). Glycerol may be used in an amount of 5% in a skin composition (satisfies claim 9) (Ref. Example 22). The emulsions of the present invention may contain additional components such as preservatives (¶ [0093]). The personal care compositions may be in the form of a cream, a gel, a powder, a paste, or a freely pourable liquid (¶ [0095]). The composition may be used as a personal and facial cleanser (¶ [0096]). The desired pH of use is from 3 to 9 (¶ [0102]). The composition may also include thickening agents such as sodium chloride (i.e., a salt) in an amount from 0.05 to 10 wt% (¶ [0119]).
Cauvin differs from the instant claim insofar as not disclosing wherein the emulsion contains trialkylamine oxide such as the one represented by chem. (1).
Takeda discloses a hair revitalizing composition containing as effective ingredients amine oxide compounds (Abstract). Amine oxide which are anionic surface active agent are known to be usable for a hair conditioner composition and were found to have an excellent hair revitalizing effect (col 1, line 32-38). Suitable amine oxides for use include those represented by formula (1) (col 1, line 65-66). In said formula, R2 may be a branched chain C22-36 alkyl or alkenyl (col 2, line 9-10). Preferred compounds of formula (1) are of formula (1-a) (col 3, line 9-11).
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In the above formula, R2-a has the meaning defined for R2 of formula (1) (col 3, line 32-33). A particularly preferred compound belonging to the compound group of the formula (1) is N.N-dimethyl-2-decyltetradecylamine oxide (col 3, line 58-60). The amine oxide of formula (1) is more preferably included in an amount of 0.05 to 5 weight % per weight of the whole hair revitalizing composition (col 4, line 60-67). As a system the hair revitalizing composition can be a water-oil mixture system, oil 0.2 to 80% by weight, the balance being water (col 5, line 4-10). The hair revitalizing composition can be in any dosage form. provided that it can be applied to the outer skin, such as a liquid. an ointment. a cream, a gel or an aerosol, and can be used in such a form as a tonic, a conditioner or a scalp treatment (col 5, line 49-51). In comparative example 10, 0.1% N,N-dimethyl-2-decyltetradecylamine oxide is used (Table 7). In example 15, 0.5% N,N-dimethyl-2-decyltetradecylamine oxide is used (Table 7).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Cauvin discloses wherein the composition may include an anionic surfactant. Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated Cauvin’s composition to include an amine oxide represented by formula (1-a) such as N.N-dimethyl-2-decyltetradecylamine oxide, since this is a known anionic surfactant effective for use in hair compositions as taught by Takeda.
Regarding claim 1 reciting removing a cosmetic containing a dye, this is merely a recitation of the intended use of the claimed composition. Since the composition of Cauvin in view of Takeda is substantially the same as the claimed composition, comprising substantially the same components and actives, and may be applied topically, one would reasonably conclude that the composition of Cauvin in view of Takeda would be useable for removing a cosmetic containing a dye, whether the prior art discloses such use or not.
Regarding the amount of trialkylamine oxide (i.e., 0.05 to 0.8%) recited in instant claim 1, as discussed above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). However, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). Cauvin in view of Takeda discloses wherein the amount of the amine oxide is particularly preferably 0.01 to 5.0% by weight, such as 0.5% N,N-dimethyl-2-decyltetradecylamine oxide used in an example. Accordingly, because the amounts recited in the instant claims lie within range disclosed by Cauvin in view of Takeda, the range disclosed Cauvin in view of Takeda meets the instantly recited limitation.
In regards to instant claim 4, as noted by (¶ [0090]) of the instant specification, including component (F) (polyol derivative) acts to clearly define the interface between the oil phase and the aqueous phase at the time of re-separation of the oil phase and the aqueous phase. Accordingly, since the combination of Cauvin in view of Takeda discloses substantially the same composition as the claimed invention, one of ordinary skill in the art would reasonably suspect that the composition of Cauvin in view of Takeda exhibits substantially the same property of “the oil phase and the aqueous phase are not emulsified” as recited by the instant claim.
Regarding claim 5, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Cauvin discloses wherein the oil phase comprises from 40% to 80% by weight of the emulsion. Where the oil phase is 40% to 80% by weight of the emulsion, it would be expected that the aqueous phase would be 20% to 60% by weight of the emulsion.
Regarding claim 6, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Cauvin’s emulsion has desired pH of use is from 3 to 9. Accordingly, because the range recited in the instant claims lie inside the range disclosed by Cauvin in view of Takeda, the range disclosed by Cauvin in view of Takeda meets the instantly recited limitations.
Regarding claims 7 and 19 reciting wherein the composition contains 0.2% of a surfactant, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Cauvin’s emulsion may contain surfactants in an amount from 0.01 % to 20% by weight of the emulsion. Accordingly, because the amounts recited in the instant claims lie inside the amounts disclosed by Cauvin in view of Takeda, the amounts disclosed by Cauvin in view of Takeda meet the instantly recited limitations.
Regarding the amount of a volatile oily component (i.e., 15 to 50%) recited in instant claim 10, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Cauvin’s emulsion may include a silicone fluid (i.e., volatile oily component) in an amount from 1 % to 90% by weight of the emulsion. Accordingly, because the amounts recited in the instant claims lie inside the amounts disclosed by Cauvin in view of Takeda, the amounts disclosed by Cauvin in view of Takeda meet the instantly recited limitations.
Regarding the amount of a salt (i.e., 0.1 to 5%) recited in instant claim 12, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). As discussed above, Cauvin’s emulsion may include thickening agents such as sodium chloride (i.e., a salt) in an amount from 0.05 to 10 wt%. Accordingly, because the amounts recited in the instant claims lie inside the amounts disclosed by Cauvin in view of Takeda, the amounts disclosed by Cauvin in view of Takeda meet the instantly recited limitations.
In regards to claims 13 and 14, Cauvin discloses in example 22 that the composition contains 0.5% Euxyl PE 9010 (a preservative) which contains phenoxyethanol and ethylhexylglycerin (¶ [0230]). As evidenced by Lotioncrafter, Euxyl PE 9010 contains 10% ethylhexylglycerin (Page 1, Euxyl® PE 9010 contains). As such, ethylhexylglycerin is used an amount of 0.05% which meets the recited limitations.
In regards to instant claim 18, the claim merely recites the intended use of the claimed composition. Since the composition of Cauvin in view Takeda is substantially the same as the claimed composition, the composition of Cauvin in view of Takeda would be useable as a leave-on composition. (Note also that Cauvin suggests various personal care uses (see Abstract). Such additional uses would seem to be well-known in the art).
Therefore, the combined teachings of Cauvin and Takeda render obvious claims 1, 4-7, 9-14, and 18-19.
2. Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cauvin et al. (US 2018/0078467, Mar. 22, 2018) (hereinafter Cauvin) in view of Takeda et al. (US 5,720,946, Feb.24, 1998) (hereinafter Takeda) and further in view of Kitko et al. (US 2009/0221463, Sep. 3, 2009) (hereinafter Kitko).
The teachings of Cauvin and Takeda are discussed above.
The combined teachings of Cauvin and Takeda do not disclose wherein the composition contains a glycol derivative such as propylene glycol stearate.
However, Kitko teaches of a concentrated personal cleansing composition (Abstract). Kitko discloses wherein propylene glycol stearate is a nonionic surfactant (¶ [0053]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Cauvin in view of Takeda disclose wherein the composition may include nonionic surfactants. Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated the composition of Cauvin in view of Takeda to include propylene glycol stearate, since it is a known and effective nonionic surfactant as taught by Kitko.
Regarding the amount of polyol derivative wherein the polyol derivative may be a glycol derivative (i.e., 0.05 to 5%) recited in instant claim 13, as discussed above, Cauvin’s emulsion may include surfactants such as nonionic surfactants in an amount from 0.01 % to 20% by weight of the emulsion. As discussed above, propylene glycol stearate (i.e., a glycol derivative) is a known and effective nonionic surfactant as taught by Kitko. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(A). Accordingly, since an overlap plainly exists here, it would have been obvious to have selected values within the overlap.
Therefore, the combined teachings of Cauvin, Takeda, and Kitko render obvious claims 13 and 15.
3. Claim(s) 8 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cauvin et al. (US 2018/0078467, Mar. 22, 2018) (hereinafter Cauvin) in view of Takeda et al. (US 5,720,946, Feb.24, 1998) (hereinafter Takeda) and further in view of Decarlo et al. (US 2018/0243198, Aug. 30, 2018) (hereinafter Decarlo).
The teachings of Cauvin and Takeda are discussed above.
The combined teachings of Cauvin and Takeda do not explicitly disclose wherein the composition comprises an alkylbetaine surfactant.
However, Decarlo discloses hair care compositions (Abstract). Suitable amphoteric surfactants include betaines (¶ [0166]). Preferably, the amphoteric surfactants are chosen from (C8-C20) alkylbetaines (¶ [0205]). The composition may comprise silicone oils which may be included as part of the oily phase which can be combined with an aqueous phase in an emulsion (¶ [0234]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Cauvin in view of Takeda disclose wherein the composition may include amphoteric surfactants such as betaines. Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated the composition of Cauvin in view of Takeda to comprise alkylbetaines, since they are known amphoteric surfactants for use in hair care compositions which may be in the form of silicone oil water emulsions as taught by Decarlo.
Therefore, the combined teachings of Cauvin, Takeda, and Decarlo render obvious claims 8 and 19.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
1. Claims 1, 4-15, and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9-11, 21-24, and 26-27 of copending Application No. 17/296,929 (reference application) in view of Takeda et al. (US 5,720,946, Feb.24, 1998) (hereinafter Takeda) and Chen et al. (CN 2276411, Mar. 18, 1998) (hereinafter Chen).
The pending claims differ from the copending claims insofar as not reciting a container that is transparent.
However, Takeda discloses a hair revitalizing composition containing as effective ingredients amine oxide compounds (Abstract). Amine oxide which are anionic surface active agent are known to be usable for a hair conditioner composition and were found to have an excellent hair revitalizing effect (col 1, line 32-38). Suitable amine oxides for use include those represented by formula (1) (col 1, line 65-66). In said formula, R2 may be a branched chain C22-36 alkyl or alkenyl (col 2, line 9-10). Preferred compounds of formula (1) are of formula (1-a) (col 3, line 9-11).
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In the above formula, R2-a has the meaning defined for R2 of formula (1) (col 3, line 32-33). A particularly preferred compound belonging to the compound group of the formula (1) is N.N-dimethyl-2-decyltetradecylamine oxide (col 3, line 58-60). The hair revitalizing composition can be in any dosage form. provided that it can be applied to the outer skin (col 5, line 49-51). In comparative example 10, 0.1% N,N-dimethyl-2-decyltetradecylamine oxide is used (Table 7). In example 15, 0.5% N,N-dimethyl-2-decyltetradecylamine oxide is used (Table 7).
Takeda does not disclose the use of a transparent container.
However, Chen discloses a shampoo bottle (Abstract). The bottle has good quality, high transparency and bright color, and the material used results in a shampoo bottle that is non-toxic (Description).
Accordingly, it would have been obvious for one of ordinary skill in the art to have bottled the composition of the copending claims in such a transparent container motivated by the desire to utilize a nontoxic container as taught by Chen.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1, 4-15, and 18-20 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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/A.A./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612