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 .
Claim Status
Applicant’s claim amendments and arguments in the response filed 06 April 2026 are acknowledged.
Claims 1, 9-12, 14, 17-19, 21-33, 37, 39 & 42-43 are pending.
Claims 42 & 43 are new.
Claims 2-8, 13, 15, 16, 20, 34-36, 38, 40 & 41 are cancelled.
Claims 1, 12, 24, 26, 33 & 39 are amended.
Claims 25-33 are withdrawn.
Claims 1, 9-12, 14, 17-19, 21-24, 37, 39, 42 & 43 are under consideration.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Withdrawn New and Maintained Objections/Rejections
The objection to claims 40 & 41 are withdrawn due to cancellation of the claims.
The rejection of claim 41 under 35 USC 112(a)-New Matter is withdrawn due to cancellation of the claim.
The rejection of claim 24 under 35 USC 112(d) is withdrawn due to claim amendments which recite reagent (a).
The rejection of claims 2-4, 8, 40 & 41 under 35 U.S.C. 103 over Lee; claims 6 & 7 under 35 U.S.C. 103 over Lee and further in view of Ikeda is withdrawn due to cancellation of the claims.
The rejection of claim 39 under 35 U.S.C. 103 over Lee in view of Ikeda is withdrawn due to amendments which delete the recitation that the cationic surfactant is selected from quaternary diammonium or tri-ammonium salts.
New and Maintained Objections/Rejections
Claim Objections
Claims 17, 19, 39 and 42 are objected to because of the following informalities:
Claim 17 recites “the cosmetic composition has a pH ranging from about 2.5 to less than about 5”. However to be consistent with claims 1 & 37, claim 17 should recite “wherein the initial pH is from about 2.5 to less than about 5”.
Claim 19 recites “wherein the pH of the composition is less than 5”. However to be consistent with claims 1 & 37, claim 19 should recite “wherein the initial pH is less than 5”.
Claim 39 in the second to the last line recites “the hair cosmetic composition”, however to be consistent with claim 1 from which it depends, it should recite “the cosmetic composition”.
New claim 42 for the first 75% of the claim refers to “the cosmetic composition”, however in the last stanza of the body of the claim, the claim recites “the composition”. The last stanza of the claim should recite “the cosmetic composition” to maintain form and clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 9-12, 14, 17-19, 21-24, 37, 39, 42 & 43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claims 1 & 42 recite the composition is initially stable and that a decrease in the initial pH of the composition results in a change in the viscosity and a phase separation of the composition. Applicant states that support for the amendment is found at Table 3 on pages 44 and 45 and pages 58 and 59 (reply, pg. 14). This is not persuasive. The issue is there is no generic disclosure of the composition being initially stable and that a change in the initial pH results in a decrease in the viscosity and a phase separation of the composition. The teachings found on pgs. 44, 45, 58, & 59 stem from the results achieved with Examples A-C and these formulations are much more narrow than what is claimed by generic claim 1 from which claim 41 directly depends. Examples A-C are species which used only sodium stearoyl glutamate as the “least one anionic surfactant having at least two carboxylate salt groups” in amounts from 0.9-1.7. However, claims 1 & 42 are generic to the “at least one anionic surfactant having at least two carboxylate salt groups…selected from…” and includes surfactants having aspartate anions and recites this reagent in the broader amounts of “about 0.5 to about 5 wt.%”. Examples A-C used only behenyltrimonium chloride in an amount of 1.2-2.1% with only cetrimonium chloride present as a minor in an amount of < 0.1%. Claims 1 & 42 recite “least one cationic surfactant… selected from….” in the broader range of “about 0.1 to about 5 wt.%”. The recited cationic surfactant include dimethylamines. The molar ratio of the cationic surfactant to anionic surfactant for Examples A-C. is 0.8-2.26. However, claim 1 recites the much broader range from greater than 1 to about 5: 1 and new claim 42 encompasses a molar ratio which reduces to the much broader range of 5:1 to 0.5:1. Examples A-C used only used one species of fatty alcohol, i.e. cetearyl alcohol, in the limited range of 4.0-5.8. However, claims 1 & 42 is generic to the fatty alcohol and recites the broader amount of about 0.5 to about 10 wt.%. Examples A-C used only one or more of polyhydric and monohydric alcohols in an amount of less than 2%. However, claim 1 does not recite inclusion of these alcohols & claim 42 is generic to the at least one cosmetically acceptable solvent and does not recite any quantity for it. Examples A-C were aqueous compositions; however claim 42 does not require inclusion water. The pH of Examples A-C ranged from 3.3-4.8, however, claims 1 & 42 do not recite any pH range. Claim 1 & 42 changes the scope of the disclosure, thereby constituting NEW MATTER.
Claims 9-12, 14, 17-19, 21-24, 37, 39 & 43 are rejected under 35 USC 112(a)-New Matter because they depend from rejected claim 1 and do not remedy the claim 1 deficiencies.
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 14 & 42 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 14 recites the limitation "at least one cationizable surfactant" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 42 is unclear because claim 42, section b, line 1 recites “(b) from about 0.1 to about 5 wt.% of at least one cationic, wherein…”. Cationic what? Cationic polymers, surfactants, molecules, ions, something else?
Claim 42, section b, lines 1-2 recites the limitation "at least one cationic surfactant". There is insufficient antecedent basis for this limitation in the claim.
Claim 42 recites the limitation "at least one cationizable surfactant" in section d, line 2. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 24 depends from claim 1. Claim 1 (a) recites “from about 0.5 to about 5 wt.% of at least one anionic surfactant having at least two carboxylate salt groups, wherein the at least one anionic surfactant having at least two carboxylate salt groups is selected from sodium stearoyl glutamate, sodium lauroyl aspartate, …”. Claim 24 (a) expands the choice of anionic surfactants having at least two carboxylate salt groups to any anionic surfactant having at least two carboxylate salt groups by reciting “at least one anionic surfactant having at least two carboxylate salt groups”.
Applicant may wish to consider whether an amendment to recite “the at least one anionic surfactant having at least two carboxylate salt groups” would obviate the rejection.
Response to Arguments
In traversing the new matter rejection, Applicant argues that pg. 58 and 59 of the specification provides support for claims (reply, pg. 13-14 and especially page 14).
This is not persuasive. The specification states "As a conclusion, the inventive compositions were found to be responsive to changes in pH or dilution with water that results in significant changes in viscosity of the compositions” (specification-pg. 57). The inventive compositions referred to in this passage are the Experimental compositions A-C which experienced a change in pH to 3.5 to 5.5 and comprised sodium stearoyl glutamate as the only anionic surfactant; behentrimonium chloride as the only cationic surfactant, cetearyl alcohol as the only fatty alcohol; coconut oil as the only fatty compound; organic solvents in an amount of less than 2% of the composition and water (see tables on pg. 50 & 54). There are no examples with anionic surfactants with aspartate anions which matters because aspartate is a basic amino acid. There are no examples with cationic surfactant other than those with quaternary ammonium groups which matter because the claims recite dimethyl amines having no quaternary cation.
Applicant argues the rejection of claim 24 under 35 USC 112(d) has been addressed by reciting the recitations of (a) from claim 1, from which it depends (reply, pg. 14).
This is not persuasive, by omitting the article “the” to refer back to (a) Applicant has expanding the pool of anionic surfactants beyond those recited by claim 1(a).
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, 9-12, 14, 17-19, 23, 24, 37, 39 & 42 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR0123072; Published: 11/13/1997; previously cited).
*All references refer to the English language translation.
**Claim 24 “(e) optionally, from about 0.1 to about 2 wt.% of at least one silicone; and (f) optionally, from about 0.05 to about 2 wt.% of at least one nonionic surfactant ” are interpreted as not present.
***Claim 14 reduces to 1.11: 1 to 5:1; Claim 40 reduces to a ratio of 5:1 to 1:2; Claim 42 reduces to 5:1 to 0.5:1
With regard to claims 17, 19, 37 & 39, Lee teaches a hair conditioner composition having a pH from 2.0-7.0 (title; abstract). With regard to claim 1 (a), 24 (a), 39 & 42 (a), Lee teaches the composition comprises 0.1-5.0% by weight of the an anionic surfactant which may be sodium lauroyl glutamate and sodium stearoyl glutamate (pg. 3). Lee teaches the anionic surfactant to be an optimizable parameter; when “the amount of the anionic surfactant is less than 0.1%, the stability of the emulsion deteriorates, and if it exceeds 5.0%, the conditioning effect is decreased and the dyeing effect is also reduced” (pg. 3). With regard to claims 1(b), 9, 24(b), 39 & 42 (b), Lee teaches the amount of cationic surfactant is 0.01-1.0% and the cationic surfactant may be cetyl trimethyl ammonium chloride/cetrimonium chloride and stearyl trimethyl ammonium chloride/stearimonium chloride (abstract). Lee teaches the amount of cationic surfactant is an optimizable parameter; “[i]f the content of the cationic surfactant is less than 0.01%, the conditioning effect is too weak, if it exceeds 1.0%, there is a disadvantage that the dyeing effect is severely lowered” (pg. 3). With regard to claims 1 ( c), 10, 11, 24 ( c), 39 & 42 (c), Lee teaches the composition comprises 0.1-10.0% by weight fatty alcohol comprising C8-C22 alkyl group which may be cetyl alcohol, stearyl alcohol, cetostearyl alcohol or mixtures thereof (pg. 2 & 6, Lee’s claims). With regard to claims 1, 24, 39 & 42, Lee teaches the fatty alcohol forms the lamellar liquid crystal (i.e. lamellar structure). With respect to the recited ratio of cationic surfactant to anionic surfactant as it pertains to claims 1, 14 & 42, Lee teaches the ratio of cationic surfactant to anionic surfactant ranges between 14:1 to 1:364.8, including 1.35: 1 when cetyltrimethylammonium chloride is selected for the cationic surfactant and sodium stearoyl glutamate is selected for the anionic surfactant in accordance with Lee’s teachings (see document in its entirety). [Math: cetrimonium chloride = 320 g/mol. 0.01/320 = 0.00003125 moles. 1/320 = 0.003125 moles. Sodium stearoyl glutamate = 435.57 g/mol. 0.1/435.57 = 0.00022 moles. 5/435.57 =0.0114 moles. 0.003125 moles cationic surfactant; 0.0002 moles anionic surfactant = 14:1; 0.00003125 mole cationic surfactant : 0.0114 mol anionic surfactant = 1:364.8]. With regard to claims 1, 14 & 42, in an embodiment, Lee teaches the 1% of a cationic surfactant which may be cetyltrimethylammonium chloride (1/320 = 0.003125 moles) and a preferred amount of 1% an anionic surfactant which may be sodium stearoyl glutamate (1/435.57 – 0.0023 moles), yield a cationic surfactant to anionic surfactant ratio of 1.35: 1 (Math: 0.003125/ 0.0023 = 1.35; pg. 2). With regard to claims 12 & 42(d), Lee teaches inclusion of solvent for improving the effect of the dye and in the their Examples teaches in the Table of pg.3 of the foreign language document inclusion of 5.0 % propylene glycol. With regard to claims 1 (d), 24 (d), compositions “1 in practice” thru “3 in action” teach inclusion of 78.2- 78.6 % water. With regard to claim 23, Lee teaches inclusion of the hydrocarbon oil, liquid paraffin, in the compositions of their invention in an amount of 3.0% (Table-pg. 3).
Table -pg. 3 of the foreign language document; Google translate
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While there is not a single example comprising each of the claimed components, the lamellar structure reagents (i.e. at least one anionic surfactant having at least 2 carboxylate salt groups, at least one cationic surfactant, at least one fatty alcohol, at least one cosmetically acceptable organic solvent and at least one cosmetically acceptable solvent) are included among short lists of reagents in amounts and ratios which overlap with the claimed ranges. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to the viscosity of the composition, as it pertains to claim 18, Lee’s composition necessarily has a viscosity of equal to or greater than 1 Pa.s because Lee teaches the recited reagents in the recited amounts. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is further supported by Lee’s teaching that if the viscosity is linked to the amount of fatty alcohol and if the amount of fatty alcohol exceeds 10%, the viscosity of the composition will be too high (pg. 3).
With regard to the recited values for the at least one anionic surfactant having at least two carboxylate salt groups, at least one cationic surfactant, at least one fatty alcohol, at least one cosmetically acceptable organic solvent and at least one cosmetically acceptable solvent, hydrocarbon oil, pH, and molar ratio of the at least one cationic surfactant to the at least one anionic surfactant having at least 2 carboxylate salt groups; Lee teaches these parameters with values that overlap or fall within the recited 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claims 1, Lee teaches the suitability of the recited cationic surfactant (i.e. cetyl trimethyl ammonium chloride and stearyl trimethyl ammonium chloride) and anionic surfactant (i.e. sodium lauroyl glutamate and sodium stearoyl glutamate) for use in their invention. Lee teaches amounts of these reagents and a molar ratio which overlap with Applicant’s recited range and preferred embodiments which fall within the recited range. As such, Lee’s composition is expected to have a change in viscosity and phase separation with a change in pH. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is supported by page 20 of the instant specification in which “the combination of the least one anionic surfactant having at least two carboxylate salt groups and of the at least one cationic surfactant in a molar ratio greater than 1 in a composition for treating hair or, resulted in a faster and improved ease of rinsability of the composition when the pH of the composition is increased”. Page 20 of the instant specification further discloses “when the pH of the composition increases, viscosity of the composition significantly decreases”. Following Lee’s preferred embodiments leads to a molar ratio of 1.35:1 when cetyltrimethylammonium chloride is selected for the cationic surfactant and sodium stearoyl glutamate is selected for the anionic surfactant from Lee’s preferred teachings and examples. Further, Lee teaches the compositions of their invention have a pH from 2.0-7.0 (i.e. initial pH). This pH range overlaps with the recited initial pH range.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Lee, as applied to claims 1, 9-12, 14, 17-19, 23, 24, 37, 39 & 42 above, and further in view of Giles (US 2001/0004632; Published: 06/21/2001; previously cited).
The teachings of Lee are described above. In brief, Lee teaches a hair conditioner.
Lee does not teach inclusion of amodimethicone.
In the same field of invention, Giles teaches conditioning hair rinses (i.e. conditioners) comprising lamellar liquid crystal phase ([0001] & [0093]). Giles teaches inclusion of amodimethicone as an additional conditioning agent for hair which is a silicone ([0102]-[0104]). Giles teaches the amount of silicone used is “depends on the level of conditioning desired…” and that the amount of silicone is between 0.5 to 1.5% by weight” [0108].
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Here, with regard to claim 21, at least rationale (A) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lee’s hair conditioner by adding 0.5 to 1.5 wt.% of amodimethicone as suggested by Giles because Lee and Giles are both directed to hair conditioners having lamellar liquid crystals and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so with an expectation of success in order to provide conditioning to the hair.
With regard to the amount of amodimethicone, the combined teachings of Lee and Giles suggest these parameters with values which fall within or overlap with the claimed 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Lee, as applied to claims 1, 9-12, 14, 17-19, 23, 24, 37, 39 & 42 above, and further in view of Ikeda (WO 2015/198922; Published: 12/30/2015; previously cited).
*All references refer to the English language translation.
In brief, Lee teaches a hair conditioner which comprises lamellar liquid crystals (i.e. a lamellar structure; pg. 3). Lee teaches “[g]enerally, quaternary ammonium salt type cationic surfactants are used in hair rinses or hair conditioners to impart conditioning effects” (pg. 2).
Lee does not teach that the composition further comprises at least one nonionic surfactant and its amount.
In the same field of invention hair conditioner, Ikeda teaches a composition which has a lamellar structure or a lamellar phase (pg. 42, ll. 1-5; pg. 42, ll. 35-40). Ikeda in their Example 5 teaches the compositions of their invention comprise sodium stearoyl glutamate (pg. 47-Table 7). With regard to claim 39, Ikeda teaches an embodiment where the composition of their invention comprises at least one additional surfactant which may be an ionic surfactant which is a cationic surfactant (pg. 24 & 25). With regard to claim 22, Ikeda teaches the type of nonionic is important with “certain type[s]” impairing the lamellar structures, and stability of the composition (pg. 1, ll. 40-45). With regard to claim 22, Ikeda teaches suitable additional non-ionic surfactants suitable for the invention include sorbitan oleate, sorbitan isostearate, sorbitan palmitate (i.e. sorbitan derivatives; pg. 27, ll. 10-20; pg. 29, ll. 20-25). With regard to claim 22, Ikeda teaches the amount of additional surfactants, which include nonionic surfactants, “may be from 0.01 to 15% by weight, preferably from 0.10 to 10% by weight, and more preferably from 0.50 to 5% by weight, relative to the total weight of the composition” (pg. 39, ll. 15-25).
Here, with regard to claim 22, at least rationale (A) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lee’s hair conditioner by adding 0.05 to 10 wt.% of additional nonionic surfactants which may be any one of sorbitan oleate, sorbitan isostearate, sorbitan palmitate (i.e. sorbitan derivatives) as suggested by Ikeda because Lee and Ikeda are both directed to hair conditioners having lamellar structures and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so with an expectation of success in order to improve composition stability and lamellar structure.
With regard to the amount of the at least one nonionic surfactant the combined teachings of Lee and Ikeda suggest these parameters with values which fall within or overlap with the claimed 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Lee, as applied to claims 1, 9-12, 14, 17-19, 23, 24, 37, 39 & 42 above, and further in view of Palla-Venkata (US 2014/0162979; Published: 06/12/2014).
In brief, Lee teaches a hair conditioner which comprises lamellar liquid crystals (i.e. a lamellar structure) which comprises 5.0 % propylene glycol (pg. 3; Table 3).
Lee does not teach that the composition further glycerin.
In the related field of invention of liquid cleansing compositions in lamellar phase which include ordered liquid crystalline phases suitable for hair, Palla-Venkata teaches the compositions of their invention comprise non-occlusive emollients in the concentration range of about 0.5 to 25% by wt which may be glycerin (abstract; [0007]; [0028]) Palla-Venkata teaches the compositions of their invention comprise moisturizers that also are humectants such as polyhydric alcohols, e.g. glycerin and propylene glycol, which are preferably used at a minimum of 0.5, 2.5 or 5% by wt. and a maximum of 15, 20 or 25% by wt. [0076]. Palla-Venkata teaches the compositions of their invention comprise cationic skin conditioning agents which include [0066]. Palla-Venkata in their claim 2 teaches the viscosity of their composition either decreases continuously by no more than 3 Pas as the composition is diluted with water at 40 C during skin cleansing and rinsing by a consumer.
Here, with regard to claim 43, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lee’s hair conditioner by adding 0.5 to 20 wt.% of glycerin as suggested by Palla-Venkata because Lee and Palla-Venkata are both directed to hair compositions having lamellar structures and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so with an expectation of success in order to improve composition hair moisturization through inclusion of glycerin while selecting a reagent that is suitable for inclusion in lamellar phases.
Response to Arguments
Applicant provides a discussion of the background of their invention, the reagent lists recited in independent claims 1 & 42, the importance of a lamellar structure, and the decrease in the viscosity of the composition upon a change in pH (reply, pg. 14-16). Applicant reiterates the argument that Lee teaches the anionic surfactant is present in a higher amount than the cationic surfactant (reply, pg. 17). Applicant argues that Lee does not specifically teach 1% cationic surfactant and a preferred amount of 1% of an anionic surfactant (reply, pg. 17 & 18).
This is not persuasive. Lee teaches “The anionic surfactant is used…preferably 1.0-3.0% by weight” at page 3 of the Examiner supplied translation. The amount of 1% for the anionic surfactant is taught as preferred. Lee teaches “Cationic surfactants are used in amounts of 0.01-1.0% by weight” at page 3 of the examiner supplied translation and in Lee’s first claim. This is taught as an embodiment of Lee’s invention.
Applicant reiterates the argument that the ratio range of cationic surfactant to anionic surfactant taught by Lee is too broad that it is creates a situation analogous to a species when the prior art discloses a genus (reply, pg. 18-20). Applicant argues Lee fails to discuss the molar ratio of the cationic surfactant to the anionic surfactant having at least two carboxylate salt groups, or recognize that this ratio was a result-effective variable which is the purpose of the claimed/instant invention (reply, pg. 20 & 22). Applicant argues only results effective variables may be optimized (reply, pg. 22-23). Applicant reiterates the argument that one would arbitrarily have to modify the amounts of anionic surfactant and/or cationic surfactant of Lee to arrive at the recited ratios (reply, pg. 20). Applicant directs the Examiner to Examples A-C and the comparative Examples on pg. 51-50 to show that the molar ratio of the cationic surfactant to anionic surfactant matter (reply, pg. 21-22).
This is not persuasive. Lee teaches the anionic surfactant and the cationic surfactant to be optimizable parameters for emulsion stability and dyeing effect. With respect to the recited ratio of cationic surfactant to anionic surfactant, while Lee does teach a ratio range of cationic surfactant to anionic surfactant ranges between 14:1 to 1:364.8, including 1.35: 1 when cetyltrimethylammonium chloride is selected for the cationic surfactant and sodium stearoyl glutamate is selected for the anionic surfactant. Lee even teaches in an embodiment in which the composition comprises 1% of a cationic surfactant which may be cetyltrimethylammonium chloride (1/320 = 0.003125 moles) and a preferred amount of 1% an anionic surfactant which may be sodium stearoyl glutamate (1/435.57 = 0.0023 moles), yield a cationic surfactant to anionic surfactant ratio of 1.35: 1 (Math: 0.003125/ 0.0023 = 1.35; pg. 2).
With regard to Applicant’s traverse pertaining to Examples A-C, these are not commensurate with the scope of the claims because Experimental compositions A-C comprised sodium stearoyl glutamate as the only anionic surfactant; behentrimonium chloride as the only cationic surfactant; cetearyl alcohol as the only fatty alcohol; coconut oil as the only fatty compound; organic solvents in an amount of less than 2% of the composition and water (see tables on pg. 50 & 54). There are no examples with anionic surfactants with aspartate anions which matters because aspartate is a basic amino acid. There are no examples with cationic surfactant other than those with quaternary ammonium groups which matters because the claims recite dimethyl amines having no quaternary ammonium cation. Polyhydric alcohols (such as propylene glycol and glycerin) have multiple hydroxyl groups which can act as both hydrogen donors and accepts and form multiple hydrogen bonds with each other which impact stability, the claims are generic to the amount of the these polyols yet the inventive Examples A-C used these reagents in an amount of less than 2%. "[O]bjective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Applicant reiterates the argument that Lee’s only example has the ratio the cationic surfactant to the anionic surfactant having at least two carboxylate salt groups is 0.0009375/0.00344376 - 0.27 or 1 :3.7 (pg. 23). Applicant reiterates the argument that Lee’s comparative Examples in which 5.0% cationic surfactant did not yield superior results (reply, pg. 23 & 24).
This is not persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In the instant case, Lee teaches the amount of cationic surfactant is linked to the dyeing effect with 1.0% as the upper limit for a suitable amount. The preferred amount of anionic surfactant as taught by Lee is 1.0%, yielding a 1.35:1 molar ratio.
Applicant reiterates the argument that Shapiro represents a more advanced and current understanding of problems and concerns with respect to formulating compositions containing different types of surfactants (reply, pg. 24).
This is not persuasive. Shapiro is not used in the rejection. Further, “[p]rior art is presumed to be operable/enabling” (MPEP 2121. I). Lee teaches the species of surfactants that are suitable for practicing their invention and their amounts.
Applicant argues the Examiner used hindsight reasoning using Applicant’s disclosure as a guide (reply, pg. 25).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, Lee teaches a lamellar liquid crystals; Lee teaches the anionic surfactants of sodium lauroyl glutamate and sodium stearoyl glutamate; the cationic surfactants cetyltrimethylammonium chloride, stearyltrimethyl ammonium chloride, behenyltrimethylammonium chloride; the fatty alcohols cetearyl alcohol (i.e. cetyl alcohol and stearyl alcohol); and water in overlapping amounts and ratios.
Applicant argues that Lee’s invention is concerned with improving the problem of using an acid dye and a cationic surfactant, so one would not optimize to Applicant’s invention (pg. 25-26).
This is not persuasive. 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. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904. The issue is Lee teaches the lamellar liquid crystal structure. Lee teaches the anionic surfactants of sodium lauroyl glutamate and sodium stearoyl glutamate; the cationic surfactants of cetyltrimethylammonium chloride, stearyltrimethyl ammonium chloride, behenyltrimethylammonium chloride; the fatty alcohols of cetearyl alcohol (i.e. cetyl alcohol and stearyl alcohol); and water in overlapping amounts and molar ratio. A molar ratio falling within Applicant’s recited range occurs falling Lee’s preferred teachings.
Applicant reiterates the argument that Lee is concerned with the compositions stability and nothing in Lee suggests a cosmetic composition that is initially stable, but whereby a change in the pH of the composition causes a significant decrease in viscosity and phase separation as that occurs with the change of the pH of the present invention (reply, pg. 26). A person of ordinary skill would not have a reasonable expectation of obtaining the result of providing a cosmetic composition that is stable, but whereby a change in the pH of the composition causes a significant decrease in viscosity and phase separation (reply, pg. 26).
This is not persuasive. Again, Lee teaches the suitability of the recited cationic surfactant and anionic surfactant for use in their invention. Lee teaches amounts of these reagents and a molar ratio which overlap with Applicant’s recited range. As such, Lee’s composition is expected to have a change in viscosity with a change in pH. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Lee teaches the compositions of their invention have a pH from 2.0-7.0 (i.e. initial pH). This pH range overlaps with the recited initial pH range.
Further, the as-filed specification does not provide evidence of the criticality of the claimed ranges of the molar proportions of the recited cationic surfactant to the recited anionic surfactant. By routinely optimizing Lee’s composition to Lee’s teachings, the recited molar ratios can be achieved. “The applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”. “It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree.”); In re Wells, 56 F.2d 674, 675, 12 USPQ 430 (CCPA 1932). See MPEP 2144. III. A. for showing the criticality of the range. See MPEP § 716.02 - § 716.02(g) for a discussion of criticality and unexpected results.
In the traverse of the rejection of claim 22 under 35 USC 103(a) over Lee and in further view Ikeda, Applicant argues Ikeda does not cure Lee’s deficiencies and is used to teach quaternary diammonium or tri-ammonium salts (reply, pg. 26).
This is not persuasive. Claim 22 recites inclusion of nonionic surfactants. Ikeda teaches a composition which has a lamellar structure or a lamellar phase comprising sodium stearoyl glutamate and a nonionic surfactant. Ikeda teaches the nonionic surfactant is important with “certain type[s]” impairing the lamellar structures, and stability of the composition (pg. 1, ll. 40-45).
In the traverse of the rejection of claim 21 under 35 USC 103(a) over Lee and in further view Giles, Applicant argues Giles does not cure Lee’s deficiencies (reply, pg. 27-33). Applicant argues it is improper to find inherency in an unknown or hypothetical composition (reply, pg. 29-33).
This is not persuasive. The teachings of Lee and how they meet the limitations of independent claim 1 is described supra. With regard Applicant’s arguments pertaining to inherency, "[i]n relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)”. In the instant case, Lee explicitly teaches the recited glutamate surfactant, the recited cationic surfactant, and explicitly teaches the amounts of these reagents as preferred or they are listed as the upper limit of the suitable range and can be readily envisaged.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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