Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/24/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 04/14/2026 has been considered here.
Status of Claims
The amendments and arguments filed on 02/24/2026 are acknowledged and have been fully considered. Claim 1 has been amended; Claims 4-5 and 9-12 have been canceled.
Claims 1-3, 6-8, and 13 will be examined on the merits herein.
Objections and Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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 to address the newly added claims, and constitute the complete set presently being applied to the instant application.
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.
Claims 1-3, 6-8, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Richard et al (US 6221343 B1) in view of Chemistry of Methocel™ (2013; referred to as Chemistry) and JP 4259736 B2 (‘736, 2009; machine translation provided by PE2E via FIT) as evidenced by Methocel® K15M (2002; referred to as Methocel).
Richard et al disclose the compositions can also contain the usual cosmetic adjuvants and additives, such as, organic solvents, thickeners, softeners, antifoaming agents, moisturizers, fragrances, preservatives, surfactants, fillers, sequestering agents, anionic, cationic, nonionic or amphoteric polymers or mixtures thereof, propellants (column 8, lines 30-36, claim 23). Richard et al teach exemplary organic solvents include the lower alcohols and polyols such as ethanol, isopropanol, propylene glycol, glycerol and sorbitol (column 8, lines 44-46). Richard et al disclose compositions can, in particular, be provided in the form of a lotion, a thickened lotion, a gel, a cream, a milk, an ointment, a powder or a solid tube or stick and can optionally be packaged as an aerosol and can be provided in the form of a mousse, foam or a spray (column 8, lines 1-6). EXAMPLE 7 discloses hydroxypropyl methylcellulose (i.e., Methocel F4M - Dow Chemical) and water(column 15).
Richard et al is silent on the viscosity of the hydroxypropyl methyl cellulose having a viscosity between 9500-15000 mPas.
Chemistry teaches that Methocel™ E10M has a viscosoity of 9525-17780 mPs/s 2% in water at 20°C (see Chemistry, Table on page 3). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Chemistry also teaches that the Methocel™ cellulose ethers are used in cosmetics such as shampoos (see Chemistry, page 10, interfacial gelation). Specifically, Methocel teaches that the “e” series of the Methocel™ products has a 1.9 methoxyl degree of substitution (see Methocel, page 6, Degree of substitution; Table 5).
‘736 teaches a foam-like hair dye composition (see ‘736, paragraph 0001) comprising a surfactant (see ‘736, paragraphs 0004, 0007-0011), propellant used in ordinary aerosol cosmetics (see ‘736, paragraph 0015), an organic solvent (see ‘736, paragraph 0016), and a water soluble polymer compound, such as hydroxypropylmethylcellulose (see ‘736, paragraphs 0017-0019). It is taught that the polymer is used in an amount from 0.01 to 20% by weight (see ‘736, paragraph 0021). In example 7 (see ‘736, paragraph 0029), the composition is taught to comprise hydroxyethyl cellulose in 0.5% by weight and water in an amount of about 67.4% by weight. While it is noted that hydroxyethyl cellulose is different than hydroxypropylmethylcellulose, both are listed as equivalent polymers in the art (see ‘736, paragraphs 0017-0019) and it would be within the purview of one with ordinary skill in the art to directly substitute one for another. Further using these amounts of polymer and water, the content of water is about 13480 parts by mass relative to 100 parts by mass of the polymer. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1-3 and 6-8, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition combining the teachings of Richard et al with Chemistry and ‘736 as the E10M is known to work in cosmetics and helps with stabilizing the product (see Chemistry, page 10, gel strength and texture, interfacial gelation). Further, the claimed amount of water used with a water-soluble polymer such as hydroxyethyl cellulose or hydroxypropylmethylcellulose is known in the art, specifically for foaming aerosol compositions as taught in ‘736. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Richard et al with the Methocel™ of Chemistry and the water content of ‘736 according to the known method of using cellulose polymers in an aerosol composition (see ‘736, examples) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known method to yield predictable results.
Further regarding instant claims 1-3 and 6-8, Richard et al in EXAMPLE 7 disclose hydroxypropyl methylcellulose (Methocel F4M - Dow Chemical), organic solvent (i.e., stearyl alcohol) and water (column 15). With regards to instantly claimed hydroxypropylmethylcellulose the reference does not disclose elastic modulus. However, regarding the viscosity of hydroxypropyl methylcellulose as evidenced by the teachings of Chemistry the cellulose ether has a viscosity of 9525-17780 mPs/s when measured as 2 wt. % aqueous solution at 20° C (Table 2). Thus, it is defined by the state of the art as possessing the same modulus ratio property as instantly claimed.
Further, the degree of substitution in instant claim 13 is also read on by the cellulose ethers mentioned above. Where the ratio of interfacial elastic modulus (E') to interfacial viscous modulus (E") are broadly and reasonably considered to be met since the cellulose ethers disclosed in the art meets the remaining limitation i.e., viscosity and the degree of substitution newly added. Per MPEP 2112.01,"[p]roducts of identical chemical composition cannot have mutually exclusive properties." Therefore, the Examiner, in view of the definition disclosed by Chemistry, submits that cellulose ethers mentioned above also meet the ratio of interfacial elastic modulus (E') to interfacial viscous modulus (E") property.
Response to Arguments
Applicant's arguments filed 02/24/2026. have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
In regards to applicant’s argument that Richard does not teach the water content required by the claims, the rejection has been modified as necessitated by amendment to be over Richard in view of Chemistry and ‘736. The teachings of these references have been discussed supra. One with ordinary skill in the art would be motivated to combine the composition of Richard et al with the Methocel™ of Chemistry and the water content of ‘736 according to the known method of using cellulose polymers in an aerosol composition (see ‘736, examples) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known method to yield predictable results.
In regards to applicant’s argument that Richard teaches that the compositions can “optionally be packaged…spray”, it is noted that "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). Further, ‘736 teaches foaming aerosol compositions comprising hydropropylmethylcellulose as discussed above as well.
In regards to the unexpected results and data presented, applicant is reminded that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective 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). In the instant case, applicant points toward the data provided in the instant specification to show that the viscosity requirements of the claimed invention create a favorable composition and need less of the HPMC, however looking at Tables 2 and 3, it is not clear how as the amounts listed are very close (i.e. 0.5 % by mass and 0.4 % by mass in Table 3). Further, it is noted that there amounts listed in the claims and as such the argument does not hold much weight in this regard. It is not clear how this data is commensurate with the scope of the claims or how it is able to establish unexpected results. "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Applicant further argues that the design of the composition in the prior art is very complicated however there is no limitation in the instant claims that would indicate this or even limit the amount of compounds within the composition itself. Applicant follows this argument saying that the amount of polyacrylic acid in Richard, used as a thickening agent, is double the amount of the HPMC suggesting that HPMC does not substantially contribute to foam quality. First, there is no limitation in the instant claims requiring that there is no additional thickening agent used in the composition. Further, the presence of HPMC with a specific viscosity is required by the claims. This requirement is met by the prior art as discussed in the above rejection. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658. As the prior art teaches an identical chemical structure, the properties applicant discloses and/or claims are necessarily present. One with ordinary skill in the art would reasonably expect that the HPMC would exhibit the same properties as instantly claimed when used in the same manner.
In regards to applicant’s arguments that the cited portion of Richard does not teach the method as described, it is noted that this was a typo and should’ve read “see Richard, examples”, however this part of the rejection has been modified as necessitated by amendment and is no longer part of the rejection.
Conclusion
No claims allowed.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611
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