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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Applicant requested a Letter of Suspension on 11/10/2025 for suspending prosecution and PTO approved it on 11/21/2025. However, Applicant did not file any evidentiary document since then.
Status of the Claims
Claims 1-10 are pending in a Response of 11/05/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/10/2025 was filed before the mailing date of the instant action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Withdrawn rejections:
Applicant's amendments and arguments filed 11/10/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
Claim Objections
Claims 9 and10 are objected to minor informalities under 37 CFR 1.75.
Dependent claim 9 recites “a surface tension reducing agent” in line 1, but which would be better to recite “said one or more surface tension reducing agents”.
Claim 10 recites “a mousse according to claim 1” in line 2, but which should be amended to recite “the mousse according to claim 1” because the method of use claim should include all the limitations of claim 1.
Appropriate correction is requested.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 6 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (US2018/0344611A1, IDS of 11/10/2025, hereinafter Zhao ‘611).
Applicant claims the below claim 1 filed on 11/10/2025:
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Prior Art
Zhao ‘611 discloses hair compositions in a foam form providing improved in-use wet feel (title) and the composition can contain from about 4% to about 45%, by weight, of a detersive surfactant and from about 0.4% to about 2.5%, by weight, of a cationic synthetic polymer (abstract); in one embodiment of Comparative Example 7, the composition comprises 1.5% cocamidopropyl betaine that reads on the claimed surface tension reducing agent (=surfactant) (ii), 9.5% sodium laureth-3-sulfate that reads on the claimed surfactant (ii) in which a total of 11% surfactants is within the ranges of about 0.5 to about 20% of instant claim 1 or about 6% to about 20% of instant claim 4, 5.5% of HFO (=trans-1,3,3,3-tetrafluoropropene) which reads on the claimed trans-1234ze (iii) and the amount 5.5% is within the claimed range of from greater than 5% to about 20% and also this embodiment requires HFO only as a single foaming agent and thus reading on the claimed forming agent comprising at least about 40% trans-1234ze, and a water reading on the claimed carrier (i) is present in an amount of about 76% which is within the range of about 50% to about 90% of instant claim 1 wherein the embodiment comprises water as a single carrier and thus it reads on the claimed carrier comprising at least 90% water; and the embodiment composition comprises a fragrance is present in an amount of 0.64% that reads on the claimed optional adjuvants (v); and the foam has density of 0.02 g/cm3 to about 0.40g/cm3 ([0185]) which is within the claimed range of about 0.05g/cm3 or less (instant claims 1-3 and 9); the composition is applied to the hair and/or skin of Human ([0127], [0175] and the Examples)(instant claim 8); and the composition can be stored and dispensed from an aerosol foam dispenser that may comprise a reservoir for holding the hair care composition ([0190]) and packaged in convention aerosol containers under pressure ([0195])(instant claim 10).
Although Zhao ‘611 does not expressly teach spreadability, glossiness, and initial foam stability of instant claim 6, Zhao ‘611 discloses the claimed composition as noted above, and thus, such claimed properties would be implicit because the product and properties are inseparable. In this respect, please see "Products of identical chemical composition cannot 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).” MPEP 2112.01. See another case law stating that "[A] reference may anticipate even when the relevant properties of the thing disclosed were not appreciated at the time." Abbott Labs. v. Baxter Pharm. Products, Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006). See also In re Papesch, 315 F.2d 381,391 (CCPA 1963) ("From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing."). MPEP 2112 I and II: “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)”. Where the claimed and prior art products are identical or substantially identical the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See MPEP 2112(V) (instant claim 6).
In light of the foregoing, instant claims 1-3, 6 and 8-10 are anticipated by Zhao ‘611.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetics, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Zhao et al. (US2018/0110704A1, IDS of 11/10/2025, hereinafter Zhao ‘611) as applied to instant claims 1-3, 6 and 8-10.
Zhao ‘611 was discussed with respect to instant claims 1-3,6 and 8-10.
Zhao ‘611 further discloses the foaming agent are used in an amount of about 1% to about 10% ([0194]) or 1-15% ([0224] which overlaps the instant range of about 7.5 to about 15 (instant claim 4); the foaming agent include HFOs, propane, isobutane, n-butane, cyclopropane and combinations thereof ([0196] and claims 15-16 of prior art). Although Zhao does not expressly teach a combination of HFO, propane and isobutene and amounts thereof, Zhao suggests various propellants and general amount. If there is showing that the claimed relative proportions are not critical, adjusting relative amounts of known propellant components to achieve desired vapor pressure or spray properties would have been routine optimization. Further please see case law, In re Aller 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), “[W]here general conditions are disclosed in the prior art, discovering optimum or workable ranges by routine experimentation is obvious. optimized the ranges with the claimed ranges, unless there is criticality evidence of the claimed range (instant claim 5).
Although Zhao ‘611 does not expressly teach the claimed conditional limitation, Zhao teaches minimum amount about 4% of surfactant (e.g., abstract and [0004]), and thus, if the composition contains less than such minimum amount, other adjuvant such as foam busters ([0153]) would be included in the hair composition(instant claim 7).
In light of the foregoing, instant claims 1-10 are obvious over Zhao ‘611.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Banowski (WO2012/084970A1, citation is obtained from the previously attached Google English Translation) or in view of Zhao et al. (US2018/0110704A1, IDS of 11/10/2025, hereinafter Zhao ‘704).
Applicant claims the below claim 1 filed on 11/10/2025:
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Prior Art
Banowski discloses foamable cosmetic composition containing foaming agents for skin and body care (title); the composition is provided in the form of mousse (e.g., page 27 and 31-32 of translation); in the embodiment, the cosmetic composition comprises mousse composition and foaming agent (=blowing agent), wherein the mousse care composition no. 1 comprises dicaprylyl ether 5.0%, 2-ethylhexyl palmitate 5.0%, cetearyl alcohol 2.0%, Cutina MD (glycerol mono distearate, from BASF/BASF) 1.0%, dimethicone 0.5% viscosity 350 est, panthenol 0.5%, Tego Care CG 90 (Cetearyl Glucoside) 1.0%, glycerin 5.0%, concentration 86%, Karion F (sorbitol 70%) 3.0%, phenoxyethanol/Methyl/Ethyl/Butyl/Propyl/Isobutyl phydroxybenzoate total 1.0%, perfume 0.35%, water add 100% with respect to the blowing agent (e.g., pages 31-32 of translation), and i.e., from the calculations, 92% of the facial mousse care composition is used with respect to 8% of the particularly preferably referred blowing agent trans 1, 3, 3, 3-tetrafluoropropene (=trans-1234ze) (page 26, last fourth and last paragraphs of translation and pages 31-32 of the translation) which reads on the claimed Trans-1234ze and the said 92/8 composition can form a soft and stable fine and dense foam (e.g., pages 6 and 32 of translation); in this embodiment the water as sole carrier is used in an amount of 75.65% x 92/100 (%) = 69.598% of the total weight of the composition which reads on the claimed carrier (i) and the amount about 70% of prior art is within the claimed range of from about 50% to about 90%; dicaprylyl ether, 2-ethylhexyl palmitate, cetearyl alcohol and Cutina MD (glyceryl mono/distearate), all of them belong to surfactant class, all of them together constitute 13% x 92/100(%) = 11.96% of the total weight of the composition which reads on the claimed surface tension reducing agent (ii) and the amount 11.96% of the prior art is within the claimed amount of about 0.5% to about 20% or about 6% to about 20%; trans-1234ze as the sole blowing agent comprises 8% of the total weight of the composition (page 32 of translation) which reads on the claimed ingredient (iii) and the amount 8% of prior art is within the claimed range of greater than 5% to about 20% or about 7.5% - about 15%; sorbitol and panthenol (vitamin B5) read on as the optional active agent (iv); and other ingredients such as perfume and phenoxyethanol/Methyl/Ethyl/Butyl/Propyl/Isobutyl paraben reads on the claimed optional adjuvants (v)(instant claims 1, 4 and 6).
Further, Banowski teaches only carrier water in the embodiment and thus the carrier comprises 100% water which reads on the claimed at least 90% (instant claim 2). Further Banowski teaches trans-1,2,3,4-ze as the sole blowing agent in the said embodiment of page 32 and thus reads on the claimed at least about 40% of trans-1234ze (instant claim 3). Banowski further teaches as the additional blowing agent, propane and isobutane (page 6) could be used because they have a low solubility in water (page 6), and although this prior art does not expressly teach a combination of trans-1234ze, propane and isobutene, it would be obvious to combine preferred trans-1234ze with additional propane and isobutene propellant to enhance low- solubility in water, and their amounts would be optimized with routine experimentation in the absence of criticality of the claimed range (instant claim 5); Banowski further teaches the amount of surfactant 0.5-20% (e.g., claim 12 of prior art) and thus the surfactant may present less than 3% and in that case other adjuvant would also be contained (e.g., claim 12 of prior art) in order to enhance foaming properties (instant claim 7). Banowski does not expressly teach a method of treating a human, and but it would be implicit because the cosmetic composition comprising the said blowing agent and composition is applied for skin and body care of human (e.g., abstract), and mousse composition is applied to face skin (pages 31-32 of translation) and therefore the prior art teaches/suggests the claimed method (instant claim 8). Banowski teaches cocamidopropyl betaine as a zwitterionic surfactant (page 9) and thus the mousse composition for applying to skin could/would contain this surfactant. Other species of surfactant recited in instant claim 9 would be obvious variation and the ordinary artisan would select as a matter of choice. Although Banowski does not expressly teach mousse density properties, it would be implicit. See In re Spada above (instant claim 9). Banowski further teaches the said composition is contained in a suitable pressure vessel spray-can or spray-dispenser (pages 27 and 32) which reads on the claimed article (instant claim 10).
Although Banowski does not expressly teach the exact claimed ranges of (i)-(iii), this prior art teaches overlapping ranges as noted above. In this regard, please see 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In the alternative, Zhao ‘704 discloses aerosol hair care composition comprising HFO foaming agent due to unique advantages over the use of low vapor pressure hydrocarbon foaming agents in that it enables significantly higher foam densities (approximately 2x greater) versus hydrocarbon propellants, and the HFO has been found to result in gloss or shine of the dispensed foam ([0182]). Therefore, it would be obvious to select HFO of Zhao ‘704 from various propellants of Banowski in order to take benefits of HFO and enhance the properties (e.g., gloss or shine) of the dispensed foam as taught by Zhao ‘704.
In light of the foregoing, instant claims 1-10 are obvious over Banowski or in view of Zhao ‘704.
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive.
Applicant argues that blowing agent trans-1234z of Banowski is one of hundreds agents, and Banowski further teaches propane and isobutane as a possible blowing agent; on the other hand, the present specification shows unexpected results using trans-1234z in terms of glossiness and spread ability of the mousse composition when comparing mixture of propane and isobutane blowing agent (A-46) which can be the prior art.
The Examiner responds that Banowski clearly teaches “trans-1234z” blowing agent is particularly preferred (e.g., page 26 of translation) and the embodiment compositions nos. 1-2 contain blowing agent trans-1234ze (=HFO)(see page 32 of translation) and therefore selecting such blowing agent would be obvious among hundreds of blowing agents; thus alleged unexpected results would also be expected; and the said comparison is not a fair comparison between the claimed invention and the closest example of prior art using trans-1234ze. Further applicant did not provide any evidence to show unexpected results within or after three months for suspending prosecution. Furthermore, the secondary reference of Zhao ‘704 discloses benefits of HFO as noted above, and there is sufficient motivation to select HFO among various foaming agents as taught by Zhao ‘704.
In light of the foregoing, applicant’s arguments are not persuasive.
Conclusion
All examined claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613