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 .
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 9-12, 15-18, 20-21, and 23-26 are rejected under 35 U.S.C. 102 as being anticipated by Rollat (US 2005/0265949 A1; cited in prior Office action).
Regarding claims 1, 3, 9-12, 20-21, 23-24, and 26, Rollat teaches a cosmetic or haircare composition that may be provided in any form known from the prior art, including as an aqueous emulsion or dispersion (liquid) (p. 1, [0015]; p. 4, [0048]).
The composition contains an acrylic copolymer having units derived from acrylic acid, which is present in amounts from 0.1-40 wt% of the total composition (p. 1, [0014]; claim 7). This prior art range overlaps all claimed ranges with sufficient specificity to establish anticipation. See MPEP 2131.03.
Rollat's composition may further include a base, such as aminomethylpropanol (AMP) or metal hydroxides (p. 4, [0038]). The base may be added to the polymer before or after water is added (p. 4, [0038]). In other words, the polymer may be pre-neutralized in suspension. Rollat does not specify the time required for the suspension to achieve rapid homogeneous dispersion in water. Nevertheless, Rollat teaches an identical process using identical ingredients, and Rollat’s process and suspension will necessarily possess the same dispersion time in water as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Rollat also teaches use of comonomers including various alkyl acrylates which read on the claimed C1-22 esters of acrylic acid (p. 2, [0018]). This reads on the claimed comonomers. Rollat further teaches use of an organic solvent (p. 3, [0033]).
Regarding claim 2, Rollat further teaches a method of preparing the composition, including dissolving monomers in solvent, polymerizing at elevated temperature in the presence of an initiator, which may be benzoyl peroxide or lauroyl peroxide, and removing solvent via rotary evaporator (p. 3, [0029], [0032], [0037]). A product formed by this method reads on the product of claim 2.
Regarding claims 15-18 and 25, Rollat remains as applied to claim 1 above. Rollat further teaches that suitable solvents may be esters including ethyl acetate, as well as ketones including methyl ethyl ketone, alcohols, aliphatic hydrocarbons, and/or aromatic hydrocarbons as solvent (p. 3, [0033]).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Alternatively, claims 1-3, 9-12, 15-18, 20-21, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Rollat (US 2005/0265949 A1; cited in prior Office action).
Regarding claims 1, 3, 9-12, 20-21, 23-24, and 26, Rollat teaches a cosmetic or haircare composition that may be provided in any form known from the prior art, including as an aqueous emulsion or dispersion (liquid) (p. 1, [0015]; p. 4, [0048]). The composition contains an acrylic copolymer having units derived from acrylic acid, which is present in amounts from 0.1-40 wt% of the total composition (p. 1, [0014]; claim 7). This prior art range encompasses or overlaps all claimed ranges. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Rollat's composition may further include a base, such as aminomethylpropanol (AMP) or metal hydroxides (p. 4, [0038]). The base may be added to the polymer before or after water is added (p. 4, [0038]). In other words, the polymer may be pre-neutralized in suspension. Rollat does not specify the time required for the suspension to achieve rapid homogeneous dispersion in water. Nevertheless, Rollat teaches an identical process using identical ingredients, and Rollat’s process and suspension will necessarily possess the same dispersion time in water as the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Rollat also teaches use of comonomers including various alkyl acrylates which read on the claimed C1-22 esters of acrylic acid (p. 2, [0018]). This reads on the claimed comonomers. Rollat further teaches use of an organic solvent (p. 3, [0033]).
Regarding claim 2, Rollat remains as applied to claim 1 above. Rollat further teaches a method of preparing the composition, including dissolving monomers in solvent, polymerizing at elevated temperature in the presence of an initiator, which may be benzoyl peroxide or lauroyl peroxide, , and removing solvent via rotary evaporator (p. 3, [0029], [0032], [0037]). This method reads on the claimed method.
Regarding claims 15-18 and 25, Rollat further teaches that suitable solvents may be esters including ethyl acetate, as well as ketones including methyl ethyl ketone, alcohols, aliphatic hydrocarbons, and/or aromatic hydrocarbons as solvent (p. 3, [0033]).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Rollat in view of Toyoda (US 2012/0201775 A1). All references have been cited in a prior Office action.
Regarding claims 4-6, Rollat remains as applied to claims 1 and 3 above. However, Rollat is silent as to use of polyalkylene glycol in the composition. In the same field of endeavor, Toyoda teaches a hair cosmetic having an acrylic and vinyl hair-setting resin with 3-30% by mass of PEG300 that may be applied as a mist (p. 2, [0027], [0030], [0035], [0037]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Rollat and the PEG300 of Toyoda to arrive at the claimed invention, and to provide a cosmetic with good hair styling and re-styling effects, as taught by Toyoda (Abstract).
Claims 7-8 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Rollat in view of Berte (cited in a prior Office Action).
Regarding claims 7-8 and 13-14, Rollat remains as applied to claim 1 above. However, Rollat is silent as to which metal hydroxides may be used as an inorganic base. In a similar composition, Berte teaches neutralization of the polymer with sodium and/or potassium hydroxides (col. 4, lines 1-2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Rollat with the neutralization agent of Berte to arrive at the claimed invention, and to provide a cosmetic that is easy to use and easy to disperse in aqueous systems (col. 4, lines 41-46).
Response to Arguments
Applicant’s arguments, see page 6, with respect to the rejections of claims 1-18, 20-21, and 23-26 under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered and are not persuasive.
All of Applicant’s arguments rely on the new limitation requiring a pre-neutralized polymer wherein the base has been added prior to addition of water. Rollat teaches this limitation (p. 4, [0038], lines 4-6). The rejection is updated above for clarification.
The fact that the claimed suspension is pre-neutralized implies that neutralization must occur at some point during formation of the product. Any neutralized product otherwise meeting the structural and compositional limitations of the claims also reads on a “pre-neutralized” product.
Similarly, “pre-neutralized” is a product-by-process limitation. The Applicant’s arguments point to various processing advantages associated with pre-neutralization, but these features do not further limit the structure of the product beyond the fact that it must be in neutralized form.
Additionally, Applicant points to Rollat’s examples as teaching a separate neutralization step. A teaching contained in a reference' s broader disclosure may be relied upon despite not appearing in the reference' s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. See MPEP 2123. “Pre-neutralized” is a product-by-process limitation and does not structurally distinguish over products obtained according to Rollat’s examples.
Applicant argues that one of ordinary skill in the art would not be motivated to combine the prior art because the prior art references are aimed at hair care and thickening applications. However, Toyoda and Berte teach compositions containing the overlapping ingredients with Rollat, and Rollat further teaches applicability of the composition in haircare and thickening agents (p. 4, [0047]). Even assuming arguendo that one of ordinary skill in the art would not have had sufficient motivation to combine the prior art based on the chemical similarities of the prior art compositions, Rollat’s direct teaching to each of Toyoda and Berte’s fields would have provided sufficient expectation of applicability and success.
All of Applicant’s arguments are believed to have been addressed in full above.
Conclusion
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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