DETAILED ACTION
Claims 1-2, 5, 7-8,11-13, and 16-17 are pending. Of these, claims 12-13 are withdrawn as directed to a nonelected invention. Therefore, claims 1-2, 5, 7-8, 11, and 16-17 are under consideration on the merits.
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 .
Status of the Rejections
The 103 rejection is revised in view of the amendment.
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 1-2, 5, 7-8, 11, and 16-17 are rejected under 35 U.S.C. 103 as unpatentable over Bierganns et al. (US Pat. Pub. 2012/0076747; of record in IDS) in view of Hall et al. (U.S. Pat. Pub. 2013/0296289), Geary et al. (US Pat. Pub. 2007/0289613), and Dihora et al. (US Pat. Pub. 2016/0228338).
As to claims 1-2, 5, 7-8, 11, and 16-17, Bierganns exemplifies an aqueous shampoo composition comprising 2.55 wt% SLES (an alkyl ether sulfate anionic cleansing surfactant within the scope of Formula I of claim 1 which is slightly below the 3 to less than 12% range of claim 1 and the range of claim 16, 0.6 wt% cocoamidopropylbetaine (a “cosurfactant” within the scope of Formula II of claim 1) which is slightly below the 1-3.5 wt% range of claim 5), and 0.63% of a pre-emulsion comprising dimethicone (a pre-formed emulsified silicone) which is within the range of claim 2 (Table 8A at paragraph 134). The broader teachings of Bierganns, however, disclose that the surfactant may be present in the amount of 0.01 to 50 wt% (paragraph 56), which encompasses the ranges of claims 1, 5, and 16. The ratio of the alkyl ether sulfate and the betaine surfactant is about 4, which is within the range of claim 1. Bierganns further discloses that the shampoo compositions are mixed with a blend of a cationic guar and a polymer, such as a blend of N-Hance 3215 (a cationic hydroxypropyltrimethylammonium chloride guar compound having a charge density of 1.85 of claim 1) and an APTAC (3-acrylamidopropyl) trimethyl ammonium chloride) /Acrylamide copolymer having a molecular weight of 807,000 which is outside the 500,000 or less range as recited by claim 1 as well as the range of claim 11 (Example 51 at Table 7 and footnote 28). The broader teachings of Bierganns, however, disclose that the molecular weight of the polymer may be “from about 500,000 to 2 million” which is just slightly above the range recited by claim 1(paragraph 43).
The compositions possess pH values of between 5-6, which is within the range of claim 1 (Table 8B). Bierganns further teaches that the purpose of the cationic guar is to serve as a conditioner (paragraph 5), and that the composition may further comprise a suspending agent (paragraph 95).
As to claims 1-2, 5, 7-8, 11, and 16-17, Bierganns does not further expressly disclose that the APTAC polymer is a homopolymer as recited by claim 1 as opposed to the APTAC copolymer taught by Bierganns and which has a molecular weight within the ranges of claims 1 and 11, that silicone deposited from the shampoo remains on the hair following subsequent application and rinsing of a conditioner (claim 1) or that the pre-formed emulsified silicone comprises dimethiconol as recited by claim 1, nor that the suspending agent comprises polyacrylic acid as recited by claim 1, nor the charge density at pH 7 of the APTAC polymer as recited by claims 10 and 17.
Hall discloses a shampoo composition (Abstract) comprising a silicone as a conditioning agent such as a dimethicone (paragraph 84), wherein the silicone may be in the form of a suitable pre-formed silicone emulsion such as DC2-1766 (an emulsion of dimethiconol (paragraph 87). Hall further teaches that the shampoo preferably comprises a suspending agent such as polyacrylic acid (paragraph 112).
Geary discloses aqueous shampoo compositions comprising a cationic deposition polymer (paragraphs 16-17) that may be either a copolymer or homopolymer comprising as a cationic monomer an acrylamidopropyltrimethyl ammonium chloride such as an APTAC homopolymer having a charge density of at least 5 which is within the range of claim 1 and encompasses the range of claim 17 and having a molecular weight of at least 500,000 which is slightly below the “less than 500,000” range of claim 1 (see, e.g., paragraphs 8-12 and 70 and Example 9 on pages 17-18).
Dihora discloses shampoo compositions comprising a cationic deposition polymer that may be 3-acrylamidopropyl trimethyl ammonium chloride (APTAC), wherein the polymer has a molecular weight preferably between 100,000 and 5,000,000 Daltons, which overlaps the range of claim 1 and encompasses the range of claim 11 (paragraphs 5, 50, 139-140).
As to claims 1-2, 5, 7-8, 11, and 16-17, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the composition of Bierganns by selecting an emulsion comprising dimethiconol as the pre-formed silicone emulsion instead of, or in addition to, the dimethicone emulsion taught by Bierganns, because Hall teaches that both dimethicone and dimethiconol pre-formed emulsions are suitable for use as conditioners in shampoos, such that the skilled artisan reasonably would have expected that a dimethiconol could be used in the pre-formed emulsion for the Bierganns shampoo. Such a modification is merely the substitution of one known element for another according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143. It further would have been prima facie obvious to select polyacrylic acid as the suspending agent, since Bierganns does not provide any guidance as to which suspending agents are suitable, but Hall teaches that polyacrylic acid is a suitable suspending agent for an aqueous shampoo composition, such that the skilled artisan reasonably would have expected that it could be used as the suspending agent in the Bierganns aqueous shampoo composition.
It further would have been prima facie obvious to select an APTAC homopolymer having a charge density and molecular weight within the range of claim 1 for incorporation into the Bierganns shampoo instead of, or in addition to, the APTAC copolymer disclosed by Bierganns, because Geary teaches that both an APTAC copolymer as well as an APTAC homopolymer within the scope of the claims are functional equivalents for use as cationic deposition polymers in an aqueous shampoo composition, such that the skilled artisan reasonably would have expected that an APTAC homopolymer of the claims could be used successfully in the Bierganns aqueous shampoo compositions with a reasonable expectation of success, such a modification being merely the combining of known elements or the simple substitution of one known element for another according to known methods to yield predictable results, which is prima facie obvious as per MPEP 2143, and because Bierganns expressly teaches that polymers having a molecular weight of “about 500,000” may be used, wherein the use of “about” indicates that molecular weights somewhat less than 500,000 may be used, and further because Dihora discloses that APTAC polymers used as a cationic deposition polymer in shampoo compositions suitably may have a molecular weight between 100,000 and 5,000,000 Daltons, which overlaps the range of claim 1 and encompasses the range of claim 11, such that the skilled artisan reasonably would have expected that such molecular weights could be used for the APTAC polymer in the Bierganns composition. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The resulting composition as modified supra will allow silicone deposited from the shampoo to remain on the hair following subsequent application and rinsing of a conditioner as recited by claim 1 because it comprises the same ingredients in the same amounts recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01. Additionally, Biergmann expressly teaches that a 2 in 1 shampoo/conditioner comprising the polymers taught by Biergmann greatly improved the deposition of the silicone onto hair compared to compositions not comprising the polymers taught therein (paragraphs 134-136), such that the amount of conditioning agent in the 2 in 1 formulation could be greatly reduced while maintaining good conditioning performance (paragraph 138). Therefore, Biergmann teaches that its compositions have the property of helping hair to retain silicone even in the presence of conditioning agent, which provides a reasonable expectation that some deposited silicone would be retained even upon subsequent application and rinsing of a conditioner.
As to claims 7-8, it further would have been prima facie obvious to select an amount of the guar compound to be within the ranges recited by these claims with a reasonable expectation of success, because said amount is a result effective variable that will influence its efficacy as a conditioner in the composition and the guar compound is being used to impart the same hair care properties to the Bierganns composition as in the composition of the present claims, such that the skilled artisan would have been optimizing for the same function. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Applicant’s Arguments
Applicant argues that the rejection arrives at the claimed invention by selectively extracting individual components from multiple unrelated disclosures while relying on Applicant’s specification to identify the components for selection, such that it is based on impermissible hindsight, and that the prior art does not recognize the problem solved by Applicant, i.e., the loss of silicone deposited from shampoo during a subsequent conditioning step. Applicant claims to have discovered that shampoo-deposited silicone is largely removed by conditioner, necessitating silicone in the conditioner itself, but that incorporation of the specifically recited APTAC conditioning polymer into the claimed shampoo enhances silicone adhesion and retention. Applicant claims that the invention is drawn to a very specific shampoo and that Applicant’s discovery is based upon the cooperative behavior of the formulation as a whole, and that the Office provides no evidence of a reasonable expectation that the claimed combination would exhibit the recited silicone retention performance that is demonstrated by Examples 3-4.
In response, Biergmann expressly teaches combining an APTAC cationic conditioning polymer, a hydroxypropyltrimethylammonium chloride guar compound, and a pre-formed emulsified silicone (see paragraphs 133-134). The secondary references are relied upon only for their disclosure of the specific types of APTAC polymer and silicone that are recited by the claims. Therefore, the Office does not view the rejection as selectively extracting individual components from multiple unrelated disclosures while relying on Applicant’s specification to identify the components for selection.
Additionally, Biergmann expressly teaches that a 2 in 1 shampoo/conditioner comprising these ingredients greatly improved the deposition of the silicone onto hair compared to compositions not comprising the polymers taught therein (paragraphs 134-136), such that the amount of conditioning agent in the 2 in 1 formulation could be greatly reduced while maintaining good conditioning performance (paragraph 138). Therefore, Biergmann teaches that its compositions have the property of helping hair to retain silicone even in the presence of conditioning agent, which provides a reasonable expectation that some deposited silicone would be retained even upon subsequent application and rinsing of a conditioner as recited by claim 1.
Conclusion
THIS ACTION IS MADE FINAL. 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 GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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