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 .
This office action is in response to the reply filed 11/14/2025.
Election/Restrictions
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/12/2024.
Response to Arguments
All of Applicant’s arguments filed 4/28/2025 have been fully considered.
In view of the amendments to the claim, the 112(b) issues identified by the Examiner in the previous office action have been resolved, as such the rejection is withdrawn.
With respect to the 103 rejections, in summary, Applicant argues that Takeda teaches that both the cation-modified galactomannan polysaccharide and the yukaformer SM are required to provide enhanced conditioning, as such as person of skill in the art would not have a reasonable expectation of success in that combining the claimed components (a) and (b) would have a synergistic effect.
This is not persuasive. While Takeda teaches that both cation-modified galactomannan polysaccharide and the yukaformer SM are required for enhanced conditioning, Takeda nonetheless teaches that Yukaformer by itself is a conditioning agent [0070] as such it prima facie obvious to add the Yukaformer to provide a conditioning effect which isn’t necessarily the improved enhanced conditioning effect provided by both components. With respect to applicant’s arguments regarding expectation of success, the prior art provides a motivation and expectation of success in combining glycolipids and Yukaformer even though it’s for a different purpose than desired by Applicant. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The Examiner would also like to note that outside of claim 15, the claims do not exclude the presence of polysaccharides, therefore, a skilled artisan could effectively modify the composition of Kitagawa by adding both components of Takeda for enhanced conditioning, or simply add Yukaformer for a conditioning benefit.
Applicant arguments regarding the unexpected effect of the claimed composition (pg. 13) is not persuasive as the data presented is not commensurate in scope with the instant claims as very specific compositions and ingredients were tested and Applicant has not established a trend in the exemplified data. There also lacks a nexus between the data presented and the instant invention. The tested compositions comprise many ingredients not required by the instant claims and a specific pH.
Applicant arguments with respect to claim 14 are not persuasive, the phrase “make-up remover” is intended use. Takeda teaches that the Yukaformer can be used in compositions such as shampoos (i.e. a cleansing composition), as such it’s expected to be capable for use in the composition of Kitagawa which include cleansing composition such as body soap, shampoos and make-up removers.
Applicant arguments with respect to claim 15 are also not persuasive as the rejection is not based on providing the composition of Kitagawa with the improved conditioning effect afforded by both the polysaccharide and the Yukaformers, but is based solely on using the Yukaformer to provide conditioning benefit.
Modified 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.
Claim(s) 1-11 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa (US 2010/0004472) and Takeda (US 2006/0275235).
Kitagawa discloses a cosmetic for skin roughness improvement/skin care containing a biosurfactant (Abs).
Regarding claims 1(a), 2 and 6: Kitagawa teaches that a suitable biosurfactant for use includes sophorolipid [0035]. Kitagawa teaches the biosurfactant to be used in amounts ranging from 0.001-20%, preferably 3-10% [0054].
Regarding claims 7 and 9: Kitagawa teaches that the biosurfactant can be dissolved in a nonionic surfactant [0056]. Working Examples 12 and 13 comprise a biosurfactant along with 5.7 or 4% nonionic surfactant. The compositions are free of anionic, cationic and ionic surfactants. While the Examples do not teach the use of sophorolipid, thus is taught to be a suitable biosurfactant for use, thus the substitution of the exemplified MEL-B for sophorolipid is prima facie obvious.
Regarding claim 10: Working Examples 12 and 13 of Kitagawa comprise water in amounts of 79.1 and 78.5% respectively.
Regarding claim 11 and 14: Kitagawa teaches compositions which can be formulated as cleansing compositions such as makeup removers, shampoos and body soaps [0063].
However, Kitagawa does not teach the composition to comprise a carboxybetaine polymer as recited by instant claim 1(a).
Takeda teaches cosmetic compositions, such as hair treatments such as shampoos comprising cation-modified galactomannan polysaccharides which provide conditioning (Abs and [0021]). Takeda teaches that various kinds of cationic water-soluble polymers and amphoteric water-soluble polymers can be added to enhance the conditioning effect of the composition. These polymers are preferably added in amounts of 5% or less [0030], reading on instant claim 8. A suitable amphoteric water-soluble polymers is N-methacryloyloxyethyl N,N-dimethylammonium-α-methylcarboxybetaine and alkyl methacrylate (Yukaformer SM) [0033 and 0055]. Yukaformer SM is used a shampoo in amounts of 0.2 and 0.4% (Tables 2 and 6). It was found that when using Yukaformer SM the conditioning effects were enhanced without disturbing the performance of the cation-modified galactomannan polysaccharides [0090].
Regarding claim 3-5: Yukaformer SM (N-methacryloyloxyethyl N,N-dimethylammonium-α-methylcarboxybetaine and alkyl methacrylate) reads on a copolymer of carboxybetaine monomers and alkyl (meth)acrylate and reads on the structure of formula (2) wherein R3=methacylate groups; y=2; z=1, R4=H; R5=H, R6=methyl and R7=methyl.
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 modify the teachings of Kitagawa with those of Takeda. One of skill in the art would have been motivated to add up to 5% of Yukaformer SM to the composition of Kitagawa to provide a conditioning effect. One of skill in the art would have a reasonable expectation of success as both Kitagawa and Takeda teaches composition for application to skin and hair which can be formulated as shampoos and Takeda teaches that it is customary to add additional ingredients into the hair treatment formulations if they provide an added benefit [0044].
Regarding claim 15: The rejection above makes obvious the inclusion of only Yukaformer SM as a conditioning agent, and not the inclusion of the cation-modified galactomannan polysaccharide and Kitagawa does not teach polysaccharides, this the composition are said to be free of polysaccharides.
Conclusion
No claims are allowable.
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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613