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 Status
Claims 1-7 are pending. The amendments find reasonable support in paragraph [0023] disclosing “less than or equal to about 0.8 wt%”. Applicant’s amendments have necessitated modification of the existing rejection. Accordingly, this Action is FINAL.
Withdrawn rejections
Applicant's amendments and arguments filed 12/29/25 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 Any rejection and/or objection not specifically addressed below is herein withdrawn. Claim(s) 1, 3-4, 6 and 7 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Drovetskaya et al. (US20100209377) as evidenced by the product data sheet for GLYDANT ([online] retrieved on 9/17/24 from: http://www.petrakemindo.co.id/wp-content/uploads/2013/02/ProductDataSheets_Glydant_PDS.pdf; 2 pages) and Aranaz et al. (Polymers 2018;10: 25 pages). Applicant’s amendments and arguments are persuasive.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections 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 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.
Claims 1-4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Drovetskaya et al. (US20100209377) as evidenced by the product data sheet for GLYDANT ([online] retrieved on 9/17/24 from: http://www.petrakemindo.co.id/wp-content/uploads/2013/02/ProductDataSheets_Glydant_PDS.pdf; 2 pages) and Aranaz et al. (Polymers 2018;10: 25 pages).
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
Applicant claims:
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Claim interpretation: The limitation of “less than about 0.8 wt%” is reasonably interpreted as the amount of HPMC being less than 0.8 wt% or about 0.8 wt%.
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 hair cosmetic research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from hair cosmetic formulation techniques and components— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1 and 3, Drovetskaya et al. disclose a hair styling and conditioning composition (Title) comprising hydroxyproplymethylcellulose (HPMC) and chitosan in a cosmetically acceptable medium of water (Example 1, Table 1, [0036-0043]; claims 1, 4, 5). Drovetskaya et al. disclose in Examples 3 and 4, that 0.3 grams of the dry film was dissolved in 12 g of water [0048, 0051]. Drovetskaya et al. disclose in Batch 1 in Table 1 that the final dry film has 56% HPMC and 24 wt% chitosan, then one finds that in the 0.3 grams there are 0.072 g of the chitosan and 0.168 g of the HPMC for a final wt% in the hair treatment solution upon dilution of 0.3 g in 12 g of water being 0.072g/(12g + 0.3g) X 100 = 0.58 wt% chitosan and 0.168g/(12g + 0.3g) X 100 = 1.37 wt% HPMC based on the total weight of the hair treatment composition.
Regarding claim 2, Drovetskaya et al. teach a composition as a dry film with 56-59% film forming agent including HPMC and 24-25 wt% chitosan salt (Table 1). As discussed above, Drovetskaya et al. also teach dissolving the dry film in water to make in-situ formulations for application to hair [0048, 0051, 0068]. As shown above, Drovetskaya et al. those examples contain 0.58 wt% chitosan and 1.37 wt% HPMC for a ratio of chitosan to HPMC of 1:2.3. Furthermore, Drovetskaya et al. teach that the film can comprise about 40-95% film forming agent (Claim 6), which can be HPMC (Claim 4), as well as about 5-30 wt% chitosan (Claim 8). Thus, Drovestkaya et al. teach optimizing the amount of each component. Moreover, Drovetskaya et al. also teach optimizing the viscosity of the resulting gel with various ratios of dry film to water such as from about 1:10 to about 1:50 (Claims 1-19).
Regarding claim 4, Drovestkaya et al. disclose adding GLYDANT preservative to the composition [0043] and as evidenced by the product data sheet for GLYDANT, it has 44-46% water content. Drovestkaya et al. also disclose adding PLANTAREN 2000 as a 50% solution (Table 1).
Regarding claim 6, Drovestkaya et al. disclose adding pH adjuster citric acid, emollient glycerin and non-ionic surfactant PLANTAREN 2000 Decyl Glucoside to the composition (Table 1) as well as, additional film forming agents, emollients, moisturizers, conditioners, oils, sunscreens, surfactants, emulsifiers, preservatives, rheology modifiers, colorants, preservatives, pH adjustors, propellants, reducing agents, fragrances, foaming or de-foaming agents, tanning agents, depilatory agents, flavors, astringents, antiseptics, deodorants, antiperspirants, insect repellants, bleaches, lighteners, anti-dandruff agents, adhesives, polishes, strengtheners, fillers, barrier materials, or biocides, or an active ingredient selected from skin care actives, nail care actives, or hair care actives (Claim 15).
Regarding claim 7, Drovestkaya et al. applied the composition of Example 1 comprising chitosan and HPMC to hair (Examples 3-4; [0048-0057]). The strength of the hair was inherently improved. Especially given that the film strength of the chitosan and HPMC film is added to the hair [0060] and, as evidenced by Aranaz et al., chitosan films increase hair strength (Page 12, 2nd paragraph).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Drovetskaya et al. is that Drovetskaya et al. do not expressly teach less than about 0.8 wt% HPMC or a weight% ratio of chitosan to HPMC of about 1:2 based on the total weight of the composition. However, it would have been obvious to one of ordinary skill in the art before to the effective filing date of the claimed invention to make the hair treatment composition of Drovetskaya et al. with less than about 0.8 wt% HPMC and a weight% ratio of chitosan to HPMC of about 1:2 based on the total weight of the composition and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because it is merely routine optimization of the amount of each component already suggested by Drovetskaya et al. and optimization of the gel viscosity. For example, as discussed above Drovetskaya et al. provide an embodiment in Batch 1 in Table 1 that the final dry film has 56% HPMC and 24 wt% chitosan, then one finds that in the 0.3 grams there are 0.072 g of the chitosan and 0.168 g of the HPMC for a final wt% in the hair treatment solution upon dilution of 0.3 g in 12 g of water being 0.072g/(12g + 0.3g) X 100 = 0.58 wt% chitosan and 0.168g/(12g + 0.3g) X 100 = 1.37 wt% HPMC based on the total weight of the hair treatment composition. However, that embodiment is subject to optimization because Drovetskaya et al. teach not only a range of about 40-95% by weight HPMC (Claims 4 and 6) but also a dry film to water ratio of about 1:10 to about 1:50 (Claims 16-17). Consequently, the artisan is guided to adjust/optimize the amount of HPMC (56%) to a lower amount of about 40% of the composition, which would be (0.4 X 0.3g) = 0.12 g HPMC in the 0.3 g dry film. And since the amount of water can be optimized to about 1:50, then 15 g water/0.3 g film = 50 and 0.12g HPMC/(15 g water + 0.3 g film) X 100 = 0.78% HPMC, which is less than about 0.8% HPMC in the composition. So, in the present case there is guidance for the artisan to discard the limits set by the example in Drovetskaya et al. and optimize the variables to arrive at the claimed invention with a reasonable expectation of success.
With regard to the limitation of a weight% ratio of chitosan to HPMC of about 1:2 based on the total weight of the composition, Drovetskaya et al. already teach examples with a ratio chitosan to HPMC of 1:2.3, which is nearly the claimed ratio of about 1:2 and only minor adjustment of the component is required to produce the claimed ratio. Thus, the ordinary artisan would have a reasonable expectation of success in obtaining a composition with a weight ratio of chitosan to HPMC of about 1:2 without any undue experimentation or inventive faculty to do so.
Claim 5 is rejected under 35 U.S.C. 103(a) as being unpatentable over Drovetskaya et al. (US20100209377) as evidenced by the product data sheet for GLYDANT ([online] retrieved on 9/17/24 from: http://www.petrakemindo.co.id/wp-content/uploads/2013/02/ProductDataSheets_Glydant_PDS.pdf; 2 pages) and Aranaz et al. (Polymers 2018;10: 25 pages), as applied to claims 1-4, 6 and 7 above, in further view of Trueb, RM (Abstract of: J Dtsch Dermatol Ges. 2007;5(5):356-65; 1 page).
Applicant claims:
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The references of Drovetskaya et al., Glydant product sheet and Aranaz et al. are discussed in detail above and that discussion is incorporated by reference.
Further regarding claim 5, Drovetskaya et al. teach making a gel by combining the dissolvable film with an aqueous component (Claims 16-19). Drovetskaya et al. also teach adding other hair care products such as surfactants, conditioners, strengtheners or hair care actives (Claim 15) to the hair styling and conditioning composition. Drovetskaya et al. teach that the invention can further incorporate other ingredients known in the art of hair care formulations [0022].
Regarding claim 5, Trueb teaches that shampoos are made of surfactants, which are cleansing agents and can be a blend of different surfactants, conditioning agents and special care ingredients (Abstract).
The difference between the instant application and Drovetskaya et al. is that Drovetskaya et al. do not expressly teach that the hair treatment composition comprises at least one of a shampoo, rinse-off conditioner, leave-on conditioner. This deficiency in Drovetskaya et al. is cured by the teachings of Trueb. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the hair treatment composition of Drovetskaya et al. with at least one of a shampoo, rinse-off conditioner, leave-on conditioner or a styling product, as suggested by the combined references, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because of the following reasons. First, Drovetskaya et al. expressly teach and suggest that the composition is a hair styling and conditioning composition. It is then prima facie obvious to combine the hair styling and conditioning composition of Drovetskaya et al. with other hair styling and conditioning products, including leave-on and rinse-off conditioners, to create another product useful for the same purpose. See MPEP 2144.06(I) COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE “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 which is to be used for the very same purpose.” (In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980); In re Susi, 58 CCPA 1074, 1079--80, 440 F.2d 442,445 (1971); In re Crockett, 47 CCPA 1018, 1020-21, 279 F.2d 274, 276-77 (1960)). As explained in Crockett, the idea of combining them flows logically from there having been individually taught in the prior art. Secondly, Drovetskaya et al. teach and suggest adding surfactants (Claim 15), which includes cationic, anionic, non-ionic and amphoteric surfactants, as well as hair care actives. (Note that Drovetskaya et al. teach using anionic, cationic, amphoteric or nonionic chitosan polymers as well. [0011]). The ordinary artisan in this art is well aware that shampoos contain surfactants/blends of surfactants and conditioning agents through the teachings of Trueb. Consequently, it is obvious to combine the hair conditioning/styling composition of Drovetskaya et al. with a surfactant containing shampoo product for the added cleansing effect of the surfactants in the shampoo. The ordinary artisan would do so with a reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the before the effective filing date, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments:
Applicant’s arguments filed 12/29/25 have been carefully considered but are not persuasive.
Applicant asserts that: “Claims 1 now requires that HPMC be present in an amount of less than about 0.8 wt% based on the total weight of the composition. This is not expressly or generally taught by Drovetskaya. Indeed, Drovetskaya requires a film forming agent (e.g., HPMC) to be present in an amount of from 40% to 95% of the dry film. See e.g., [0014] of Drovetskaya. There is nothing in Drovetskaya to suggest that amounts outside of 40% to 95% be useful, let alone that they would be effective in increasing hair strength.” Respectfully, the Examiner has a different perspective. As shown above, Drovetskaya provides guidance for optimizing the gel viscosity by varying the ratio of dry film to water (Claims 16-19) and guidance for optimizing the amount of chitosan (Claim 8) and HPMC (Claim 6) to arrive at a composition with less than about 0.8 wt% HPMC. Thus, there is guidance to optimize the amount of the ingredients. Any improvement in hair strength naturally flows from the composition of Drovetskaya et al. Especially when no limitation or degree of hair strength improvement is claimed by Applicant. Furthermore, Drovetskaya et al. did not need to recognize that. See MPEP 2112 II: “II. INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE TIME OF THE INVENTION
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).” The Examiner has also shown with evidence that there is an expectation of improving hair strength with the art of Aranaz. Drovetskaya et al. is presumed to have such knowledge. An artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). And see MPEP 2141.03(I): The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the relevant time.
Also see MPEP 2144(IV): “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)”.
The Examiner finds this case analogous to the optimization of a range or other variable within the claims that flows from: “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” (In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.2003). See MPEP 2144.05(II)(A)). Drovetskaya provides the components and operable ranges and all it appears that Applicant has done is determine workable ranges by routine experimentation using Drovetskaya as a blueprint. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). That is merely the work of the skilled artisan; not an inventor.
In conclusion, the prior art already teaches and suggests hair treatment compositions comprising chitosan and HPMC within the claimed weight percentages. Application of the prior art composition inherently improves hair strength. Applicant has not presented evidence to the contrary and simply appears to be claiming a latent benefit that is inherent in the hair treatment composition of Drovetskaya et al. See MPEP 2145(II): Prima Facie Obviousness Is Not Rebutted by Merely Recognizing Additional Advantages or Latent Properties Present But Not Recognized in the Prior Art
Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).
“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent…” MPEP 2144.05(II)(A)).
Respectfully, Applicant’s arguments are not persuasive.
Conclusion
No claims are allowed.
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 ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613