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 .
DETAILED ACTION
Claims 33-35, 37, 40, 42, and 44-50 are pending in a Response to 02/10/2026. Claims 44-48 have been withdrawn. As a result, claims 33-35, 37, 40, 42-43, 49 and 50 are being examined.
Withdrawn rejections:
Applicant's amendments and arguments filed 02/10/2026 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 Any rejection and/or objection not specifically addressed below are herein withdrawn.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.
New Grounds of objection/rejections --- as necessitated by amendment
Claim Objections
Claim 37 is objected to a minor informality under 37 CFR 1.75.
Claim 37 recites “the starch” in line 1, but which would be better to write “the starch powder”.
Appropriate correction is requested.
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 of this title, 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 33-35, 37, 40, 42, 43, 49 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Mustafa et al. (WO2019/010359A1, IDS of 04/29/2022) in view of Kukkala et al. (US5968494A, of record)
Applicant claims the below claim 33 filed on 02/10/2026:
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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 care research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from hair care 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)).
Prior Art
Mustafa teaches an aerosol dry shampoo mousse composition for hair which reads on the claimed non-rinse hair comprising sebum-adsorbing starch powder such as distarch phosphate, corn starch, or modified corn starch, tapioca starch and/or rice starch (e.g., [0015], [0079]-[0080] and claims 1-2 of prior art) which reads on the claimed oil adsorber wherein the starch powder is present in an amount of about 10- about 50%, about 14%-about 20% or 10-50% (e.g., [0018] and claim 4 of prior art) that is within the range of 1-25% of instant clam 33, 3-12% of instant clam 42, or 10-25% of instant claim 43, water in an amount of about 30 to about 70% (e.g., [0053]) which overlaps the instant range of minimum 20% of water of instant claim 33. MPEP2144.05 “In 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).”; and further, the composition contains propellant such as liquified gaseous propellant or dimethyl ether (DME) ([0011] and [0076] and claim 9 of prior art) which reads on the claimed DME and it is used in an amount of about 5 to about 80% which overlaps the instant range of 35-55% or about 50%. Please note that since the prior art teaches the same composition as claimed, the claimed water-based mist spray is predictable variation or known technique to improve similar products in the same way (instant claim 33, in part and instant claims 34-35, 37 and 42-43); the embodied composition of Example 1 ([0079]-[0080] and claims 1-2 of prior art) does not contain ethanol (instant claim 49); the composition contains hair conditioner ingredients such as cationic conditioning polymers, hydrocarbon oils, phenoxyethanol which reads on the claimed preservatives, fragrance which reads on the claimed fragrance, caprylic/capric triglyceride, PEG-12 dimethicone, etc. ([0061] and Example 1) and (instant claim 50). The composition is applied via aerosol spray ([0005]-[0010], [0078] and claim 10) wherein the aerosol spray contains water and thus, the prior art composition is water-based aerosol spray.
However, Mustafa does not expressly teach VOC rate of instant claims 33 and 40. The deficiencies are cured by Kukkala.
Kukkala discloses hair care aerosol spray composition comprising starch, water, polyurethane, propellant such as dimethyl ether (see entire document including col. 2, lines 27-37, col. 5, lines 24-39, and claim 24 of prior art); due to current environmental regulations, it is noted that there preferably be less than about 55% or most preferably less than about 20% of propellant which overlaps the instant range of less than about 45-55% or no more than 50% based on the weight of the composition (col. 8, lines 29-36 of prior art) (instant claims 33 and 40 – VOC content).
It would have been obvious to modify the teachings of Mustafa with reduction of VOC to less than 55% in propellant-containing composition in order to prevent environment pollution as taught by Kukkala.
In light of the foregoing, instant claims 33-35, 37, 40, 42, 43, 49 and 50 are obvious over Mustafa in view of Kukkala.
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive.
Applicant argues that Mustafa composition is dry shampoo mousse which is aerosolized creamy foam ([0013]) while the claimed composition is configured as a water-based mist spray, and instant claim 33 requires the presence of dimethylether (DME) as the propellant, and it would not be obvious to use DME as the propellant for Mustafa’s mousse with a reasonable expectation of success because DME in Mustafa does not form a functional mousse (i.e., rich foam) as demonstrated in Applicant’s remarks on pages 9-10 and thus the claimed invention is different from Mustafa’s mousse.
The Examiner responds that Applicant’s experiments on remarks on pages 9-10 is not clear, and in particular, picture on page 9 is blurred and it is hard to evaluate comparison; further, even though DME propellant was not working in foam formation in mousse as applicant alleges, the experiment did not require a surfactant while Mustafa essentially requires the surfactant. It is well known in the mousse industry that the surfactant acts as foaming agents because of their amphiphilic properties and thus they are considered essential in forming a foam in mousse product as evidenced by Tamarkin et al. ([0005] - US2017/0216334A1). Further, the claimed invention uses “comprising” which does not exclude introduction of surfactants. Thus, Applicant’s experiments and relevant arguments are not persuasive.
Claims 33-35, 37, 40, 42, 43, 49 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Richardson (CA3138443A1 (IDS of 03/27/2025), priority date of 2019-05-01, corresponding to EP3962431A of IDS dated 08/10/2023, citation is obtained from its corresponding US2020/0390666A1- of record).
Applicant recites claim 33 filed on 02/10/2026 as noted above.
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 care research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from hair care 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)).
Determination of the scope and content of the prior art
(MPEP 2141.01); 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)
Richardson discloses rinse-free shampoo composition in the form of aerosol spray comprising 60-70% of an aqueous liquid phase which overlaps the range of a minimum of 20% water of instant claim 33 and about 4-15% of a solid phase comprising a starch thickener such as distarch phosphate, tapioca starch, rice starch, cornstarch, and combinations thereof in an amount of about 4-15% that reads on the claimed oil adsorber and its amount of prior art overlaps the range of 1-25% by mass of instant claim 35, 3-12% by mass of instant claim 42, or 10 to 25% by mass of instant claim 43; and 20-35% or at least about 20%, at least about 25% or at least about 35% of a gas phase such as propellent including liquified gas, isobutane, propane, butane, dimethyl ether (DME) (abstract, [0062]-[0065]) that reads on the claimed propellant DME and at least about 20%, 25% or 35% of prior art overlaps the instant range of 35-55% by mass of instant claim 33. Please note that since Richardson teaches the same composition as claimed, the claimed water-based mist spray is predictable variation or known technique to improve similar products in the same way without any difficulty in non-obviousness construction (instant claims 33-35, 37, 42 and 43). Further Richardson discloses the composition contain alcohol other than ethanol in an amount of about 1-15% ([0049]) (instant claim 49). The composition contains volatile organic components e.g., DME 20-35% and alcohol about 1-15%, and sum of them are 21-50% which overlaps instant VOC range of 45-55% or no more than 50% (instant claims 33 and 40 – VOC content). 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). Further the composition contains conditioning agent such as emollient (=moisturizer), PEG-8 dimethicone ([0054]), preservatives (=antiseptic agent)([0025]), solubilizer ([0058]), fragrance ([0059]), etc. (instant claim 50).
In light of the foregoing, instant claims 33-35, 37, 40, 42, 43, 49 and 50 are obvious over Richardson.
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive for the reasons as noted above with respect to Mustafa.
Interview Summary
The Examiner contacted attorney Nicholas J. Landau to discuss a possible allowability on 04/22/2026. During the discussions, the Examiner suggested adding “the formulation does not contain a surfactant” to instant claim 33. However, Attorney did not agree with such suggestions and instead presented modified amendments to the claims including new independent claim. However, the Examiner did not agree with those modified amendments to the claims because they appear to have a possible new matter issue and still obviousness issue.
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(a).
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 art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
All examined claims are rejected.
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 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
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