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
Applicant’s declaration, and specification, abstract and claim amendments in the response filed 08 July 2026 are acknowledged.
Claims 1-4, 6, 9, 10, 13-15 & 17-22 are pending.
Claims 5, 7, 8, 11, 12 & 16 are cancelled.
Claims 18-22 are new.
Claims 1, 3 & 9 are amended.
Claim 13 is withdrawn.
Claims 1-4, 6, 9, 10, 14, 15 & 17-22 are under consideration.
Examination is to the extent of the following species:
A) One or more components selected from the group consisting of D-1 and D-2- components (D-1) and (D-2);
B) One or more surfactants- a mixture of nonionic and amphoteric surfactants; and
C) One or more cationic polymers- polyquaternium- 10.
Declaration Filed Under § 1.132
The declaration filed on 08 July 2026 by Applicant is acknowledged. The declaration is addressed in the response to Applicant’s traverse below.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Withdrawn Objections/Rejections
The objection to the specification is withdrawn due to abstract amendments.
The rejection of claims 8 & 16 under 35 USC 103 over Takeuchi in view of Sato, Kubo and Kao is withdrawn due to cancellation of the claims.
Objections/Rejections
Claim Objections
Claim 19 is objected to because of the following informalities: claim 19 defines the term “cocoamide methyl monoethanolamide” as “MEA” but fails to recite “MEA” anywhere else in the claim listing. Defining the abbreviation “MEA” and not further using the abbreviation is not concise claim language. 37 CFR 1.436 states “Claims must be clear and concise.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 depends from claim 1. Claim 1 recites “a mass ratio of the content of component (C) to the content of component (B) ((C)/(B)) in the hair cleansing composition is from 7.5 to 20”. Claim 17 expands the mass content ratio by reciting “the mass ratio of the content of component (C) to the content of component (B) ((C)/(B)) in the hair cleansing composition is from 3 or more to 30 or less”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-4, 6, 9, 10, 14, 15 & 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi (JP 2018177652; Published: 11/15/2018; IDS-6/10/2022; previously cited) in view of Sato (US 2015/0093348; Published: 2015-04-02; previously cited), Kubo (CN 111201009; Published:2020-05-26; previously cited) and Kao (https://www.kaochemicals-eu.com/products/ppg-3-caprylyl-ether; Published: 04/16/2016; previously cited).
*All references refer to the Examiner Supplied English translation.
** The claim 14 recitation of “the hair cleansing composition is used as a supplementary pack” is a statement of intended use which does not further limit the composition in terms of reagents of structure.
Note: While the cited references are the same, the rationale for rejection is now grounded in Takeuchi’s Table 1-Example 5 rather than Table 1-Example 4.
With regard to claims 1, 14 & 15, Takeuchi teaches a non-gas type foam discharge container for dispensing a liquid cleaning agent (pg. 10). With regard to claims 1, 9 & 18, Takeuchi in Table 1 Example 5 teaches a hair cleansing agent comprising 10% of the anionic surfactants ammonium laureth sulfate and sodium laureth sulfate (pg. 10). With regard to claims 4, 10 & 19, Takeuchi in Table 1 Example 5 teaches inclusion of the nonionic surfactant, laureth-16, and the amphoteric surfactant, lauryl hydroxysultaine. With regard to claims 1, 3, 4, & 9, Takeuchi in Table 1 Example 5 teaches the total amount of surfactant is 14.45% as such the ratio of the content of the anionic surfactant to the content of component (A) ((anionic surfactant)/(A)) is 0.69 (Math: 10/14.45 =0.69). With regard to claims 1 & 6, Takeuchi in Table 1 Example 5 teaches inclusion of polyquaternium-10 (i.e. cationic polymer) in an amount of 0.04%. With regard to claims 1 & 22, Takeuchi in Table 1 Example 5 teaches inclusion of the polyoxypropylene polyglyceryl ether, PPG-9 diglyceryl ether, in an amount of 0.5%. With regard to claim 2, more broadly, Takeuchi teaches inclusion of polypropylene glycol as their component D to impart good lathering, good lather quality and smoothness to hair upon rinsing (Takeuchi’s claims, pg. 9 & 13). It would have been prima facie to the ordinary skilled artisan before the effective filing date to have modified Takeuchi Table 1 Example 5 hair cleanser by adding polypropylene glycol as taught by Takeuchi. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to impart good lathering, good lather quality and smoothness to hair as taught by Takeuchi.
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(courtesy of Google translate). With regard to claim 1 (D-1), Takeuchi teaches inclusion of moisturizing agents (pg. 10). With regard to claim 1, Takeuchi teaches inclusion of an oil agent in order to obtain a desired effect including improvement of the finish of hair after drying (pg. 10). With regard to claim 1, Takeuchi teaches fatty acids such as lauric acid and silicones are suitable oil agents (pg. 10). With regard to claim 1, Takeuchi teaches inclusion of shea butter and sunflower oil as components used in general hair cleansing (pg. 10).
Takeuchi does not teach inclusion of a dialkyl ether (i.e. component ( C)) and its amount, or inclusion of a compound of general formula 5/component D-1.
With regard to claim 1, in the same field of invention of foams for cleansing hair, Sato teaches a foaming hair cleanser (title; [0011]). With regard to claim 1-component ( C) & 20, Sato teaches inclusion of dicapryl ether (i.e. dioctyl ether) as a suitable non-silicone fat for use in the invention (R4 and R5 are both C8; [0054]). Sato teaches inclusion sunflower oil and shea butter as a suitable non-silicone fat for use in the invention [0051]. With regard to claims 1 & 20, Sato teaches the fat component comprises “preferably from about 0.05 to about 0.7%, most preferably about 0.4%” [0056].
With regard to claims 1 (D-1) & 21, in the same field of invention, Kubo teaches a hair cleaning composition which is discharged from the container as foam (title; pg. 18). Kubo teaches inclusion of PPG-3 octyl ether as component F (pg. 14).
With regard to claims 1 (D-1) & 21, Kao teaches PPG-3 caprylyl ether (i.e. PPG-3 octyl ether) is an impressive ingredient that has excellent emollient properties that ensures hair is left feeling soft and supple (pg. 1). With regard to claims (D-1) & 21, Kao teaches PPG-3 caprylyl ether is a solvent which aiding in the effective delivery of other ingredients and has the ability to reduce the greasy feel of formulations without comprising hydration making it a coveted component (pg. 1).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Takeuchi’s Table 1 Example 5 composition by adding about 0.4% dicapryl ether/dioctyl ether as an oil agent [yielding component (C) to the content of component (B) of 4; Math: 0.4/0.04 = 10] as suggested by the combined teachings of Takeuchi and Sato because Takeuchi and Sato are directed to similar compositions (hair cleansing foams) and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to lubricate hair with oil bodies and improve the finish of hair after drying as suggested by the combined teachings of Takeuchi and Sato.
Here at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified Takeuchi’s Table 1 Example 5 composition by adding PPG-3 octyl ether to the composition as suggested by the combined teachings of Kubo and Kao because Takeuchi and Kubo are directed to similar compositions (hair cleansing foams) and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to aiding in the effective delivery of other cleanser ingredients while still leaving the hair soft and supple through use of “an impressive ingredient” which is PPG-3 caprylyl ether as taught by Kao.
With regard to the recited amounts of component (C)/dicapryl ether, anionic surfactant, component (B)/polyquaternium-10; recited mass ratio of component (C) to component (B); and the recited content of anionic surfactant to component (A), the combined teachings of Takeuchi, Sato, Kubo and Kao suggest these parameters with values which fall within or overlap with the claimed ranges. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant argues the rejections cannot be sustained because Takeuchi-Example 4 teaches component B in an amount of 0.1% (reply, pg. 10; Declaration-pg. 2). Declarant also argues their Example 11 does not contains component D-2 (Declaration-pg. 2).
This is not persuasive. The rejection is now based in Example 5 which has polyquaternium-10 in an amount of 0.04 and contains PPG-9 diglyceryl ether (i.e. component D-2).
Applicant argues unexpected results, arguing their inventive formulation has “improvements related to simultaneous presence of superior low-temperature foam discharge performance and quality,
high-temperature foam discharge performance and quality, and performance in hair cleansings such as hair smoothness” (reply, pg. 10-11; Declaration-pg. 2). Declarant argues “Tables 1-3 of the specification, compositions that adhere to the above formulation described in Claim 1 show simultaneous hair smoothness during scrubbing and during rinsing rated “good" or “very good”, foam discharge performance and quality at 30°C rated "good'' or “very good”, and foam discharged performance and quality at 5°C rated “good” or “very good” (Declaration-pg. 2). Applicant argues the mass ratio of the amount of component C to the amount of component B (i.e. C/B ratio), results in effects of excellent foam quality at low temperatures in the recited range but Comparative Example 6 which falls outside of the claimed range does not have foam quality at low temperatures (reply, pg. 11).
This is not persuasive. Takeuchi teaches their inventive foam achieved a rating of “A” for a low-temperature foam discharge (i.e. transparent-pg. 11), an “A” rating for foam quality (i.e. texture of the foam is uniform-pg. 11), and a “3” for smoothness of rinsing (i.e. smoothness is good- pg. 11; See Example 5). Takeuchi further teaches “quality foam can be discharged, storage stability is high even at low temperature (-5 ° C), foam volume and foam quality are good during hair-washing (in the presence of sebum), and also during hair rinse It is possible to provide a hair cleansing composition that is used by filling in a foam discharge container and having excellent smoothness.” (pg. 2). Takeuchi teaches “From Table 1, the hair cleansing composition obtained in each Example was preferable for foam quality when discharged from a pump former and storage stability at low temperature (-5 ° C.). And, the hair cleansing composition obtained in each example is superior to that of each comparative example in terms of the balance of each effect of foam amount and foam quality at the time of hair washing and
smoothness of hair at the time of rinsing. It was excellent.” (emphasis added; pg. 4). The examiner takes Takeuchi at their word.
Further, Applicant has not compared their inventive formulation to the closest prior art which is Takeuchi’s Example 5.
Lastly with regard to the amount of Component C), Sato which is in the same field of invention as Takeuchi teaches dioctyl ether/fat component “preferably from about 0.05 to about 0.7%, most preferably about 0.4%” [0056] which yields a C/B ratio of 10. Applicant is using known reagents in amounts known as suitable for their intended purpose (cleansing foam).
Applicant argues a specific advantage of their invention is that “the product discharged in the form of foam in advance, so that the foam can quickly, easily, and uniformly cover the hair and scalp. If the foam is non-uniform… is watery, or is unstable, the coverage of the hair and scalp is reduced, which adversely affects the user experience. Low temperature foam performance is critical for ensuring that the user experience is satisfactory across the range of real-world conditions” (reply, pg. 12; Declaration-pg. 3). Applicant further argues “the balance of properties including low-temperature foam discharge performance and quality, high-temperature foam discharge performance and quality, and suitable hair smoothness is challenging. Typically, ingredients that provide suitable high-temperature foam discharge performance and quality are not suitable for use at low temperatures and vice versa and/or do not impart suitable smoothness to hair during scrubbing or rinsing” (reply, pg. 12; Declaration-pg. 3).
This is not persuasive. Again, Takeuchi teaches their inventive foam achieved a rating of “A” for a low-temperature foam discharge (i.e. transparent-pg. 11), an “A” rating for foam quality (i.e. texture of the foam is uniform-pg. 11), and a “3” for smoothness of rinsing (i.e. smoothness is good- pg. 11; See Example 5). “From Table 1, the hair cleansing composition obtained in each Example was preferable for foam quality when discharged from a pump former and storage stability at low temperature (-5 ° C.). And, the hair cleansing composition obtained in each example is superior to that of each comparative example in terms of the balance of each effect of foam amount and foam quality at the time of hair washing and smoothness of hair at the time of rinsing. It was excellent.” (emphasis added; pg. 4).
Again, Applicant also has not compared their inventive formulation to the closest prior art which is Takeuchi’s Example 5.
With regard to the argument that “[t]ypically, ingredients that provide suitable high-temperature foam discharge performance and quality are not suitable for use at low temperatures and vice versa and/or do not impart suitable smoothness to hair during scrubbing or rinsing”, Takeuchi teaches the foaming apparatus and all ingredients except for inclusion of component C and component D-1. However, it is obvious to add dioctyl ether in an amount to of 0.4% as taught by Sato and PPG-3 octyl ether to the composition as suggested by the combined teachings of Kubo and Kao because Takeuchi, Sato and Kubo are directed to similar compositions (hair cleansing foams) and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to aiding in the effective delivery of other cleanser ingredients while still leaving the hair soft and supple through use of “an impressive ingredient” which is PPG-3 caprylyl ether as taught by Kao and lubricate hair with oil bodies and improve the finish of hair after drying through inclusion of dioctyl ether as suggested by the combined teachings of Takeuchi and Sato.
With regard to Applicant’s arguments pertaining to the high temperature performance of the foam composition, the combined teachings of Takeuchi, Sato, Kubo and Kao teach the recited reagents, in the recited amounts, show that they are commonly used for cleansing foams, and provide a rationale for inclusion of dioctyl ether and PPG-3 octyl ether. 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) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
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 LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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