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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 2, 2026 has been entered.
Status of Claims
Claims 19, 21-27, 29, 31-34 are pending. Claims 1-18, 20, 28, 30 and 35-38 are canceled. Claims 19 and 34 are amended.
Claims 19, 21-27, 29 and 31-34 are examined on their merits.
Information Disclosure Statement
The Information Disclosure Statement filed 5/2/2025 has been reviewed.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Claim Rejections - 35 USC § 102
In light of the amendments to the claims the rejection of claims 19, 24, 25, 27 and 31-33 under 35 U.S.C. 102(a)(1) as being anticipated by Shiroya et al. WO 2018/230673 (12/10/2018) (7/27/2022 IDS) is withdrawn.
Double Patenting
In light of the filing and approval of the terminal disclaimers the provisional rejection of claims 19-38 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 16-35 of U.S. Patent Appn. No. 17/787092 in view of Shiroya et al. WO 2018/230673 (12/10/2018) (7/27/2022 IDS) in view of Daubresse et al. FR 3075628 (6/28/2019)(7/27/2022 IDS) is withdrawn.
New Rejections/Rejections Maintained
Claim Rejections - 35 USC §112(d)
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.
Claim 26 is under 35 U.S.C. 112(d) 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 26 is rejected as being indefinite for failing to further limit in the recitation of “comprising at least one polymer stabilizer chosen from isobornyl (meth)acrylate polymers.” wherein claim 16 ultimately depends from claim 19. Claim 1 already recites “sodium benzoate” in line 7. Since at least one polymer stabilizer chosen from isobornyl (meth)acrylate polymers is already recited in claim 19, claim 26 does not further limit claim 19. This is a failure to further limit the claim from which it depends.
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 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 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.
The rejection of claims 19, 21-27, 29 and 31-34 under 35 U.S.C. 103 as being unpatentable over Shiroya et al. WO 2018/230673 (12/10/2018) (7/27/2022 IDS) in view of Daubresse et al. FR 3075628 (6/28/2019)(7/27/2022 IDS) is maintained.
Shiroya et al. (Shiroya) teaches a cosmetic emulsion for topical application comprising an aqueous dispersion (PGP) of polymer particles in an oil medium (mineral oil, isononyl isononaoate, dimethicone).
The dispersion comprises an aqueous solution of carboxymethylcellulose (CMC) which is a polyanion, an aqueous solution of copolyvinylamine which is a polycation and an aqueous solution of sodium styrene/maleic acid copolymer (SMA) which is a polyanion.(See (13)Polyamines). Anionic polymers can also be acrylic copolymers as called for in instant claim 19(c). (See page 16, lines 20-36). These types of polymers, either cationic or anionic, can be considered as “stabilized polymers”. Carboxymethylcellulose is cellulose stabilized by polar carboxyl groups. Shiroya teaches that many different types of polymers can be used in various combinations in its dispersions. (See Abstract).
Thus, the dispersion can comprise vinyl acetate which is a vinyl copolymer as called for in claims 19(a) and 34(a), copolyvinylamine which is a cationic polymer as called for in claims 19(b) and 34(b), and anionic polymers can also be acrylic copolymers as called for in instant claims 19(c) and 34(c). (See page 16, lines 20-36). The dispersion can also have a polymer stabilizer.
The copolymers can include vinyl acetate which is an ethylenic copolymer as called for in instant claim 21. (See page 16, lines 26-35). Vinyl copolymers are called for in instant claim 19. The polymer can comprise an ethylenic unsaturated acid monomer as called for in instant claim 22. Shiroya expressly teaches that the most preferred monomers to make up anionic copolymers are methyl acrylate and ethyl acrylate as called for in instant claims 19 and 23. (See page 16, lines 26-37). The composition comprises water as called for in instant claim 33. Shiroya also teaches that its composition can prepare a film which can have cosmetic effects such as moisturizing due to the oils. (See Abstract)
In Example 1 Shiroya teaches a dispersion of particles of at least one polymer in a non-aqueous medium (mineral oil, isononyl isononaoate, dimethicone), wherein the dispersion comprises a polymer stabilizer (CMC) and at least one cationic polymer (polylysine) and at least one anionic polymer (sodium styrene/maleic acid copolymer) as called for in instant claim 19. Mineral oil is a hydrocarbon oil as called for in instant claims 24 and 25. Styrene is a vinyl monomer, so sodium styrene/maleic acid copolymer is a vinyl copolymer as called for in instant claim 19.
The amount of particle dispersion is 18.84% which falls within the 0.1 to 20 wt% called for in instant claim 27. (See Example 1). In Example 1 the amount of carboxymethylcellulose is 1.5% and the amount of sodium styrene/maleic acid copolymer is 0.58, so the total amount of polyanions is 2.08% which falls within the from 0.05 to 15% called for in instant claim 31.
The total amount of cationic polymers and the total amount of cationic polymers falls within the range of 10:90 to 90:10 as called for in instant claim 32. Shiroya teaches the amount of cationic polymer can be 3.77 wt% which falls within 0.05 to 15 wt% called for in instant claim 29. (See Example 14).
Shiroya does not teach a method for styling keratin fibers by applying a composition to keratin fibers. Shiroya teaches methacrylate copolymers but does not teach isobornyl (meth)acrylate co-polymers. These deficiencies are made up with the teachings of Daubresse et al.
Daubresse et al. (Daubresse) teaches an aqueous composition comprising at least one dispersion of stabilized polymer particles in a non-aqueous medium and at least one hydrophobic film-forming polymer. Daubresse also teaches a cosmetic treatment process in which a keratinous fibers such as hair are contacted with this composition. (See Abstract).
Daubresse teaches isobornyl methacrylate polymers as called for in instant claims 26 and 36. (See Daubresse claim 8). Daubresse expressly teaches that its composition comprises a stabilizing agent which can particularly preferably be an isobornyl methacrylate. (See page 15).
Daubresse teaches a method of styling the hair that comprises contacting the hair with the cosmetic composition as called for in instant claim 34. (See page 67, first paragraph, lines 1-6). Daubresse shows in the Examples that the hair treated with the composition showed good hold of the style and were not sticky to the touch. (See page 68, lines 5-17).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Shiroya cosmetic compositions to use isobornyl methacrylate to stabilize the dispersion of vinyl acetate, copolyvinylamine, and acrylic copolymers and apply the dispersion of to the hair to style it as taught by Daubresse in order to have a good hold for the style without being sticky to the touch as taught by Daubresse.
It is prima facie obvious to substitute one component for another, each of which is recognized by the art as equivalents of conventionally natural pigments that are known components for the same purpose. A person of ordinary skill in the art in light of this equivalency, would substitute isobornyl methacrylate for carboxymethyl cellulose as a polymer stabilizer in the Shiroya particles dispersion composition. An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
A person of ordinary skill in the art at the earliest effective filing date would have had a reasonable expectation of success in light of Shiroya’s teaching that many different types of polymers can be used in various combinations in its dispersions.
Response to Remarks
Applicants’ arguments of March 2, 2026 have been fully considered and are found to be unpersuasive as described further below.
Applicants note the amendments to the claims, but do not state where in the specification and originally filed claims support for these amendments can be found. Support appears to be found in [302] of the specification and originally filed claims 20 and 28.
Section 102 Rejections
Applicants note the amendments to the claims and assert that the amendments to the claims overcome the anticipation rejection.
Response
Applicants’ arguments are found to be persuasive in light of the amendments to the claims and the rejection has been withdrawn above.
Section 103 Rejections
Applicants assert that Shiroya and Daubresse do not teach or suggest the claimed composition with separate cationic (b) and anionic (v) polymers. Applicants assert that the polymer particles in Shiroya are polyion complex gel particles formed from these components, not acrylic polymers, acrylic copolymers, vinyl polymers or vinyl copolymers as recited in claim 19. Applicants assert that polylysine is not a cationic polymer that is now recited in amended claim 19. Applicants also assert that the sodium styrene/malic acid copolymer that Shiroya teaches is not among the specific anionic polymers recited by amended claim 19.
Applicants argue that there is no motivation or reasonable expectation of success in the proposed combination of Shiroya and Daubresse. Shiroya’s polyion complex gel particle system operates on fundamentally different principles than the stabilized polymer particle dispersions of Daubresse. Shiroya’s system relies on electrostatic interactions between polycations and polyanions to form particles, while Daubresse’s system uses a stabilizer polymer of stabilize polymer particles at the surface. A person of ordinary skill in the art would not be motivated to modify Shiroya’s aqueous cosmetic compositions to be add Daubresse’s isobornyl (meth)acrylate to such cosmetic compositions to arrive at the claimed compositions.
Response
Applicants’ arguments are not found to be persuasive because Applicants’ arguments fail to recognize that Shiroya teaches that its dispersion can comprise vinyl acetate which is a vinyl copolymer as called for in claims 19(a) and 34(a), copolyvinylamine which is a cationic polymer as called for in claims 19(b) and 34(b), and anionic polymers can also be acrylic copolymers as called for in instant claims 19(c) and 34(c). (See page 16, lines 20-36). Shiroya’s dispersion can also have a polymer stabilizer. While these polymers are not found in a single embodiment so as to warrant an anticipation, they are taught in Shiroya and these polymers are taught to be suitable for the particles in Shiroya as required by the claims as they have been amended, as described in the obviousness rejections above. Shiroya expressly teaches that many different types of polymers can be used in various combinations in its dispersions
Applicants’ arguments are not found to be persuasive because Applicants’ claims do not require that the dispersion be in any particular system or any particular form. All that is required in claim 19 is that the composition have a dispersion of particles in a non-aqueous medium of a polymer of 19(a), 19(b) and 19(c) and this requirement is met by Shiroya. It is unpersuasive for Applicants to argue that a person of ordinary skill in the art would not have been motivated to combine Shiroya’s particle dispersion system with Daubresse’s particle dispersion system when both are particle dispersions. Applicant’s arguments are also unpersuasive because Shiroya teaches a particle dispersion with a stabilizer (carboxymethylcellulose) and Daubresse teaches a particle dispersion with a stabilizer (isobornyl methacrylate).
It is prima facie obvious to substitute one component for another, each of which is recognized by the art as equivalents that are known components for the same purpose. A person of ordinary skill in the art in light of this equivalency, would substitute isobornyl methacrylate for carboxymethyl cellulose as a polymer stabilizer in the Shiroya particles dispersion composition. An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
As described above, it would have been prima facie obvious for one of ordinary skill in the art as of the earliest effective filing date making the Shiroya cosmetic compositions to use an isobornyl methacrylate stabilizer in the polymer and to apply the composition to the hair to style it as taught by Daubresse in order to have a good hold for the style without being sticky to the touch as taught by Daubresse.
A person of ordinary skill in the art at the earliest effective filing date would have had a reasonable expectation of success in light of Shiroya’s teaching that many different types of polymers can be used in various combinations in its dispersions. (See Abstract).
Double Patenting Rejections
Applicants note the filing of the terminal disclaimer with respect to the obviousness-type double patenting rejections and request their withdrawal.
Response
In light of the filing and approval of the terminal disclaimers the provisional rejection of claims 19-38 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 16-35 of U.S. Patent Appn. No. 17/787092 in view of Shiroya et al. WO 2018/230673 (12/10/2018) (7/27/2022 IDS) in view of Daubresse et al. FR 3075628 (6/28/2019)(7/27/2022 IDS) is withdrawn.
Conclusion
Claims 19, 21-27, 29 and 31-34 are rejected.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/SARAH ALAWADI/ Primary Examiner, Art Unit 1619