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 .
Status of the Claims
Claims 1, 3-10, and 12-14 are pending.
Claims 13 and 14 are withdrawn from consideration as directed to non-elected inventions.
Claims 1, 3-10, and 12 are presented for examination and rejected as set forth below.
Claim Interpretation
Applicants claims are directed to compositions combining a “component (A),” and a “component (B)” as any of among a Markush-type listing of alternatives in defined concentrations. Dependent Claims 3 and 5-10 place further limitations on the identity of the “component (A),” which applicants species election indicates are addressed by compositions containing the ingredient “POLYSILICONE-29” recited explicitly in Claim 10. Claim 4 requires the inclusion of a C1-4 aliphatic alcohol. Claim 12 specifies that the composition contain 13% or less water.
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, 3-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Herrlein (EP3281623) in view of Holmes (U.S. PGPub. 2018/0185264).
Herrlein describes cosmetic compositions for the coloring of keratinous fibers containing a film-forming aminosilicone polymer. (Abs.). Herrlein indicates that the polysilicone-29 of the instant claims is just such a film-forming aminosilicone polymer, incorporated into these cosmetic compositions in concentrations of between 1-20%, a range overlapping and therefore rendering obvious that of the instant claims. [0067-68], See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Herrlein indicates that these compositions are to also contain a cosmetically acceptable carrier. [0038]. By indicating that he carrier may be oily, with nothing of Herrlein requiring the inclusion of water, a completely organic carrier falls within the Herrlein disclosure, addressing the limitations of Claim 12 by implying an anhydrous carrier may be used. Even when water is employed, water concentrations of as low as 0.1%, 1%, and 10% fall within and therefore render obvious the limitations of Claim 12. [0040]. Each of ethanol, isopropanol, and propanol are described by Herrlein as suitably included in these compositions. [0039]. Herrlein indicates that a variety of additional ingredients, including for examples silicone conditioning agents, may be included in these compositions in amounts between 0-20% by weight of the composition.
But for the specification of any of the newly narrowed component “B” of the present claims, the specific combination of features claimed is disclosed within the broad generic ranges taught by the reference but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). Where, as here, the reference does not provide any motivation to select this specific combination of a cosmetic composition for application to the hair combining conditioners, polysilicone-29 in the concentrations claimed, combined with water or ethanol in the amounts recited by the present claims, anticipation cannot be found.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of a cosmetic composition for application to the hair combining conditioners and polysilicone-29 in the concentrations claimed, combined with water or ethanol in the amounts recited by the present claims from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Despite this breadth, Herrlein does not specify that any of the newly narrowed “component B” compound may be included in the hair treatment compositions.
This is cured by the teachings of Holmes, also directed to compositions for the treatment of hair, which indicates that the polydimethylsiloxane applicants recite as a “component (B)” was, at the time the instant application was filed, known to be used as a hair conditioning component of cosmetics for application to the hair. [0018].
It therefore would have ben prima facie obvious to have included polydimethylsiloxane in the compositions of Herrlein, as Herrlein explicitly includes hair conditioning agents, and Holmes establishes that the dimethylpolysiloxane of the instant claims was in fact just such a cosmetic component.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
At least Claims 1 and 3-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 10, and 15 of copending Application No. 18/540,213 (reference application), in view of Holmes as discussed in greater detail above. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘213 application incorporate hair compositions combining polysilicone-29 with water, benzyl alcohol, and phenoxyethanol in concentrations overlapping those of the present claims, and Holmes establishes that the polydimethylsiloxane of newly amended Claim 1 is commonly employed in hair care compositions as a conditioning agent, making its inclusion prima facie obvious as a means of improving conditioning properties of such compositions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 21 August 2025 have been fully considered but they are not persuasive.
Applicants arguments concerning the identity of “polysilicone-29” as a proprietary cosmetic ingredient name, and NOT a trademark are, in view of the evidence provided, persuasive. The rejection of Claim 10 as indefinite has been WITHDRAWN.
Applicants arguments that the teachings of Herrlein fail to address the scope of the claims as amended is moot owing to the examiner’s reliance, in view of these amendments, on the teachings of Holmes establishing a rationale for including a member of the newly narrowed Markush group of “Component (B)” newly added to Claim 1.
Applicants arguments concerning the purported “advantages” of the compositions of the present claims are unpersuasive, as the art establishes the requisite rationale for combining the elements claimed in the manner claimed. It has long been held that the reason or motivation to modify a prior art 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). Nothing of the teachings of Herrlein criticizes, discredits, or otherwise discourages the skilled artisan from arriving at the solution claimed, as quite literally each element recited by the claims is taught or suggested by the Herrlein reference as an advantageously incorporated composition component. In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Applicants argue a number of properties the composition assertedly possesses, which are of course not elements of the invention claimed, nor is appropriate comparative evidence provided tending to establish these properties somehow represent secondary indicia of nonobviousness. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations on which appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms.); In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993); In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(indicating that once a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case); In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)( Evidence of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness.).
.
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 SEAN M BASQUILL whose telephone number is (571)270-5862. The examiner can normally be reached Monday through Thursday, 5:30 AM to 4 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN M BASQUILL/Primary Examiner, Art Unit 1614