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
A second 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27, 2025 has been entered.
Claims 1-13, 15-18 and 21-23 are pending.
Claims 14, 19 and 20 are cancelled.
Claims 1, 2, 4-6, 8, 9, 11-13, 17, 18 and 22* are currently amended.
Claims 23 is new.
Claim 18 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-13, 15-17 and 21-23 as filed on February 27, 2025 are under consideration.
37 CFR 1.121 – Manner of Making Amendments
With regard to claim 22*, as per MPEP § 714 II C (A) all claims currently amended must be presented with appropriate status identifiers to indicate that changes have been made relative to the immediate prior version.
Withdrawn Objections / Rejections
In view of the amendment of the abstract, all previous objections to the specification are withdrawn.
In view of the amendment of the claims, some of the previous claim objections are withdrawn, some of the previous claim rejections under 35 USC 112(a) are withdrawn, some of the previous claim rejections under 35 USC 112(b) are withdrawn, and all previous claim rejections under 35 USC 102(a)(1) by Breuer are withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Specification
The disclosure is objected to because of the following informalities: in the first line of abstract “film former acrylate-based polymers” should presumably recite “film former comprising acrylate-based polymers” consistent with the second sentence of the abstract or “film former chosen from acrylate-based polymers” consistent with claim 1 or some variation thereof. Appropriate correction is required.
Claim Objections
Claims 4, 12 and 17 are objected to because of the following informalities:
Claim 4: “wherein the composition comprises the one or more polysaccharide gum (b) chosen from” properly recites “wherein the one or more polysaccharide gums (b) is chosen from” consistent with the antecedent.
Claim 12: “wherein the composition comprises the one or more polyol (g) chosen from” properly recites “the one or more polyol (g) is chosen from” consistent with the antecedent.
Claim 12: the glycol clause should recite, for example, “when the glycols are present, the total amount of the glycols ranges from” or “when one or more glycols are present, the total amount of the one or more glycols ranges from” or some variation thereof.
Claim 17 (g): “relative to the total weight of the composition” should be deleted.
Appropriate correction is required. In view of the numerous informalities, Applicant’s cooperation is requested in correcting any errors of which Applicant may become aware in the claims.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 22 recites an aqueous composition comprising a means for styling hair. Applicant at page 7 of the Remarks as filed July 31, 2024 states the “means for styling hair” is the combination of (a), (b) and (c) citing to paragraphs [0006] and [0025]-[0026] and further citing to paragraphs [0027]-[0032], [0033]-[0036] and [0037]-[0039] of the as-filed specification. It is not seen where any the captioned passages disclose the combination of (a), (b) and (c) to perform the entire claimed function of styling hair. To the contrary, the instant specification at paragraph [0090] defines the term “styling” as including “shaping” and “straightening” and it is clear that both “shaping” and “straightening” require the use of tools such as blow dryers or/and flat irons (e.g., paragraph [0003]) or otherwise require methods requiring combing through dried hair with fingers or/and a tool such as a comb (e.g., paragraphs [0016], [0019], [0070]-[0071], [0100]-[0116]). And it is clear both “shaping” and “straightening” is relative to initially curly or wavy hair (e.g., paragraphs [0001], [0007], [0070]-[0071], [0091], [0104], [0113]).
Because the is no disclosure of a component of an aqueous composition which performs the entire claimed function of styling hair, claim 22 recites new matter. See MPEP 2163.
Because there is no clear link between any disclosed embodiment of composition with a means for styling hair, there is insufficient written description support to determine not only the structure linked to the function but also the equivalents falling within the scope of the means. See MPEP 2181.
Response to Arguments: Claim Rejections - 35 USC § 112(a)
Applicant’s arguments at page 10 of the Remarks have been fully considered but they are not persuasive because it is not seen how the newly claimed intended use of claim 22 addresses the basis of the 112(a) rejections with respect to the limitation of a “means for styling hair”. Therefore, the rejections are properly maintained and made again.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12 and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 12 as currently amended recites the one or more glycols. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites an aqueous composition comprising a means for styling hair. The claim limitation “means for styling hair” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. To the contrary, the instant specification at paragraph [0090] defines the term “styling” as including “shaping” and “straightening” and it is clear that both “shaping” and “straightening” require the use of tools such as blow dryers or/and flat irons (e.g., paragraph [0003]) or otherwise require methods requiring combing through dried hair with fingers or/and a tool such as a comb (e.g., paragraphs [0016], [0019], [0070]-[0071], [0100]-[0116]). And it is clear both “shaping” and “straightening” is relative to initially curly or wavy hair (e.g., paragraphs [0001], [0007], [0070]-[0071], [0091], [0104], [0113]). There is no disclosure of a component of an aqueous composition which performs the entire claimed function. Applicant’s Remarks as filed July 31, 2024 at page 7 state the “means for styling hair” is the combination of (a), (b) and (c) citing to paragraphs [0006] and [0025]-[0026] and further citing to paragraphs [0027]-[0032], [0033]-[0036] and [0037]-[0039]. It is not seen where any the captioned passages disclose the combination of (a), (b) and (c) to perform the entire claimed function of styling hair. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For purposes of applying prior art, the broadest reasonable interpretation is applied wherein any aqueous composition is deemed suitable e.g. as functionally equivalent.
With regard to the “means” of claim 22, Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Response to Arguments: Claim Rejections - 35 USC § 112(b)
Applicant’s arguments at page 10 of the Remarks have been fully considered but they are not persuasive because it is not seen how the newly claimed intended use of claim 22 addresses the basis of the 112(b) rejections with respect to the limitation of a “means for styling hair”. Therefore, the rejections are properly maintained and made again.
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.
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 23 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 23 appears to omit the pH and the functional language of claim 1 regarding the sufficiency of styling hair without the use of heat.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim 22 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Contreras (WO 2019/119079, published June 27, 2019, of record).
Regarding claim 22
Contreras teaches aqueous hair gel compositions comprising a specific blend (means for styling hair) of at least three polymers and a mixture of at least two polyols; the compositions reactivate curls (styling) (title; abstract; claims; page 17, “Cosmetically acceptable solvent”). Contreras further teaches a method comprising contacting hair with the composition (without heat) (page 7, lines 28-30; Example 2).
Claim 22 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murray et al. (US 2016/0287496, published October 6, 2016).
Regarding claim 22
Murray teaches a method for styling hair comprising applying a composition comprising citric acid or aconitic acid (means for styling hair) and having a pH of from 1 to 3 (aqueous) (title; abstract; claims). The method is conducted at room temperature (without the use of heat) (claim 4; paragraph [0029]; Examples).
Claim 22 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bohen et al. (US 2015/0342867, published December 3, 2015).
Regarding claim 22
Bohen teaches a method for straightening (styling) hair comprising applying an aqueous hair straightening composition (means for styling hair) (title; abstract; claims). Straightening is achieved without the application of heat (claim 2; paragraphs [0001], [0110]).
The above teachings therefore anticipate the claim.
Response to Arguments: Claim Rejections - 35 USC § 102
Applicant’s arguments at pages 10-11 of the Remarks have been fully considered but they are not persuasive because it is not seen how the newly claimed intended use of claim 22 addresses the basis of the rejection under 102(a)(1) by Contreras with respect to the limitation of a “means for styling hair” because a means for styling hair has been broadly and reasonably interpreted as aqueous composition is deemed suitable as set forth in the rejections under 112(b). Therefore, the rejection over Contreras is properly maintained and made again and new grounds of rejection are applied infra over prior art which expressly discloses styling sans heat.
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.
Claims 1-13, 15-17 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (US 2008/0181858, published July 31, 2008, of record) as evidenced by Knappe et al. (WO 2009/156293, as evidenced by the Google translation, of record) and as evidenced by Cao et al. (GB 2,380,938, of record).
Davis teaches sunscreen compositions comprising one or more sunscreen agents, one or more film-forming polymers (synthetic or naturally derived), and heat treated xanthan gum (e.g., xanthan gum having the INCI designation ‘dehydroxanthan gum’) (title; abstract; claims; Examples; paragraph [0011]), as required by instant claims 4, 15. The heat treated xanthan gum is present from about 0.05 to 20 wt% or about 0.05 to 5 wt% (claim 4; paragraph [0038]; Examples), as required by instant claims 5, 23. 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). "[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). See MPEP 2144.05.
The one or more sunscreen agents is chosen from inter alia guars or/and native and modified starches; the one or more sunscreen agents are present from about 0.25 to 30 wt% (claims 1, 2, 10, 11; Examples), as required by instant claims 6, 13, 23. Sources of starch can be inter alia corn or/and potato (paragraph [0043]).
The one or more film-forming polymers is at least an acrylates copolymer such as styrene / acrylates copolymer or a polyurethane copolymer; the one or more film-forming polymer is present from about 0.05 to 10 wt% (claims 1, 3, 7, 8; paragraph [0041]), as required by instant claims 2, 3, 23. It is understood that the polymers may be in their water dispersible (latex) state (paragraph [0041]). Additional water dispersible (latex) film forming polymers include inter alia silicone acrylate (paragraph [0041]), as required by instant claim 8.
The compositions include a water phase (paragraph [0065]), as required by instant claim 23. Regarding the amount of water as required by instant claims 7, 21, although Davis does not delimit the amount of water, because Davis does delimit the amount of the one or more sunscreen agents to 0.25 to 30 wt%, the amount of the one or more film-forming polymers to 0.05 to 10 wt%, and the amount of the heat treated xanthan gum to 0.05 to 20 wt%, therefore, the water may be present in an amount up to about 99.5 wt% (e.g., ~=100 – 0.25 – 0.05 – 0.05).
The exemplary compositions have a pH of 7 (e.g., paragraph [0072], Table of Example 1) or 4.5 (e.g., paragraph [0089], Table of Example 5).
The compositions may further comprise one or more adjuvants inclusive of conditioning agents inclusive of cyclomethicone or/and dimethicone (paragraphs [0062]-[0063]), as required by instant claim 10. Formula 1 comprises 3 wt% cyclopentasiloxane (cyclomethicone) (paragraph [0072], Table of Example 1), as required by instant claim 9.
The compositions may further comprise one or more adjuvants inclusive of conditioning agents inclusive of propylene glycol or/and glycerin (polyols) (paragraphs [0062]-[0063]). Formula 1 comprises 3 wt% glycerin as a humectant (paragraph [0072], Table of Example 1) and Formula 11 comprises 3 wt% propylene glycol as a humectant (paragraph [0089], Table of Example 5), as required by instant claims 11, 12.
Davis further teaches the heat treated xanthan gum increase viscosity (paragraphs [0026]-[0027]), the film-forming polymers do not give a clear solution (paragraph [0040]) and the composition may be an oil-in-water emulsion (cream) (claim 9; paragraph [0019]), as required by instant claim 16.
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). 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).
In view Davis, as a whole, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare aqueous compositions comprising about 0.05 to 10 wt% of one or more film-forming polymers comprising at least a dispersible acrylates copolymer such as styrene / acrylates copolymer (a), about 0.05 to 20 wt% of heat treated xanthan gum having the INCI designation ‘dehydroxanthan gum’ (b) and about 0.25 to 30 wt% of one or more sunscreen agents inclusive of native and modified starches sourced from potato (c) because David contemplates such mixtures. With regard to the numerical ranges, the courts have held that quantities falling entirely within or overlapping the ranges of the prior art establishes prima facie obvious and the courts have held it is not inventive to discover optimum or workable ranges by routine experimentation. See MPEP 2144.05.
With regard to the pH, it would have been obvious to modify the pH of these compositions to about 7 because Davis exemplifies such (e.g., paragraph [0072], Table of Example 1) and it would have been obvious to lower the pH to about 4.5 (e.g., paragraph [0089], Table of Example 5) because Davis exemplifies such.
With regard to the newly claimed sufficiency of (a), (b) and (c) for styling the hair without the use of heat as required by claims 1, 17 and 22, such recitations of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02. Additionally or/and alternatively, with regard to the newly claimed sufficiency of (a), (b) and (c) for styling the hair without the use of heat as required by claims 1 and 17 and to the newly claimed “means” as required by claim 22, because Davis renders obvious compositions comprising mixtures of (a), (b) and (c) in amounts as required by the dependent claims, the compositions of Davis are sufficient for Applicant’s intended use(s) because a chemical composition and its properties are inseparable. In further support of this presumption, Knappe evidences aqueous compositions comprising xanthan gum which is optionally heat treated or dehydroxanthan gum (b) and at least one additional polysaccharide selected from starch and derivatives thereof obtained from potatoes (c) is sufficient for shaping keratin fibers without the use of heat (e.g., title; abstract; claims; page 3, 6th and last full paragraphs from end of page) and Cao evidences aqueous compositions comprising xanthan gum (b) alone provides hair fixative properties and exemplifies compositions further comprising acrylates (a) (e.g., title; abstract; claims; Examples, such as Example 1; page 2, lines 9-10).
Regarding claims 7, 17 and 21, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the balance of the compositions of Davis may be aqueous and therefore Davis renders obvious compositions comprising water in an amount up to about 99.5 wt% (e.g., ~=100 – 0.25 – 0.05 – 0.05). See MPEP 2144.05 as referenced infra for information regarding obviousness of numerical ranges.
Regarding claims 8 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include additional film-forming polymers inclusive of silicone acrylate in amounts of 0.05 to 10 wt% because Davis contemplates such mixtures. See MPEP 2144.05 for information regarding obviousness of numerical ranges.
Regarding claims 9, 10 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include one or more adjuvants inclusive of conditioning agents inclusive of dimethicone in the compositions because Davis directs the inclusion of such and it would have been obvious to include such conditioning agents in the compositions in an amount of 3 wt% because Davis exemplifies such for the conditioning agent cyclopentasiloxane. See MPEP 2144.05 for information regarding obviousness of numerical ranges.
Regarding claims 11, 12 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include one or more adjuvants inclusive of conditioning agents inclusive of propylene glycol in the compositions because Davis directs the inclusion of such and it would have been obvious to include such conditioning agents in the compositions in an amount of 3 wt% because Davis exemplifies such. See MPEP 2144.05 for information regarding obviousness of numerical ranges.
Regarding claims 13 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include additional sunscreen agents inclusive of gaurs in amounts of 0.05 to 20 wt% because Davis contemplates such mixtures. See MPEP 2144.05 for information regarding obviousness of numerical ranges.
Regarding claim 15, the compositions of David require neither polyphenols nor chemical relaxing agents.
Regarding claim 16, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the compositions of Davis as an oil-in-water emulsion because Davis contemplates such and it would have been obvious that the presence of xanthan gum results in a gel because Davis teaches xanthan gum increases the viscosity and it would have been obvious that the presence of film-forming polymers results in an opaque gel because Davis teaches the film-forming polymers do not give a clear solution. Additionally or/and alternatively, because Davis renders obvious compositions comprising the overlapping amounts of the same ingredients as instantly claimed, the compositions of Davis must also be a gel-cream form.
Claims 1-13, 15-17 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (US 2008/0181858, published July 31, 2008, of record) as evidenced by Knappe et al. (WO 2009/156293, as evidenced by the Google translation, of record) and as evidenced by Cao et al. (GB 2,380,938, of record) as applied to claims 1-13, 15-17 and 21-23 above, and further in view of Huerta et al. (US 2004/0247543, published December 9, 2004, of record).
Davis is applied herewith under a different interpretation to meet the water limitation of claims 7, 17 and 21 in the interest of compact prosecution
The teachings of Davis have been described supra.
Davis does not specifically teach at least about 70 wt% water as required by claims 7 and 17.
Davis does not specifically teach at least about 80 wt% water as required by claim 21.
These deficiencies are made up for in the teachings of Huerta.
Huerta teaches sunscreen compositions which are in the form of an oil-in-water emulsion (title; abstract; claims). Water is present in an amount of about 45 to 75 wt% (broadly and reasonably construed as about 80 wt% because the qualifier about permits some tolerance) (claims 14, 15). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Davis which may be in the form of an oil-in-water emulsion to comprise water in an amount of about 44 to 75 wt% as taught by Huerta because this amount of water is suitable for preparing an oil-in-water emulsion. There would be a reasonable expectation of success because Davis does not delimit the amount of water in the compositions. See MPEP 2144.05 for information regarding obviousness of numerical ranges.
Claims 1-13, 15-17 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (US 2008/0181858, published July 31, 2008, of record) as evidenced by Knappe et al. (WO 2009/156293, as evidenced by the Google translation, of record) and as evidenced by Cao et al. (GB 2,380,938, of record) as applied to claims 1-13, 15-17 and 21-23 above, and further in view of Nagare et al. (US 2012/0183480, published July 19, 2012, of record).
Davis is applied herewith under a different interpretation to meet the water limitation of claims 7, 17 and 21 in the interest of compact prosecution
The teachings of Davis have been described supra.
Davis does not specifically teach at least about 70 wt% water as required by claims 7 and 17.
Davis does not specifically teach at least about 80 wt% water as required by claim 21.
These deficiencies are made up for in the teachings of Nagare.
Nagare teaches sunscreen compositions which are in the form of an oil-in-water emulsion (title; abstract; claims). Water is present in an amount of about 50 to 90 wt% (paragraph [0057]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Davis which may be in the form of an oil-in-water emulsion to comprise water in an amount of about 50 to 90 wt% as taught by Nagare because this amount of water is suitable for preparing an oil-in-water emulsion. There would be a reasonable expectation of success because Davis does not delimit the amount of water in the compositions. See MPEP 2144.05 for information regarding obviousness of numerical ranges.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments at pages 11-12 of the Remarks have been fully considered but they are not persuasive.
Applicant’s argument that Davis does not teach the newly claimed intended use of styling hair without application of heat is noted but is unpersuasive because a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02.
Therefore, the rejections over Davis are properly maintained in modified form as necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Knappe et al. (US 2019/0183773) teaches a cosmetic agent containing potato starch for the temporary shaping of keratin fibers; the agent may further comprise firming polymers (title; abstract; claims; paragraphs [0033]-[0042]).
Dupuis (US 6,630,133) teaches cosmetic compositions comprising at least one silicone / acrylate copolymer and at least one non-cellulose thickening agent inclusive of starch, gums and (meth)acrylate (co)polymers (title; abstract; claims).
Clausen et al. (US 5,879,669) teaches an aqueous hair fixing composition comprising 0.1 to 30 wt% of a thickener inclusive of polysaccharides inclusive of starch and gums and 0.1 to 25 wt% of a film-forming polymer which is at least partially precipitated (latex); the pH of the composition is 3.5 to 8.5 (title; abstract; claims; column 3, lines 37-43).
Mathonneau (FR 2,889,973 A1, as evidenced by the Google translation) teaches a composition for the treatment of keratinous fibers comprising 0.1 to 50 wt% at least one latex selected from polyurethanes or (meth)acrylates and 0.01 to 5 wt% nonionic dispersing polymer inclusive of polysaccharides inclusive of starches and gums (title; abstract; claims).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600