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 claim amendments and arguments in the response filed 12 December 2025 are acknowledged.
Claims 1, 2, 6-8, 10, 11,13 & 15-22 are pending.
Claim 1 is amended.
Claims 3-5, 9, 12 & 14 are cancelled.
Claims 18-20 are withdrawn.
Claims 1, 2, 6-8, 10, 11, 13, 15-17, 21 & 22 are under consideration.
Examination on the merits is to the extent of the following species:
Composition comprises:
A1) a rheology modifier: present -and-
A2) polar activator-present
-and-
B) Aerosol container-present.
This action contains new grounds of rejection not necessitated by amendment, accordingly this action is NON-FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10 November 2025 has been fully considered by the examiner. A signed and initialed copy of each IDS is included with the instant Office Action.
Withdrawn Rejections
The rejection of claim 1 under 35 USC 112(b) for insufficient antecedent basis is withdrawn due to amendments to the claim.
The rejection of claim 14 under 35 USC 112(d) and 35 USC 103(a) is withdrawn due to cancellation of the claim.
New & Maintained Objections/Rejections
Claim Objections
Claim 1 objected to because of the following informalities: claim 1 recites “the product is formulated” in line 6. There is only one product recited by the claim and it is a “dry shampoo product”. For claim consistency, “the product” should be amended to “the dry shampoo product”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 10 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 depends for cancelled claim 9. As such the dependency of claim 10 is unclear.
Applicant may wish to consider whether a claim amendment to correct the dependency of claim 9 to depend from claim 1 would obviate the rejection.
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, 2, 6-8, 11, 13, 16, 17, 21 & 22 are rejected under 35 U.S.C. 103 as being unpatentable over Carballada [(US 2017/0216172; Published 08/03/2017); as evidenced by Disiloxane (Published: 2024; previously cited), Diversified CPC (Published: 09/02/2014; previously cited), and Lima (Published: 09/18/2018; previously cited)].
* The examiner notes that “volatile organic compounds” (VOC) is not defined by the specification.
**Page 5 of the specification states that all numerical amounts are understood to be modified by the word “about” but does not state a numerical limit or definition for “about”.
With regard to claims 1a) & 16 b) i) 1), Carballada in Table 7 teaches in Examples 2-6, 8 & 9 aerosol dry conditioners comprising hexamethyldisiloxane (pg. 10 & 11). With regard to claim 16 b) i) 1), as evidenced by Disiloxane, disiloxane “is a colorless liquid silicone polymer hexamethyldisiloxane”, is synonymous with hexamethyldisiloxane, and has the viscosity of 0.65 centistoke (Disiloxane-pg. 1). With regard to claims 1a) & 16 b) i) 1), more broadly, Carballada in claim 16 teaches that the hair care composition comprises from about 0.01% to about 50% of a silicone which may be hexamethyl-disiloxane. With regard to claims 1 b), 6, 7, 16 b) i) 2), & 22, Carballada in Table 7 teaches in Examples 1 & 7 teaches inclusion of Dry Flo Tapioca and more broadly, teaches inclusion of the starches including tapioca starch in an amount of about 0.1% to about 10 % ([0042]-[0045], pg. 10 & 11). With regard to claims 1b & 16 b) i) 2), since the silicone/hexamethyldisiloxane is taught in amounts of up to 50% and the starch is taught in an amount which is maximally 10%, the starch is reasonably dispersed in the hexamethyldisiloxane. With regard to claims 1c) 21 & 16, b) ii), Carballada teaches the propellant may be dimethyl ether and teaches use of DME in the Table 7 Example 8 aerosol dry conditioner in an amount of 30% ([0039] & pg. 10 & 11). With regard to claim 16, b) ii), as evidenced by Diversified CPC, the vapor pressure of dimethyl ether at 70 °C is about 60 psig (pg. 6; i.e. the aerosol hair care product is pressurized to greater than about 50 psig). With regard to claims 1 & 16, Carballada in Table 7 teaches in Examples 2-6, 8 & 9 teaches the composition is formulated without water (pg. 10 & 11). With regard to claims 1 & 16, Carballada in Table 7 teaches in Examples 2-6, 8 & 9 teaches inclusion of 25-50% alcohol with the nonaqueous volatile solvent being methanol, propanol, isopropanol, and butanol and present in an amount from about 30% to about 50% ([[0040] & [0041]; pg. 10& 11). As such, with regard to claims 1 & 16, Carballada teaches embodiments which are free from ethanol when the selected alcohols for the non-aqueous volatile solvent is methanol, propanol, isopropanol or butanol ([0040] & [0041]). With regard to claims 1, 2, 11 & 16, Carballada in Table 7 teaches in Examples 2-4 the alcohol, which may be methanol, is present in an amount of 25% (i.e. 50% or less of volatile organic compounds; methanol is a polar activator per the instant specification at pg. 8; pg. 10 & 11; [0040] & [0041]). With regard to claim 8, Carballada in the Table 7 examples teaches the propellant is free of 1,1, difluoroethane (pg. 10 & 11). With regard to claim 13, Carballada teaches an embodiment in which the composition comprises a rheology modifier which may be laponite, montmorillonite, smectite and hectorite ([0071]-[0073]). With regard to claim 16 a), Carballada teaches an order for adding the reagents and propellants to a container and that the aerosol dry conditioner system was applied to hair as a leave on treatment as such the dry shampoo is necessarily in an aerosol container that is pressurizable container and actuator (Table 7-pg. 11; [0113]-[0116]).
While there is not a single example comprising each of the claimed components, the dry shampoo product constituents (i.e. species of oil absorbing starch, hydrocarbon propellant, rheology modifier and polar activator) are included among short lists of reagents. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to claim 17 recitation that the dry shampoo composition feels dry within about 10 seconds of being dispensed from the pressurizable container, the dry aerosol conditioner taught by Carballada necessarily feels dry within about 10 seconds of being dispensed because it comprises the recited reagents in the recited amounts and "[p]roducts of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is further supported by the evidentiary reference by Lima (previously cited), which states “of all silicone fluids, hexamethyldisiloxane [i.e. disiloxane] has the fastest evaporation rate…” (col. 2, pg. 693).
With regard to the recited amounts of hexamethyldisiloxane, volatile organic compounds, oil absorbing starch, and the pressurization amount of the aerosolized hair care product, the teachings Carballada suggest these parameters with values that overlap with the recited 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).
Claims 1, 2, 6-8, 10, 11, 13, 16, 17, 21 & 22 are rejected under 35 U.S.C. 103 as being unpatentable over Liu [(CN 113116752; Published: 2021-07-16; previously cited); as evidenced by Disiloxane (Published: 2024; previously cited) and Lima (Published: 09/18/2018; previously cited)], in view of Streuli (WO 2020/167734; Published 08/20/2020; previously cited), Diversified CPC (Published: 09/02/2014; previously cited) and Transitioning (Published: 12/2016; previously cited) and Hammer (WO 2011/056625; Published: 05/12/2011; previously cited).
*All references refer to the Examiner supplied English language translation unless the rejection specifies it is an excerpt from the original document.
** The examiner notes that “volatile organic compounds” (VOC) is not defined by the specification.
***Page 5 of the specification states that all numerical amounts are understood to be modified by the word “about” but does not state a numerical limit or definition for “about”.
With regard to claims 1 & 16, Liu teaches a water-free, ethanol-free shampoo spray (i.e. a dry shampoo; pg. 2). Liu in Table 5 teaches an embodiment of their invention is:
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(pg. 4/6 of the original document). With regard to claim 1 a), & 16 b) i) 1), as evidenced by Disiloxane, disiloxane “is a colorless liquid silicone polymer hexamethyldisiloxane”, is synonymous with hexamethyldisiloxane, and has the viscosity of 0.65 centistoke (Disiloxane-pg. 1). With regard to claims 1b), 6, 7, & 16 b) i) 2), Liu in Table 5 teaches the starch is rice starch and comprises 3.75 parts by weight of the composition which is 2.98 % of the composition (i.e. about 3%; pg. 4/6 of the original document). With regard to claims 1 b) & 16 b) i) 2), since the rice starch is present in an amount of 3.75 parts by weight and the disiloxane is present in an amount of 21.25 parts by weight, the rice starch is reasonably dispersed in the silicone (pg. 4/6 of the original document). With regard to claims 6 & 22, more broadly, Liu teaches the starch is cassava starch (i.e. tapioca starch). With regard to claim 8, Liu in Table 5 does not teach inclusion of 1,1-diflouroethane and does not contemplate its use (Table 5; pg. 4/6 of the original document; see document in its entirety). With regard to claim 10, Liu in Table 5 teaches a surfactant free composition, does not contemplate inclusion of surfactants, and teaches “the disiloxane does not only play the role of the performer conditioning agent, but also plays the role of starch dispersant” (Table 5- pg. 4/6 of the original document; pg. 7). With regard to claim 10, Liu does not teach inclusion of film formers (see document in its entirety). With regard to claim 16 a) & b), Lui’s composition is necessarily disposed in a pressurizable container with an actuator because it taught to be a spray and the composition was applied to hair (pg. 2; original document-abstract photo). With regard to claim 1 c) & 16 (ii), Liu teaches the composition comprises a propellant which comprises isobutane, butane and propane (i.e. hydrocarbon propellants; Table 5- pg. 4/6 of the original document). Liu does not teach rinsing the formulation from the hair (see document in its entirety). As such, it is reasonably a leave-on composition. Liu teaches the amount of disiloxane to be an optimizable parameter with when it is present in an amount which is “too much” the effect “is not fluffy and greasy” while if the amount is “too little” there is “uneven starch dispersion, agglomeration, blockage condition” (pg. 7).
Liu does not teach their dry shampoo comprises 55% or less of volatile organic compounds, that the amount of hexamethyldisiloxane is about 30% to about 50% or inclusion of rheology modifier.
With regard to claim 1 & claim 1 c), Streuli teaches a dry powder compositions which may dry powder shampoo comprise corn, aluminum starch octenylsuccinate, tapioca starch, and rice starch (title; [0007] & [0055]). With regard to claim 1, claim 1c), 2 & 21, Streuli in Example 6 teaches a non-ethanol containing aerosol spray which comprises 30.00% dimethyl ether (i.e. a dialkyl ether; [0080]). Streuli in Examples 3 & 4 also teaches anhydrous aerosol sprays ([0074]-[0076]). With regard to claim 1, claim 1c), 2, & 21 Streuli in Example 8 teaches a Leave-on Volumizing composition comprising 6.67 % dimethyl ether and 3.33% hydrocarbon A-46 (i.e. a blend of 15.2% propane/ 84.8% isobutane; a sum of 10% VOC hydrocarbon propellant). With regard to claims 1, 1c) & 21, More broadly, Streuli teaches the compositions of their invention optionally comprise from 0.1 wt. % to 90 wt.% “at least one compound selected from hydrocarbon, dimethyl ether…” (i.e. propellants; [0011]).
With regard to claims 1, 1c) & 2, Diversified CPC teaches “For directional sprays, such as personal products, it would be desirable to use a smaller quantity of propellant with a lower vapor pressure.” (pg. 23). With regard to claim 16, Diversified CPC teaches vapor pressure of dimethyl ether at 70 °C is about 60 psig (pg. 6).
With regard to claims 1, 1c, 2 & 21, Transitioning teaches dimethyl ether has a global warming potential (GWP) value of 1 while isobutane, propane and butane have a GWP between 3-4 (Table 2-pg. 3).
In the same field of invention of dry shampoos, Hammer teaches a dry shampoo which may be provided as an aerosol (title; abstract). With regard to claims 1a), 11 & 13, Hammer teaches the composition may comprise at least one clay material which may be bentonite and hectorite, at least one starch material which may be rice starch, and at least one carrier material which may be hexamethyldisiloxane (abstract; pg. 3, ll. 25-30; pg. 4, ll, 10-15; pg. 5, ll. 10-14). With regard to claim 1a), Hammer teaches carrier, i.e. hexamethyldisiloxane, “In embodiments where a dry shampoo composition is provided as an aerosol, the total percentage weight of the carrier material may be between about 0.1 % and about 50%, between about 0.1 % and about 40%, between about 1 % and about 35%, between about 5% and about 50%, between about 10% and about 40%, between about 15% and about 40%, of the total weight of the aerosol dry shampoo composition (a combination of the dry shampoo composition and the propellant)” (pg. 5, ll. 15-20). With regard to claim 11, Hammer teaches the clays of their invention function to “aid in oil absorption and/or act as a suspending agent” (pg. 3, ll. 20-25).
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 (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Liu’s dry shampoo by substituting the Liu’s isobutane/propane/butane propellant with 6.67-30% dimethyl ether propellant [yielding a composition comprising 50% or less of volatile organic compounds; yielding an aerosol pressurized product pressurized to greater than about 50 psig] as suggested by combined teachings of Streuli, Diversified CPC, and Transitioning because Liu’s blend of isobutane/propane/butane propellant has a higher GWP than DME as taught by Transitioning and DME is taught for use in dry powder shampoos which may be aerosol in an amount from 0.1-90% with amounts of 6.67-30% dimethyl ether exemplified by Streuli. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to meet the personal products arts stance of smaller quantities of propellant in products as “desirable” as taught by Diversified CPC while using amounts of dimethyl ether art recognized as suitable for ejection of the dry shampoo from the container as taught by Streuli.
At least rationale (G) may also be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the Liu’s dry shampoo composition by adding the clay materials, hectorite and bentonite, and adjusting the amount of the hexamethyldisiloxane carrier to be between about 15% and about 40% as suggested by Hammer because Liu and Hammer are both directed to dry shampoo compositions comprising a starch which may be rice starch and hexamethyldisiloxane 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 improve oil absorption and suspension properties of the formulation through inclusion of the clay materials, hectorite and bentonite, and improve the conditioning and carrier properties of the dry shampoo through use of hexamethyldisiloxane in quantities art recognized as suitable for use in dry shampoos.
With regard to amount of hexamethyldisiloxane, VOC’s and oil absorbing rice starch, the combined teachings of Liu, Streuli, Diversified CPC and Transitioning and Hammer teach these parameters with values which overlap or fall within 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).
With regard to claim 17 recitation that the dry shampoo composition feels dry within about 10 seconds of being dispensed from the pressurizable container, the dry shampoo suggested by the combined teachings of Liu, Streuli, Diversified CPC Transitioning and Hammer necessarily feels dry within about 10 seconds of being dispensed because it comprises the recited reagents in the recited amounts and "[p]roducts of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is further supported by the evidentiary reference by Lima (previously cited), which states “of all silicone fluids, hexamethyldisiloxane [i.e. disiloxane] has the fastest evaporation rate…” (col. 2, pg. 693).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Liu [as evidenced by Disiloxane and Lima], Streuli, Diversified CPC, Transitioning, and Hammer as applied to claims 1, 2, 6-8, 10, 11, 13, 16, 17, 21 & 22 above, further in view of Gawtrey (US 2016/0106634; Published 04/21/2016; previously cited) and Raiyne on Beauty (Published: 01/30/2022; previously cited).
*All references refer to the Examiner supplied English language translation unless the rejection specifies it is an excerpt from the original document.
**Page 5 of the specification states that all numerical amounts are understood to be modified by the word “about” but does not state a numerical limit or definition for “about”.
In brief, Liu, Streuli, Diversified CPC, Transitioning and Hammer teach an aerosol dry shampoo comprising an aerosol device which ejects it as a spray. Liu expresses concern for device blockage by teaching if the “starch is too much; it will cause…[a] blockage condition” (pg. 7).
Neither Liu [as evidenced by Disiloxane], Streuli, Diversified CPC, Transitioning nor Hammer teach the inclusion of propylene carbonate.
In the same field of invention, Gawtrey teaches an aerosol device comprising a container, propellants and one or more sebum absorbing powders which may be rice starch (i.e. a dry shampoo; abstract; [0056]). With regard to claim 11, Gawtrey teaches “[t]he composition contained in the aerosol device of the invention may also comprise propylene carbonate, preferably in an amount ranging from 0.05% to 5% by weight relative to the total weight of the composition, when the propellant(s) are present in the composition” [0147].
In a related field, with regard to claim 11, Raiyne on Beauty teaches a dry shampoo paste which comprises propylene carbonate as a solvent which can also decrease the viscosity of the product (title; pg. 2).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the composition suggested by the combined teachings of Liu, Streuli, Diversified CPC, Transitioning and Hammer by adding propylene carbonate to the dry shampoo composition as suggested by Gawtrey because Liu and Gawtrey are both directed to dry shampoos comprising rice starch in aerosol containers and when such compositions are in aerosol containers they may comprise propylene carbonate in this amount as taught by Gawtrey. 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 address Liu’s concern with clogging/blockages through inclusion of propylene carbonate, a solvent which reduces viscosity, that is art recognized as suitable for use aerosol dry shampoo shampoos as suggested by the combined teachings of Gawtrey and Raiyne on Beauty.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Liu [as evidenced by Disiloxane], Streuli, Diversified CPC, Transitioning and Hammer as applied to claims 1, 2, 6-8, 10, 11, 13, 16, 17, 21 & 22 above, and further in view of Gawtrey (US 2016/0106634; Published 04/21/2016; previously cited) and Raiyne on Beauty (Published: 01/30/2022; previously cited).
*All references refer to the Examiner supplied English language translation unless the rejection specifies it is an excerpt from the original document.
**Page 5 of the specification states that all numerical amounts are understood to be modified by the word “about” but does not state a numerical limit or definition for “about”.
In brief, the combined teachings of Liu, Streuli, Diversified CPC, Transitioning and Hammer teach an aerosol dry shampoo comprising an aerosol device which ejects it as a spray. Streuli in their examples teaches cans as the aerosol device. Liu expresses concern for device blockage by teaching if the “starch is too much; it will cause…[a] blockage condition” (pg. 7). With regard claims 11, 13, & 15, Hammer teaches “In embodiments where a dry shampoo composition is provided as an aerosol, the total percentage weight of the clay material [which may be bentonite and/or hectorite] may be between about 1 % and about 10%, between about 1 % and about 8%, between about 1 % and about 5%, between about 2% and about 6%, between about 3% and about 5%, between about 1 % and about 4%, between about 2% and about 4%, or the like, of the total weight of the aerosol dry shampoo composition (a combination of the dry shampoo composition and the propellant)” (pg. 4, ll. 1-10). With regard to claims 11 & 15, Hammer teaches the clays of their invention function to “aid in oil absorption and/or act as a suspending agent” (pg. 3, ll. 20-25).
Neither Liu, Streuli, Diversified CPC, Transitioning, nor Hammer suggest a dry shampoo comprising a polar activator which may be propylene carbonate combined with rheology modifier/bentonite and hectorite such that the summation of the rheology modify and polar activator is an amount of 0.5-3% by weight of the dry shampoo.
The teachings of Gawtrey are described above with regard to dry aerosol shampoos comprising rice starch as a sebum absorbing powder. With regard to claims 11 & 15, Gawtrey teaches “[t]he composition contained in the aerosol device of the invention may also comprise propylene carbonate, preferably in an amount ranging from 0.05% to 5% by weight relative to the total weight of the composition, when the propellant(s) are present in the composition” [0147].
In a related field, with regard to claims 11 & 15, Raiyne on Beauty teaches a dry shampoo paste which comprises propylene carbonate as a solvent which can also decrease the viscosity of the product (title; pg. 2).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the dry shampoo composition suggested by the combined teachings of Liu, Streuli, Diversified CPC, Transitioning, and Hammer by adding from 0.05% to 5% by weight propylene carbonate [yielding a combined amount of bentonite, hectorite and propylene carbonate of about 2.05% to about 9% ] suggested by the combined teachings of Gawtrey and Raiyne on Beauty because Liu, Hammer and Gawtrey are directed to dry shampoo compositions comprising a starch which may be rice starch 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 increase the solvent properties and decrease viscosity of the dry shampoo composition through inclusion propylene carbonate in quantities recognized as art suitable as suggested by the combined teachings of Gawtrey, and Raiyne on Beauty.
With regard to the recited amounts of the sum of the rheology modifier/bentonite/hectorite, and polar activator/propylene carbonate, the combined teachings of Liu, Streuli, Diversified CPC, Transitioning, Hammer, Gawtrey and Raiyne on Beauty suggest these parameters with values that overlap with the recited 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
In the traverse of claims 1, 2, 6-8, 11, 13, 14, 16, 17, 21 & 22 under 35 U.S.C. 103 over Carballada [as evidenced by Disiloxane, Diversified CPC , and Lima], Applicant argues their invention is to formulate a dry shampoo but Carballada is directed to a different problem (reply, pg. 6).
This is not persuasive. A rationale different from Applicant’s is permissible. 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).
Applicant argues the upper limits for the methanol, propanol, isopropanol, and butanol and addition to a VOC propellant would exceed the 55% limit on the claims (reply, pg. 7)
This is not persuasive. Carballada in Table 7 teaches in Examples 2-6, 8 & 9 inclusion of 25-50% alcohol with the nonaqueous volatile solvent being methanol, propanol, isopropanol, and butanol ([[0040] & [0041]; pg. 10& 11). One would immediately envisage use of 25% of these compounds. Applicant’s specification teaches use of propellant in an amount from 30-70% with dimethyl ether being taught among those as suitable (pg. 9). Carballada teaches use of dimethyl ether in an amount of 30% in Table 7 and further teaches propellant in amounts as low as 25% [0037]. This equals to 50%. Also, page 5 of the Applicant’s specification states that all numerical amounts are understood to be modified by the word “about” but does not state a numerical limit or definition for “about”.
Applicant argues Carballada was modified in a fashion that is accomplished through hindsight reconstruction, that HMDS was selected from a long list of potential silicones and high concentration was selected from a broad range (pg. 7). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Carballada teaches use of HMDS in the Table 7 examples. Carballada teaches these reagents and amounts. Patents are relevant as prior art for all they contain.
In the traverse of claims 1, 2, 6-8, 10, 11 13, 16, 17, 21 and 22 under 35 USC 103(a) over Liu [as evidenced by Disiloxane] in view of Streuli, Diversified CPC, Transitioning, and Hammer, Applicant argues Liu fails to teach or suggest a dry shampoo composition comprising about 30 wt.% to about 50 wt% hexamethyldisiloxane that is formulated without water or ethanol and HMDS is used a carrier replacement for ethanol (reply, pg. 9). Applicant argues Liu teaches away from too much HMDS which is taught in high concentrations by Hammer (reply, pg. 9-10).
This is not persuasive. Liu in their Table 5 example teach a hair formulation comprising starch and hexamethyldisiloxane which is water free and ethanol free. Liu expresses a concern when the starch is too much, there may be clogging. Hammer teaches in the field of dry shampoos hexamethyldisiloxane is a carrier with carrier materials being used in amounts between about 15% and about 40%, of the total weight of the aerosol dry shampoo composition (a combination of the dry shampoo composition and the propellant)” (pg. 5, ll. 15-20). It would have been prima facie obvious to the ordinary skilled artisan to have adjusted the amount of hexamethyldisiloxane to be 15-40% of the dry shampoo product in order to improve the conditioning and carrier properties of the dry shampoo through use of hexamethyldisiloxane in quantities art recognized as suitable for use in dry shampoos.
Applicant argues the motivation to combine Liu and Streuli is improper (reply, pg. 10)
This is not persuasive. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR /nt’] Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). Thus, the standard for motivation is that the art was looking for new propellant mixtures. The amount of dimethyl ether taught by Streuli was shown to be suitable for dry shampoos which contain starch.
Conclusion
No claims are allowed.
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/LORI K MATTISON/Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619