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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/14/2025 has been entered.
Status of the Claims
Claims 16-25, 27-36 and 38-44 are pending in a response dated 11/14/2025.
Withdrawn rejections:
Applicant's amendments and arguments filed 11/14/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic/medical/pharmaceutical research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetic, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Claims 16-24 are rejected under 35 U.S.C. 103 as being unpatentable over JP04-193821A (hereinafter “JP ‘821”) in view of Khandpur et al., “Comparative efficacy of various treatment regimens for androgenetic alopecia in men”, The Journal of Dermatology vol. 29, pp. 489-498, 2002 (hereinafter Khandpur); DE102005003949A1 (IDS of 08/02/2023, hereinafter “DE ‘949”); ES ‘246 (ES2436246A1 – Google English Translation was previously attached, hereinafter “ES ‘246”); and DE’658 (DE102018213658A1 - Google English Translation was previously attached, hereinafter “DE ‘658”).
Applicant claims the below claims 16 filed on 11/14/2025:
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Determination of the scope and content of the prior art (MPEP 2141.01) ); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02); and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Regarding instant claims 16-20, JP ‘821 teaches a hair cosmetic lotion and a method for nourishing hair in a daily basis which would embrace once per day, the method comprising applying the lotion comprising 0.1% caffeine as a hair nourishing agent which is within the instant range of 0.01 to 10% and 0.5 to 2.0% minoxidil (abstract and page 1 of translation) which overlaps the instant range of 0.1 to 5%, and mixing caffeine with minoxidil gives excellent synergistic effects (abstract); in one embodiment, the composition comprises ethanol, anhydrous caffeine, glycerin (=glycerol), and water (see the Examples). In particular, Example 2 composition contains ethanol 50%, minoxidil 2%, caffeine 1%; L-menthol which reads on the claimed terpene, glycerin, perfume, and water. Here, JP ‘821 discloses ethanol 50% in the composition containing minoxidil (instant claim 18) which is within the claimed range of 20-60vol% (instant claim 19). JP ‘821 does not expressly teach the first composition containing minoxidil contains ethanol and propylene glycol, and but JP ‘821 teaches ethanol and glycerin as an alcohol, and therefore, it would have been obvious to further add ethanol and glycol as a diluent in certain amounts to the composition containing minoxidil for the purpose of formulating a topical composition; the hair growth effect was determined by the change in the number of hairs pulled out during hair washing, and among three groups wherein each group has 50 years old men and topically applied to each group test solution of Samples A (no caffeine and minoxidil), B (caffeine), and C (combination of caffeine and minoxidil). Group receiving Sample C showed significant reduction of hair loss (see Table). From the teachings of JP ‘821, it is well known that the combination of minoxidil and caffein is effective to provide hair nourishing effect.
However, JP ‘821 does not expressly teach the steps (a)-(c) recited in instant claim 16. The deficiencies are cured by Khandpur, DE ‘949, ES ‘246 and DE ‘658.
Khandpur discloses minoxidil is useful to treat androgenetic alopecia wherein 2% minoxidil is topically applied reading on the claimed first composition to bald area of Group III people twice daily at 12-hour interval (abstract and page 490, right column), which means “after application of minoxidil, it is left for 12 hours that is within the instant leaving time range of 5 to 15 hours and the said 2% minoxidil is within the claimed range of 0.1 to 5% and minoxidil agent reads on the claimed first composition (step (a) of instant claim 16, and amount of minoxidil of instant claim 17).
DE ‘949 discloses agent to activate hair-roots comprising caffeine and anionic surfactant reading on the claimed second composition (abstract) wherein the amount of caffeine is in an amount of 0.01 and 10% ([0013])(instant claim 20); the agent can prevent against hair loss (claim 13 of prior art); the surfactant-containing caffeine solution is applied for 2 minutes ([0029]) which is within 1-10 minutes, and the composition containing caffeine and surfactant is used as a shampoo or rinse formulations. In any event, shampoo and/or rinse formulations require wetting the hair. Therefore, upon wetting the hair before applying the second composition, the portion of minoxidil would be removed by washing or rinsing (step (b) of instant claim 16).
ES ‘246 discloses cosmetic composition for the treatment of alopecia (title) comprising a cosmetically effective amount of caffeine, zinc, organic pea, pantothenic acid (claim 1 of prior art); the caffeine is used in an amount of 0.5% (claim 2 of prior art) which is within the claimed range of 0.01 to 10% (instant claim 20), and the caffeine-containing composition reading on the claimed third composition is topically applied to the bald area and then leaving it for at least 6 hours (claim 6 of prior art) which is identical to the claimed leaving time range (step (c) of instant claim 16).
DE ‘658 discloses use of special hair care products to prevent premature hair loss (title); the products contain hair treatment agent which comprises Quassia Amara and 0.01 to 2.5% caffeine which is within the claimed range of 0.01 to 10% for expensing the hair growth phase (abstract) (instant claim 20); and the said hair treatment agent reading on the claimed third composition remains on the hair or scalp until then the next hair wash, preferably at least 10 hours (claim 7 of prior art – see page 1 of translation), and thus, the at least 10 hours of DE ‘658 overlap the claimed range of at least 6 hours (step (c) of instant claim 16).
As noted above, the ranges of minoxidil and caffeine of the applied art overlap, are within inside and/or identical to the claimed ranges. MPEP 2144.05 states that [I]n 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).
It would have been obvious to modify the teachings of JP ‘821 with procedures of Khandpur, DE ‘949, ES ‘246 and DE ‘658 in order to enhance treating and/or preventing hair loss effects because JP ‘821 discloses a combination of minoxidil and caffeine is useful to treat/prevent the hair loss; Khandpur teaches minoxidil reading on the claimed first composition and overlapping leaving time; DE ‘949 teaches surfactant-containing composition reading on the claimed second composition and overlapping leaving time; ES ‘246 and DE ‘658 both teach caffeine-containing composition reading on the claimed third composition and overlapping or identical leaving time, for the same purpose of treating/preventing hair loss. Thus, it would have been obvious to combine all the applied references to produce the claimed method for enhancing treating and/or preventing hair loss. (instant claim 16).
Regarding instant claims 21-24, JP ‘821, Khandpur, DE ‘949, ES ‘246 and DE ‘658 were discussed with respect to instant claims 16-20.
DE ‘949 discloses the surfactant-containing composition reading on the claimed second composition as noted above; the composition additionally contains nonionic surfactant in an amount of 0.5-10% ([0016]) which is within the instant range of 1-4% (instant claim 23). MPEP 2144.05 above; the composition further contains vitamins ([0017]) such as panthenol, niacinamide, biotin in 0.02% ([0053] Formulation B) which is within the claimed range of 0.01 to 2% (instant claim 22), vitamins C and E, coenzyme Q10, glycerol, glycol, sorbitol perfume reading on the claimed flavonoid, aqua (=water), chamomilla, Ginkgo, Camellia which reads on the claimed plant extract ([0017], [0037]-[0040] and the Examples) (instant claim 21 and 24).
It would have been to further add other additive ingredients of DE ‘949 to the composition of the applied art in order to enhance the properties of the formulation.
In light of the foregoing, instant claims 16-24 are obvious over JP ‘821 in view of Khandpur, DE ‘949, ES ‘246 and DE ‘658.
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive.
Applicant argues that none of the applied references, alone or in combination with Khandpur teach or suggest administering a second composition comprising a surfactant in order to remove a portion of the minoxidil composition from the scalp at the same time or prior to administering caffeine; since JP ‘821 discloses the hair washed only every 2 days while their minoxidil was admininstered, and there minoxidil composition was not removed as required by the present claims; and as noted by the Office Action, and DE ‘949, ES ‘246 and DE’658 do not disclose administering compositions containing minoxidil to the scalp of a subject and only describes methods contacting the scalp with compositions containing caffeine.
The Examiner responds that the previous Office Action (page 6) states that JP ‘821 does not steps (a)-(c) in a timely manner, instead of stating that JP ‘821 does not teach topically applying the compositions of the present claims including a minoxidil composition to a subject for treating or preventing hair loss; as noted in the body of Action, to applying the claimed second composition, wetting hair should be first performed, and when the hair is wet, a portion of the minoxidil of JP ‘821 would be removed even after the minoxidil is left for 2 days because the residue of minoxidil would be left behind. Please note that instant claim 16 does not require “the step of applying the second composition removes a portion of the first composition from the scalp”, but require “the step of applying the second composition comprises removing a portion of the first composition from the scalp”, which does not exclude introduction of wetting the hair; and further instant claim 16 requires “a portion of the first composition”, not require “all of the first composition”; DE ‘949 and DE’658 disclose minoxidil; and DE ‘949, ES ‘246 and DE ‘658 are relied on for disclosing the claimed steps (a)-(c). JP ‘821 discloses daily use of minoxidil that embraces once per day, and the claimed steps would be obvious because the result to be accomplished is substantially the same regardless of whether administration is concurrent or sequential. In other words, there would be no difference in the end result whether the artisan does concurrent administration or sequential administration. Please see related case law to this situation is this: "Where the result accomplished is substantially the same, steps taken concurrently or simultaneously are the equivalent of and not patentable over steps taken successively" New Wrinkle, Inc. v. Watson, Comr. Pats., 96 USPQ 436, 437 (D.C. Cir. 1953).
Further, the instant specification does not present certain data to show the significance of the claimed steps (a)-(c) comparing with the closest art method; and for example, the tested results of Examples 1-2 (application with two separate compositions) comparing with Comparative Example 2 (application with one single composition) appear to be interesting, and but they are not numerical data and but rather statements (less fatty hair, and after three month, no reduction in the prevention of hair loss). From the statements, it is not clear how significantly the instant results was obtained from that comparison. Further, the tested composition in Examples 1-2 are not commensurate with scope of the claims because the tested data requires certain amounts of minoxidil, surfactant and caffeine while the claimed invention does not. In this regard, please see MPEP 716.02(d): Unexpected Results Commensurate in Scope With Claimed Invention “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In addition, please see MPEP 2145 states that “A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). Further, when the order is sequentially performed (e.g., after two days as taught by JP ‘821), the hair will be washed, shampooed and/or rinsed which would remove a portion of minoxidil, in the absence of evidence to the contrary. Therefore, the claimed steps a)-c) would be obvious as noted above. And, please see case law stating that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In reKeller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In reMerck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). MPEP 2145.
Therefore, in light of the foregoing, applicant’s arguments are not persuasive.
Claims 25 and 27-33 are rejected under 35 U.S.C. 103 as being unpatentable over Goren et al. (US2016/0220465A1, IDS of 08/02/2023) in view of DE102005003949A1 (IDS of 08/02/2023, hereinafter “DE ‘949”).
Applicant claims the below claims 25 filed on 11/14/2025:
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For examination purpose,
Claim 25 is directed to a combination of a first composition and a second composition, not a method of use. Therefore, the limitations of “for use in the treatment and/or prevention of hair loss” and “administration steps (a)-(c)” are intended uses of the combination, but which intended uses will not limit the scope of the claim because it merely defines a context in which the invention operates. see Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Moreover, the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Thus, "recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1977). Thus, claim 25 is interpreted as a combination of a first composition comprising minoxidil and a second composition caffeine.
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02); and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Goren discloses a topical formulation and method of inducing hair growth, the formulation containing 2-20% of minoxidil (abstract) which reads on the claimed first composition and its amount overlaps the instant range of 2.5-5%. MPEP 2144.05 as noted above. Further, the prior art of Goren discloses overlapping ranges and thus the ordinary artisan would have optimized and adjusted to the claimed range depending on the intended purpose, relationship with other ingredients, formulation type, etc. (instant claim 25 – minoxidil and its amount); Goren teaches the composition is provided as a foam or mousse, or as an aerosol for application as a foam, or as a liquid solution, or as a gel ([0005]); the aerosol non-foaming composition may further comprise alcohol, propylene glycol and water ([0018]), and the liquid composition can contain solvent, which may be one readily apparent to one in the field, and may be one or more of the carrier materials and the solvents discussed above for the aerosol composition (nonfoaming) ([0029]) and thus, the liquid composition can contain propylene glycol solvent (instant claim 25 – solution containing propylene glycol).; the cmoposition further contains carrier materials include e.g., ethanol, isopropanol ([0009]), propylene glycol ([0029]) (instant claim 27) in an amount of between about 0.1 and about 50% and thus, the amount of 1-20% of propylene glycol and 20-80% of ethanol would be optimized from the prior art amount from the standpoint of the ordinary artisan (instant claim 28).
However, Goren does not expressly teach a second compositoin containing surfactant and optionally caffeine of instant claim 25; and additives of instant claims 29-33. The deficiencies are cured by DE ‘949.
DE ‘949 discloses caffeine-containing agent reading on the claimed second composition to activate hair-roots comprises caffeine and anionic surfactant (abstract) wherein the caffeine is used in an amount of 0.01 to 10% which is identical to the claimed range (instant claim 29) wherein the agent can prevent against hair loss (claim 13 of prior art); the composition contains agent for stabilizing roots, especially minoxidil (claim 7 of prior art); and the composition containing surfactant and caffeine is provided in the form of foam or as foaming gel or is conditioned as an aerosol application (claim 12 of prior art); and the composition contains cetyl alcohol (see e.g., formulation D and claim 12 of prior art) (instant claim 25 – foam and fatty alcohol); the composition additionally contains nonionic surfactant in an amount of 0.5-10% ([0016]) which is within the instant range of 1-4% (instant claim 32);the surfactant-containing caffeine solution is applied for 2 minutes ([0029]) which is within 1-10 minutes; the composition further contains vitamins ([0017]) such as panthenol, niacinamide, biotin in 0.02% (Examples) which is within the claimed range of 0.01 to 2% (instant claim 31), vitamins C and E, coenzyme Q10, glycerol, glycol, sorbitol perfume reading on the claimed flavonoid, aqua (=water), chamomilla, Ginkgo, Camellia which reads on the claimed plant extract ([0017], [0037]-[0040] and the Examples) (instant claims 30 and 33).
It would have been obvious to modify the teachings of Goren with separate addition of surfactant/caffeine-containing composition of DE ‘949 in order to provide the combination of two compositions for treating and/or preventing hair loss because Goren teaches minoxidil is effective to treat and/or prevent hair loss and DE ‘949 teaches caffeine/surfactant reading on the claimed second composition to do the same treatment/prevention. That is, it would have been obvious to combine minoxidil-containing composition, surfactant and caffeine-containing composition to provide a combination as claimed, for the same purpose of treating/preventing hair loss, as taught by applied art. In this regard, please see case laws holing that “it is a matter of obviousness for one of ordinary skill in the art to combine two or more materials, such as the known antioxidants disclosed by Kosbab, when each is taught by the prior art to be useful for the same purpose. Kerkhoven, 626 F.2d at 850; In re Crocket, 279 F.2d 274, 276-77 (CCPA 1960)”. Further, this rejection is based on the well-established proposition of patent law that no invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients, In re Sussman, 1943 C.D. 518. From MPEP 2143 A: “…all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at ___, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson ’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).”
It would have been to further add other additive ingredients such as of the applied art to enhance the properties of the formulation.
In light of the foregoing, instant claims 25 and 27-33 are obvious over Goren in view of DE ‘949.
Response to Arguments
Applicant’s arguments have been fully considered, but are moot in view of new combination of the applied references. However, the Examiner would like to address the followings.
Applicant argues that none of Goren and DE ‘949 discloses foam or solution and when the first composition is a foam and the composition comprises cetyl alcohol, stearyl alcohol, and butylated hydroxytoluene and when the composition is a solution, the composition comprises a solution.
The Examiner responds that as noted in the body of action, Goren discloses foam or liquid solution wherein the liquid solution can contain polypropylene glycol since Goren teaches the liquid solution can contain solvent disclosed in the foam composition ([0018] and [0029]). Thus, applicant’s arguments are not persuasive.
Claims 34-36 and 38-44 are rejected under 35 U.S.C. 103 as being unpatentable over Claims 25 and 27-33 are rejected under 35 U.S.C. 103 as being unpatentable over Goren et al. (US2016/0220465A1, IDS of 08/02/2023) in view of DE102005003949A1 (IDS of 08/02/2023, hereinafter “DE ‘949”).
Applicant claims the below claims 34 and 36 filed on 06/12/2025:
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For examination purpose, the “kit” of claim 34 is not given patentable weight as it is directed to a pharmaceutical composition; and leaflet printed matter and application device are also well recognized as the components of kit. Thus, the claimed kit is seen as claiming the composition.
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02); and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Goren discloses a topical formulation and method of inducing hair growth, the formulation containing 2-20% of minoxidil (abstract) which reads on the claimed first composition and its amount overlaps the instant range of 2.5-5%. MPEP 2144.05 as noted above. Further, the prior art of Goren discloses overlapping ranges and thus the ordinary artisan would have optimized and adjusted to the claimed range depending on the intended purpose, relationship with other ingredients, formulation type, etc. (instant claims 34 and 36 – minoxidil and its amount); Goren teaches the composition is provided as a foam or mousse, or as an aerosol for application as a foam, or as a liquid solution, or as a gel ([0005]); the aerosol non-foaming composition may further comprise alcohol, propylene glycol and water ([0018]), and the liquid composition can contain solvent, which may be one readily apparent to one in the field, may be one or more of the carrier materials and the solvents discussed above for the aerosol composition (nonfoaming) ([0029]) and thus, the liquid composition can contain propylene glycol solvent (instant claims 34 and 36 – solution containing propylene glycol); the composition is applied to scalp of a subject ([0042]) via dose spray device ([0044]) (instant claims 35-36); the composition further contains carrier materials include e.g., ethanol, isopropanol ([0009]), propylene glycol ([0029]) (instant claim 38) in an amount of between about 0.1 and about 50% and thus, the amount of 1-20% of propylene glycol and 20-80% of ethanol would be optimized from the prior art amount from the standpoint of the ordinary artisan (instant claim 39).
However, Goren does not expressly teach a second compositoin containing surfactant and optionally caffeine of instant claims 34, 36 and 40; and additives of instant claims 41-44. The deficiencies are cured by DE ‘949.
DE ‘949 discloses caffeine-containing agent reading on the claimed second composition to activate hair-roots comprises caffeine and anionic surfactant (abstract) wherein the caffeine is used in an amount of 0.01 to 10% which is identical to the claimed range (instant claims 34, 36 and 40) wherein the agent can prevent against hair loss (claim 13 of prior art); the composition can contain agent for stabilizing roots, especially minoxidil (claim 7 of prior art); and the composition containing surfactant and caffeine is provided in the form of foam or as foaming gel or is conditioned as an aerosol application (claim 12 of prior art); and the composition contains cetyl alcohol (see e.g., formulation D and claim 12 of prior art) (instant claims 34 and 36 – foam and fatty alcohol); the surfactant-containing caffeine solution is applied for 2 minutes ([0029]); the composition further contains vitamins ([0017]) such as panthenol, niacinamide, biotin in 0.02% (Examples) which is within the claimed range of 0.01 to 2% (instant claims 41-42), vitamins C and E, coenzyme Q10, glycerol, glycol, sorbitol perfume reading on the claimed flavonoid, aqua (=water), chamomilla, Ginkgo, Camellia which reads on the claimed plant extract ([0017], [0037]-[0040] and the Examples) (instant claims 41 and 44); and the composition additionally contains nonionic surfactant in an amount of 0.5-10% ([0016]) which is within the instant range of 1-4% (instant claim 43).
It would have been obvious to modify the teachings of Goren with addition of surfactant/caffeine-containing composition of DE ‘949 in order to provide the combination of two compositions for treating and/or preventing hair loss because Goren teaches minoxidil is effective to treat and/or prevent hair loss and DE ‘949 teaches caffeine/surfactant reading on the claimed second composition to do the same treatment/prevention. That is, it would have been obvious to combine minoxidil-containing composition, surfactant and caffeine-containing composition to provide a combination as claimed, for the same purpose of treating/preventing hair loss, as taught by applied art. In this regard, please see case laws holing that “it is a matter of obviousness for one of ordinary skill in the art to combine two or more materials, such as the known antioxidants disclosed by Kosbab, when each is taught by the prior art to be useful for the same purpose. Kerkhoven, 626 F.2d at 850; In re Crocket, 279 F.2d 274, 276-77 (CCPA 1960)”. Further, This rejection is based on the well-established proposition of patent law that no invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients, In re Sussman, 1943 C.D. 518. From MPEP 2143 A: “…all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at ___, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson ’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).”
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments have been fully considered, but are moot in view of new combination of the applied references as noted above.
Conclusion
The examined claims are not allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613