DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 02/09/2026 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 Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
The examination is examined in view of amodimethicone as specific amino silicone, and polydimethylsiloxane as specific silicone (IV). Claims 19-23, 25-34 read on the elected species and are under examination.
Claims 19-23, 25-37 are pending, claims 19-23, 25-34 are under examination.
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.
Claims 19-23, 25-32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Takehara (JP201105631, Machine translation) in view of Naser et al. (US20170196786), as evidenced by Momentive (“Amino Functional Silicone Fluid XF42-B1989”, June 2007).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Takehara teaches oily hair cosmetic contains (A) a diester of an N-acylamino acid, (B) a volatile hydrocarbon oil, (C) a dimethiconol, and(D) at least one kind or more of silicone oils selected from a dimethicone, an ABN-typepolyether-modified silicone and an amino-modified silicone (abstract). The volatile hydrocarbon oil of the component (B) in the present invention is a hydrocarbon having a boiling point in the range of 100 to 260 ° C., and is a light liquid paraffin having 6 to 30 carbon atoms or a light liquid isoparaffin having 12 to 28 carbon atoms. The preferable content of the component (B) in the present invention is 0.1 to 60%, based on the total amount of the oily hair cosmetic (page 3). The dimethiconol of component (C) is 1 to 50%,more preferably 3 to 30%, based on the total amount of the oily hair cosmetic (page 4).
Component (D) in the present invention is at least one silicone oil selected from dimethicone, ABN-type polyether-modified silicone, and amino-modified silicone (page 4). Examples of the amino-modified silicone represented by the general formula (5) include XF42-B1989 and XF42-B8922 manufactured by Momentive Performance Materials, XF-8004, XF-8015, and XF- manufactured by Shin-Etsu Chemical Co., Ltd.8017, XF-8018, XF-8020, X-52-2265, X-52-2265, XF-867S, AP-8087 manufactured by Toray Dow Corning, SF8452C, SS-3551, and the like. The preferable content of the component (D) in the present invention is 1 to 50%, more preferably 3 to 30%, based on the total amount of the oily hair cosmetic (page 5).
PNG
media_image1.png
228
453
media_image1.png
Greyscale
The oily hair cosmetic composition of the present invention is preferably a non-aqueous system that does not substantially contain water. Here, “substantially free of water” means that the water content is 1% or less, preferably 0.5% or less. In addition, the oily hair cosmetic of the present invention contains components that are usually used in skin external preparations such as cosmetics and pharmaceuticals, as needed, in addition to the above-mentioned components, as long as the effects of the present invention are not impaired. Anti-aging agent, anti-inflammatory agent, anti-androgen agent, hair restorer, antioxidant, UV absorber, thickener, preservative, powder component, coloring material, fragrance, refreshing agent, herbal extract, vitamins, vegetable oil, etc. Can be appropriately blended as necessary (page 6). In one example, the composition comprises Isododecane 25.0%; Dimethiconol 20.0%; Dimethicone 5.0%
Amino-modified silicone [AP-8087: Toray: manufactured by Dow Corning] 1.0%; Olive oil 0.1%; Almond oil 0.1%; Camellia oil 0.02%; Jojoba oil 0.02% and liquid isoparaffin (page 8, example 7).
Naser et al. teaches hair cosmetic composition ([0093]). The composition may be anhydrous and include hydrocarbon oil such as isododecane from 25-about 99% ([0073-0074]).
Momentive discloses amino-modified silicone XF42-B1989 is amodimethicone.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Takehara is that Takehara do not expressly teach isododecane. This deficiency in Takehara is cured by the teachings of Naser et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
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 invention of Takehara, as suggested by Naser et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to use isododecane as hydrocarbon oil because isododecane is a suitable cosmetic hydrocarbon oil vehicle as suggested by Naser et al. Under guidance from Takehara teaching hydrocarbon oil, it is obvious for one of ordinary skill in the art to use isododecane as hydrocarbon oil and produce instant claimed invention with reasonable expectation of success.
Regarding claims 19-23, 25-27, prior art teaches anhydrous (with less than 1% of water) cosmetic composition comprising isododecane (ingredient (i) in applicant’s claim 19) as hydrocarbon oil is 0.1 to 60%, dimethiconol of component (C) (ingredient (ii) in applicant’s claim 19) is 1 to 50%, amino-modified silicone XF42-B1989 (ingredient (iii) in applicant’s claim 19) (amodimethicone, as evidenced by Momentive) at 1.0% (percentage relied on amino-modified silicone AP-8087 at example 7) and dimethicone (polydimethylsiloxane) 5.0% (ingredient (iv) in applicant’s claim 19)..
Regarding claim 28, no decamethylcyclopentasiloxane is required.
Regarding claims 29-32 and 38, Prior art teaches dimethiconol (ii) 1-50%, amodimethicone ((iii) 1%, dimethicone (iv) 5% and isododecane (i) 1-60%. Simple math calculation will give the claimed ratio.
Regarding claim 34, Takehara teaches coloring agent.
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.
From the 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 before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable Takehara (JP201105631, Machine translation) in view of Naser et al. (US20170196786), as evidenced by Momentive (“Amino Functional Silicone Fluid XF42-B1989”, June 2007), as applied for the above 103 rejection for Claims 19-23, 25-32 and 34, further in view of Brady (WO00/15180).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Takehara, Naser et al. and Momentive teaching have already been discussed in the above 103 rejection and are incorporated herein by reference.
Brady teaches anhydrous hair care composition (claims 1, 34 and 39). he compositions of the invention can contain various additives known in the art including additional rheology modifiers, emulsifiers, thickening agents, such as polyacrylic acids, cellulose derivatives or esters of fatty acids and of polyethylene glycol, sequestering agents, foam reinforcers, preservatives, fragrances, electrolytes, fatty substances such as fatty alcohols, ceramides or mineral, vegetable, animal or synthetic oils or waxes. Amounts of additives and other ingredients can be, for example, from about 0.001% to 20% by weight of the composition (page 11, line 5-12).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Takehara is that Takehara do not expressly teach at least 5% of Vegetable oil. This deficiency in Takehara is cured by the teachings of Brady.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
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 invention of Takehara, as suggested by Brady, and produce the instant invention.
Takehara teaches vegetable oil (comprising triglyceride) as main component, but silent about the amount.
One of ordinary skill in the art would have been motivated to adjust and have vegetable oil at least 5% because this is optimization under piro art condition or through routing experimentation. MPEP 2144.05, under guidance from Brady teaching 1-20% of vegetable oil in hair care composition, it is obvious for one of ordinary skill in the art to adjust and have vegetable oil at least 5% and produce instant claimed invention with reasonable expectation of success.
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.
From the 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 before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Repones to Declaration:
The declaration of Pascale Cothias under 37 CFR 1.132 filed 02/09/2026 is insufficient to overcome the rejection of claims 19-23, 25-32 and 34 based upon Takehara (JP201105631, Machine translation) in view of Naser et al. (US20170196786), as evidenced by Momentive (“Amino Functional Silicone Fluid XF42-B1989”, June 2007), as set forth in the last Office action because:
Applicants argue that composition comprising 8% of dimethiconol has better performance than the composition comprising 12% of dimethicone.
In response to this argument: this is not persuasive. Applicant’s claim 19 comprising 5% to 10% of dimethiconol, and with sample of single percentage of 8% is not sufficient to overcome the 103 rejection because there is no sufficient number inside and outside of claimed range to show criticality of claimed range of 5-10%. For example, there is no data of 4%, 5%, 10% and 11% to show criticality of claimed range of 5-10%. MPEP 716.02(d) II, To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Therefore, the 103 rejection is still proper.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Argument:
Applicants argue about criticality of 5-10% of dimethiconol based on Declaration.
In response to this argument: this is not persuasive. As discussed in the above response to Declaration, the declaration is not sufficient to over the 103 rejection, and the arguments based on declaration is not sufficient to overcome the 103 rejection, either.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIANFENG SONG/Primary Examiner, Art Unit 1613
Prosecution Insights