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 .
Formal Matters
Receipt of Applicant’s response, dated 12/01/2025, is acknowledged.
Claims 1-19 are pending.
Claims 1, 4, 6, and 8-13 are amended.
Claims 13-19 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-12 are under consideration in the instant Office action to the extent of the elected species, i.e., the active agent capable of reducing disulfide cysteine bond linkages in hair is ammonium thioglycolate salt, the emulsifying agent is polyoxyethylene (20) sorbitan monolaurate (polysorbate 20), and the oil agent is a methyl, ethyl, propyl, or butyl ester of a fatty acid.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objections to the abstract and to the specification set forth in the Office action dated 05/30/2025 are hereby withdrawn in light of Applicant’s amendments to the abstract and to the specification.
Claim Objections
The objections to claims 4, 6, and 8-12 set forth in the Office action dated 05/30/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejections of claims 1-12 over Goutsis et al and of claims 1-12 over Vermeer set forth in the Office action dated 05/30/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
NEW GROUNDS OF OBJECTIONS/REJECTIONS
Claim Objections
Claim 1 is objected to because “provides” in the second to last line should be amended to “provide” for grammatical correctness; and
Claim 10 is objected to because “or” should be deleted from the third line (i.e., a list of alternatives only requires a single ‘or’ to appear before the last member of the list).
Appropriate correction is required.
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.
Claims 1-12 are 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “wherein the emulsifying agent and oil agent create micelles that provides a steric hinderance barrier to the release of malodorous chemical components of the active agent into the atmosphere”. No support is pointed to for this amendment. Although the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and 2163.06 (“Applicant should therefore specifically point out the support for any amendments made to the disclosure”). The Examiner has reviewed the specification for support, however, the specification discloses that “we believe that the ability of our composition to reduce the undesirable odors involves producing a steric hindrance barrier within the composition, e.g., at an air-composition interface, via the emulsion, that reduces the ability of the active agent (or chemical components of the active agent) to volatize and escape from our perm formulation into the atmosphere while at the same time not hindering the ability of the active agent to break disulfide bonds in hair. We believe that our composition, as an emulsion, has a continuous aqueous phase which includes the active agent, which can contain and react with hair to reduce the disulfide cysteine bond linkages, and, a dispersed phase of oil agent surrounded by the emulsifier that serves the barrier, e.g., via the presence of charged micelles of the oil compound in the composition.” (See Par. [0008] of the specification). This support being in the form of ‘we believe’ statements does not convey to one skilled in the art that these limitations regarding the composition are in fact present and no definitive disclosure is otherwise made and, therefore, claim 1 is rejected for failing to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. Claims 2-12 are rejected for depending from claim 1.
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.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Goutsis et al (WO 2012/038114 A2, published 03/29/2012, cited in Notice of References Cited dated 05/30/2025) as evidenced by Ravago Chemicals (“Glycerine”, cited in Notice of References Cited dated 05/30/2025) and Sigma (“TWEEN® 20”, cited in Notice of References Cited dated 05/30/2025).
Goutsis et al teach a kit-of-parts for changing the color of human hair which comprises a conditioning preparation (II), also referred to as conditioning formulation (II), which contains at least 0.5 wt% of a reducing agent in a cosmetically compatible carrier medium (See entire document, e.g., Abstract).
The cosmetically compatible carrier medium stabilizes the active ingredients under storage conditions, and is preferably aqueous, alcoholic or aqueous-alcoholic and may be in the form of an emulsion (e.g., Page 3 Par. 3 of English translation). An aqueous cosmetically compatible carrier medium contains at least 30 wt% water based on the total weight of the component, and the components may additionally contain other organic solvents including glycerol (i.e., glycerine as evidenced by Ravago Chemicals (See Synonyms)) (e.g., Page 3 Par. 4 of English translation).
Exemplary and particularly suitable thiol compounds as reducing agent of the conditioning formulation (II) include ammonium thioglycolate (e.g., Page 10 Par. 8 of English translation). The conditioning formulation (II) preferably contains the reducing agent from 0.5 to 25 wt% based on the total weight of the formulation (II) (e.g., Page 11 Par. 5 of English translation).
The conditioning formulation (II) preferably contains further additives which are suitable for conditioning and improving the care state of the hair (e.g., Page 11 Par. 5 of English translation). The conditioning formulation (II) may contain at least one ester oil, wherein preferred ester oils include n-butyl stearate (e.g., Page 12 Par. 6 of English translation). The ester oils are used in the conditioning formulation (II) from 0.01 to 20 wt% (e.g., Page 13 Par. 1 of English translation).
In many cases, the conditioning formulation (II) contains at least one surface-active compound, wherein suitable surface-active compounds are anionic and zwitterionic, ampholytic, nonionic and cationic surfactants (e.g., Page 14 Par. 6 of English translation). Nonionic surfactants include sorbitan fatty acid esters and adducts of ethylene oxide with sorbitan fatty acid esters such as the polysorbates, including Tween 20 (e.g., Page 10 Par. 1 of English translation). The at least one anionic, nonionic, zwitterionic or amphoteric surfactant is used in amounts of from 0.1 to 50 wt% based on the total weight of the formulation (e.g., Page 10 Par. 2 of English translation).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Goutsis et al 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)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742).
Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed ingredients from within the prior art disclosure of Goutsis et al and arrive at a conditioning formulation for human hair, formulated as an emulsion, comprising from 0.5 to 25 wt% ammonium thioglycolate as the reducing agent, 0.01 to 20 wt% of n-butyl stearate as the at least one ester oil, from 0.1 to 50 wt% of Tween 20 as the nonionic surfactant, water as the cosmetically compatible carrier medium, and glycerol as an additional organic solvent, wherein wt% is based on the total weight of the formulation.
N-butyl stearate in the conditioning formulation of Goutsis et al is the butyl ester of stearic acid, which meets the limitation of the elected species of oil agent as a methyl, ethyl, propyl, or butyl ester of a fatty acid required by the instant claims.
Tween 20 is synonymous with polysorbate 20 and with polyoxyethylene (20) sorbitan monolaurate and is a non-ionic emulsifier, as evidenced by Par. [0014] of the instant specification, and therefore, Tween 20 in the conditioning formulation of Goutsis et al meets the limitations of instant claims 6-7. Tween 20 has an HLB of 16.7 as evidenced by Sigma (See Line 9 of Product Description) which meets the limitation of instant claim 9.
Because the conditioning formulation of Goutsis et al is the same as the composition of instant claim 1, i.e., a formulation for human hair in the form of an emulsion comprising ammonium thioglycolate, n-butyl stearate (i.e., the butyl ester of stearic acid), Tween 20 (i.e., polyoxyethylene (20) sorbitan monolaurate), and water (i.e., an aqueous formulation), and because the instant specification at Par. [0008] attributes the creation of the micelles to the presence of the emulsifying agent (i.e., elected as polyoxyethylene (20) sorbitan monolaurate) and the oil agent (i.e., elected as methyl, ethyl, propyl, or butyl ester of a fatty acid), the conditioning formulation of Goutsis et al would necessarily have micelles created from the emulsifying agent and oil agent that provide a steric hinderance barrier to the release of malodorous chemical components of the active agent into the atmosphere. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Regarding the required amount of ammonium thioglycolate salt being in the range of 1 to 30 wt% (instant claim 5), the required amount of polyoxyethylene (20) sorbitan monolaurate being in the range of 1 to 15 wt% (instant claim 8), and the required amount of a methyl, ethyl, propyl, or butyl ester of a fatty acid being in the range of 1 to 15 wt% (instant claim 11), the conditioning formulation of Goutsis et al comprising from 0.5 to 25 wt% ammonium thioglycolate, from 0.1 to 50% of Tween 20, and from 0.01 to 20 wt% of n-butyl stearate renders obvious each of the ranges of instant claims 5, 8, and 11. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Regarding the required weight ratio of polyoxyethylene (20) sorbitan monolaurate to a methyl, ethyl, propyl, or butyl ester of a fatty acid being in the range of 1:1 to 4:1 (instant claim 12), the conditioning formulation of Goutsis et al from 0.1 to 50 wt% of Tween 20 and from 0.01 to 20 wt% of n-butyl stearate renders obvious the range of weight ratio of instant claim 12 (e.g., the conditioning formulation of Goutsis et al comprising 20 wt% of Tween 20 and 10 wt% of n-butyl stearate results in a weight ratio of Tween 20 to n-butyl stearate of 2:1).
Thus, the conditioning formulation of Goutsis et al renders obvious the composition of instant claims 1-12.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Vermeer (US 5,641,480 A, published 06/24/1997, cited in Notice of References Cited dated 05/30/2025).
Vermeer teaches hair care compositions preferably as shampoos and conditioners (e.g., Col. 1 Lines 43-50).
The hair care compositions comprise:
from about 0.1% to about 40% by weight a heteroatom containing alkyl aldonamide compound;
from about 0% to about 45% by weight a cosurfactant (cleansing agent) selected from the group consisting of soap, anionic, nonionic, amphoteric, zwitterionic, cationic surfactants and mixtures thereof;
from about 0% to about 10% by weight a hair conditioning agent;
from about 0.1% to about 10% by weight a viscosity control agent;
from about 0% to about 10% by weight an emulsifier/emollient/dispersant;
from about 0% to about 10% by weight a humectant;
from about 0% to about 7% by weight a curl enhancing agent;
from about 0.001% to about 4% by weight a preservative/antimicrobial agent;
from about 0.1% to about 4% by weight a perfume/fragrance; and
the remainder is water, which is generally present from about 1% to about 95% by weight,
where weight is based on the weight of the composition (e.g., Col. 41 Line 42- Col. 42 Line 45, Col. 33 Lines 7-10).
Suitable nonionic surfactants include polyoxyalkylene sorbitan and mannitan esters including the Tweens, such as polyoxyethylene (20) sorbitan monolaurate (e.g., Col. 24 Lines 6-9).
Hair conditioning agents are designed to enhance fullness, body, manageability, softness, luster and overall attractive appearance and handling properties of the hair (e.g., Col. 30 Lines 4-7). Silicones and cationic surfactants are particularly preferred, and the silicone fluid should be insoluble in the shampoo matrix and present as a dispersion (e.g., Col. 30 Lines 15-18, 25-27).
Suitable emulsifiers/emollients or dispersants which condition the hair and scalp and assist in the ease of combing, detangling, body, shine, manageability, split-end mending and prevent static build-up include butyl stearate (e.g., Col. 34 Lines 4-8, 22).
Suitable humectants which provide moisture to the hair and scalp include glycerol (glycerin) (e.g., Col. 35 Lines 9-10, 14).
Preferable curl enhancing agents which hold the hair in a waved or curled position include the ammonium salt of thioglycolic acid (e.g., Col. 37 Lines 6-9).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Vermeer 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)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742).
Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed ingredients from within the prior art disclosure of Vermeer and arrive at a hair care composition comprising from about 0.1% to about 40% by weight a heteroatom containing alkyl aldonamide compound, from about 0% to about 45% by weight a cosurfactant being polyoxyethylene (20) sorbitan monolaurate, from about 0% to about 10% by weight a hair conditioning agent being a silicone, from about 0.1% to about 10% by weight a viscosity control agent, from about 0% to about 10% by weight an emulsifier/emollient/dispersant being butyl stearate, from about 0% to about 10% by weight a humectant being glycerol (glycerin), from about 0% to about 7% by weight a curl enhancing agent being the ammonium salt of thioglycolic acid, from about 0.001% to about 4% by weight a preservative/antimicrobial agent, from about 0.1% to about 4% by weight a perfume/fragrance, and the remainder being water, which is generally present from about 1% to about 95% by weight, where weight is based on the weight of the composition.
Butyl stearate in the hair care composition of Vermeer is the butyl ester of stearic acid, which meets the limitation of the elected species of oil agent as a methyl, ethyl, propyl, or butyl ester of a fatty acid required by the instant claims.
The ammonium salt of thioglycolic acid is ammonium thioglycolate salt, and therefore, the ammonium salt of thioglycolic acid in the hair care composition of Vermeer meets the limitation of the elected species of active agent as ammonium thioglycolate salt required by the instant claims.
Polyoxyethylene (20) sorbitan monolaurate in the hair care composition of Vermeer meets the limitation meets the limitations of instant claims 6-7 and 9.
The hair care composition of Vermeer comprising silicone as the hair conditioning agent meets the limitation of the composition being an emulsion required by the instant claims because Vermeer teaches the silicone being insoluble creating a dispersion in the aqueous hair care composition (see supra).
Because the hair care composition of Vermeer is the same as the composition of instant claim 1, i.e., at a hair care composition comprising the ammonium salt of thioglycolic acid (i.e., ammonium thioglycolate salt), polyoxyethylene (20) sorbitan monolaurate, butyl stearate (i.e., the butyl ester of stearic acid), water (i.e., an aqueous composition), and a silicone (i.e., composition in the form of a dispersion), and because the instant specification at Par. [0008] attributes the creation of the micelles to the presence of the emulsifying agent (i.e., elected as polyoxyethylene (20) sorbitan monolaurate) and the oil agent (i.e., elected as methyl, ethyl, propyl, or butyl ester of a fatty acid), the hair care composition of Vermeer would necessarily have micelles created from the emulsifying agent and oil agent that provide a steric hinderance barrier to the release of malodorous chemical components of the active agent into the atmosphere. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Regarding the required amount of ammonium thioglycolate salt being in the range of 1 to 30 wt% (instant claim 5), the required amount of polyoxyethylene (20) sorbitan monolaurate being in the range of 1 to 15 wt% (instant claim 8), and the required amount of a methyl, ethyl, propyl, or butyl ester of a fatty acid being in the range of 1 to 15 wt% (instant claim 11), the hair care composition of Vermeer comprising from 0 to about 7 wt% of the ammonium salt of thioglycolic acid, from 0 to about 45 wt% of polyoxyethylene (20) sorbitan monolaurate, and from 0 to about 10 wt% of butyl stearate renders obvious each of the ranges of instant claims 5, 8, and 11. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Regarding the required weight ratio of polyoxyethylene (20) sorbitan monolaurate to a methyl, ethyl, propyl, or butyl ester of a fatty acid being in the range of 1:1 to 4:1 (instant claim 12), the hair care composition of Vermeer from 0 to about 45 wt% of polyoxyethylene (20) sorbitan monolaurate and from 0 to about 10 wt% of butyl stearate renders obvious the range of weight ratio of instant claim 12 (e.g., the hair care composition of Vermeer comprising 20 wt% of polyoxyethylene (20) sorbitan monolaurate and 10 wt% of butyl stearate results in a weight ratio of polyoxyethylene (20) sorbitan monolaurate to butyl stearate of 2:1).
Thus, the hair care composition of Vermeer renders obvious the composition of instant claims 1-12.
Response to Applicant’s Arguments
Applicant’s arguments filed on 12/01/2025 have been considered.
Applicant argues that with the amendments to claim 1, neither Goutsis et al nor Vermeer mention using a physical barrier to address the release of malodorous chemical components, and therefore, each of the references do not appear to teach or suggest all of the features of amended claim 1.
The above argument has been fully considered by the Examiner but is not found persuasive because, as can be seen in the new grounds of rejection under 35 USC 103 above over Goutsis et al, the limitation of “wherein the emulsifying agent and oil agent create micelles that provides a steric hinderance barrier to the release of malodorous chemical components of the active agent into the atmosphere” is met because the instant specification at Par. [0008] attributes the creation of the micelles to the presence of the emulsifying agent (i.e., elected as polyoxyethylene (20) sorbitan monolaurate) and the oil agent (i.e., elected as methyl, ethyl, propyl, or butyl ester of a fatty acid), and because the conditioning formulation of Goutsis et al is the same as the composition of instant claim 1 (see supra), the conditioning formulation of Goutsis et al would necessarily have micelles created from the emulsifying agent and oil agent that provide a steric hinderance barrier to the release of malodorous chemical components of the active agent into the atmosphere. Similarly, as can be seen in the new grounds of rejection under 35 USC 103 above over Vermeer, the limitation of “wherein the emulsifying agent and oil agent create micelles that provides a steric hinderance barrier to the release of malodorous chemical components of the active agent into the atmosphere” is met because the instant specification at Par. [0008] attributes the creation of the micelles to the presence of the emulsifying agent (i.e., elected as polyoxyethylene (20) sorbitan monolaurate) and the oil agent (i.e., elected as methyl, ethyl, propyl, or butyl ester of a fatty acid), and because the hair care composition of Vermeer is the same as the composition of instant claim 1 (see supra), the hair care composition of Vermeer would necessarily have micelles created from the emulsifying agent and oil agent that provide a steric hinderance barrier to the release of malodorous chemical components of the active agent into the atmosphere. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). 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 Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619