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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/16/2026 has been entered.
Status of Claims
The arguments filed 03/16/2026 are acknowledged and have been fully considered. Claims 1-9, 11-13, and 15-20 are currently pending. No claims are amended; claims 10 and 14 are cancelled; no claims are withdrawn; no claims are new.
Claims 1-9, 11-13, 15-20 are examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
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.
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 1-9, 11-13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cochran et al. (US 2019/0105246; of record) in view of Chu et al. (WO 2021/144326; of record) and evidenced by Geary et al. (WO 2003/105793).
Claim 1 is drawn to a cleansing composition comprising:
from about 3 wt% to about 35 wt% of an anionic surfactant (more specifically sodium salts of isethionates and sodium salts of sulfosuccinates (claim 2));
from about 5 wt% to about 15% of an amphoteric surfactant (more specifically betaines (claim 18));
from about 0.01 wt% to about 2 wt% of a cationic polymer (more specifically Polyquaternium 10 and Polyquaternium 6 (claims 3-5));
from about 0 wt% to about 1.0 wt% of an inorganic salt (more specifically sodium chloride (claim 7) and from about 0 wt% to about 0.2 wt% (claims 15-17));
from about 0.01% to about 10% of a hydroxamic acid or hydroxamic acid derivative (more specifically piroctone olamine (claims 8-9);
an aqueous carrier,
wherein the composition is substantially free of sulfate-based surfactant, wherein the composition has a viscosity greater than about 2000 cP and wherein the pH is greater than about 5.5 (claim 1), more specifically from about 2000 cP to about 20,000 cP (claim 11), more specifically from about 3,000 cP to about 12,000 cP (claim 12).
Cochran et al. teach “personal cleansing compositions having an anionic surfactant, cationic deposition polymer, a level of inorganic salt of from about 0 to about 1 wt %, and an aqueous carrier. The composition is substantially free of sulfate containing surfactants. The composition can further comprise amphoteric surfactants” (Abstract). Cochran et al. further teach in Example 7 (Table 1 on pgs. 15-16) a cleansing composition comprising:
10% disodium laureth sulfosuccinate and 5% sodium cocoyl isethionate;
10% lauramidopropyl betaine;
0.35% Polyquaternium 10 and 0.2% Polyquaternium 6;
0.12% sodium chloride;
–
water,
wherein the composition is substantially free of sulfate-based surfactant, has a viscosity of 8500 cP, and a pH of 6.0. All percentages taught by Cochran et al. are by weight based on the total weight of the composition (Par. [0014]).
As such, Cochran et al. teach a cleansing composition comprising: from about 3 wt% to about 35 wt% of an anionic surfactant (disodium laureth sulfosuccinate and sodium cocoyl isethionate); from about 5 wt% to about 15% of an amphoteric surfactant (lauramidopropyl betaine); from about 0.01 wt% to about 2 wt% of a cationic polymer (Polyquaternium 10 and Polyquaternium 6); from about 0 wt% to about 1.0 wt% of an inorganic salt (sodium chloride); and an aqueous carrier (water), and wherein the composition is substantially free of sulfate-based surfactant, and has a viscosity from about 3,000 cP to about 12,000 cP, and a pH of greater than about 5.5.
The composition of Cochran et al. differs from the instantly claimed invention in the following way:
the composition of Cochran et al. does not comprise a hydroxamic acid or hydroxamic acid derivative.
Yet, as to 1: Chu et al. teach related cleaning compositions (Pg. 1 lines 11-13). Chu et al. further teach “[d]andruff is an issue that affects many people globally. The condition is manifested by the shedding of clumps of dead skin cells from the scalp. These are white and readily visible therefore they present an aesthetically displeasing appearance. A factor that contributes to dandruff is certain members of the Malassezia yeasts. To combat them, various antidandruff compositions such as shampoos are available. Usually, such shampoos contain surfactants and one or more antidandruff agent. Typical antidandruff agents are metal pyrithione e.g., zinc pyrithione (ZPTO), octopirox (piroctone olamine), azole antimicrobials (e.g., climbazole), selenium sulfide and combinations thereof” (Pg. 1 lines 15-23).
Chu et al. teach “it is preferred that the antimicrobial active according to the present invention is at least one of piroctone, caprylhydroxamic acid, benzohydroxamic acid, or piroctone olamine. It is more preferred that the antimicrobial active according to present invention is at least one of caprylhydroxamic acid or piroctone olamine. It is most preferred that the antimicrobial active is piroctone olamine” (Pg. 6 lines 5-9). Chu et al. further teach compositions comprising an antimicrobial active of hydroxamic acids or hydroxamic acid derivatives preferably comprising 0.01 to 10 wt% of said antimicrobial active (Pg. 7 lines 15-18).
And as taught by Cochran et al., “suitable optional components which can be included in a cleansing composition can include… anti-dandruff agents” (Par. [0128]). Cochran et al. further teach “the compositions can also include antimicrobial agents which are useful as cosmetic biocides and antidandruff agents including: water soluble components such as piroctone olamine” (Par. [0160]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Cochran et al. to include 0.01 to 10 wt% of piroctone olamine as taught by Chu et al. One would have been motivated to do so to modify the composition of Cochran et al. to target the well-known and widespread condition of dandruff and access a new market for the product, with a reasonable expectation of success. Further in regards to the claim limitation that the composition exhibits a % increase in viscosity after 1 week at 65°C of less than about 40%, it is pointed out that as the prior art renders obvious the instant composition, a person of ordinary skill in the art would reasonably expect the same composition to have the same properties as instantly claimed. As such the % increase in viscosity after 1 week at 65°C of less than about 40% would be expected to be the same as the instant composition by one with ordinary skill in the art.
Based on all of the foregoing, claims 1-5, 7-9, 11-12, and 14-18 are rejected as prima facie obvious.
Claim 6 is drawn to the composition of claim 1, wherein the charge density of the cationic polymer is from about 0.5 meq/g to about 1.7 meq/g.
Cochran et al. further teach the use of Poly JR-30M from Amerchol as the Polyquaternium-10 (Par. [0188]), which has a charge density of 1.25 meq/g as evidenced by Geary et al. (number 5 on Pg. 4).
As such, claim 6 is also rejected as prima facie obvious.
Claim 13 is drawn to the composition of claim 1, wherein a ratio of the anionic surfactant to amphoteric surfactant is from about 0.4:1 to about 1.25:1.
The composition of Cochran et al. further teach “the surfactant system can have a weight ratio of anionic surfactant to amphoteric surfactant from about 1:5 to about 10:1” (Par. [0045]), overlapping with the instantly claimed range.
As such, claim 13 is also rejected as prima facie obvious.
Claim 19 is drawn to the composition of claim 1, wherein the composition consists of 9 or fewer ingredients.
Cochran et al. further teaches that ingredients in addition to the anionic surfactant, amphoteric surfactant, cationic polymer, inorganic salt, and aqueous carrier are optional components (Par. [0127-0128]). Inclusion of piroctone olamine as taught by Chu et al. into the composition yields a composition of only 6 ingredients.
As such, claim 19 is also rejected as prima facie obvious.
Claim 20 is drawn to the composition of claim 1, wherein the composition lacks in situ coacervate, as determined by the Microscopy Method to Determine Lack of In Situ Coacervate.
Cochran et al. further teach Example 1 has no coacervate present (Table 1 on pg. 16). The method used to determine the lack of coacervate in the composition does not further impose any structural limitations to the composition and as such, bears no patentable weight.
As such, claim 20 is also rejected as prima facie obvious.
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive in view of the modified grounds of rejection as necessitated by amendment.
Applicant traverses the rejection of claims 1-9 and 11-20 under 35 U.S.C. as being unpatentable over Cochran et al. (US 2019/0105246) in view of Chu et al. (WO 2021/144326).
In regards to applicant’s arguments of unexpected results, applicant is reminded that 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 other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, applicant presents data from examples 7 and 8 to show that the claimed invention has a % increase of less than about 40%, but it is noted that example 8 has a pH of 5.4, which is outside of the claimed pH. This shows that the data presented is not commensurate with the scope of the claims and weakens the argument that applicant is presenting as it shows that the alleged unexpected results are possible outside of the claimed range. Further, it is noted that the difference in % increase is not significant between the two examples. The same can be said about comparative example 3 (C3) as a 43% increase without the use of piroctone olamine and a pH of 5.4 would still be considered “less than about 40%” as there is no specified definition of “about”. To delve a bit deeper, applicant has demonstrated that the viscosity over time in compositions with and without piroctone olamine can be nearly identical. In particular, Comparative example 3 and Example 8 in Table 4 have an initial viscosity that varies only by 3.8% and a viscosity after 1 week that varies only by 5%. As such, applicant has demonstrated that the acceptable stability over time was already present in the prior art compositions that did not contain piroctone olamine. As such, the argument of unexpected results is not sufficient to rebut the prima facie case of obviousness. Further applicant argues that the pH and inorganic salt concentration play a role in the surfactant hydrolysis, however again, the examples pointed to by applicant show that it is possible to achieve the viscosity as claimed without the use of piroctone olamine and the prior art also supports this with example 7, as the inorganic salt concentration and pH are within the claimed ranges (see Cochran, Table 1, example 7).
Further, applicant has presented data for piroctone olamine as the hydroxamic acid or hydroxamic acid derivative, however the scope of the claims is much broader as claim 1 recites only a hydroxamic acid or hydroxamic acid derivative. It is also noted that the limitation of the pH is that it is greater than 5.5, but the data presented only shows an example with pH 5.9 (example 7). It is not clear that the unexpected results that applicant is arguing would be present in all compositions with a pH of greater than 5.5 and any hydroxamic acid or hydroxamic acid derivative.
Further while acknowledging that the data presented does show a difference when piroctone olamine is used (as expected for a composition to be affected by the addition of a compound), it is not clear how this is an unexpected result. Applicant argues against this point by saying that the difference is not an expected effect of adding a compound but a qualitatively superior and unexpected stabilization of viscosity, but due the reasons discussed above, mainly that the data is not commensurate in scope with the claims, the alleged unexpected benefits cannot be acknowledged for the whole scope of the claims.
While it is appreciated that the amendment addressed the issue of not mentioning the viscosity of the composition after a week, the data shown is not commensurate in scope with the claims and as such it is not persuasive in establishing unexpected results in order to overcome the rejections of record.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning and that there is no motivation to combine the prior art, 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). In the instant case, Cochran teaches that the composition comprises an antidandruff agent, such as piroctone olamine and Chu teaches the amount for the antidandruff agent to be used in the composition. Applicant further argues that one of skill in the art would not be looking to Chu et al. to include the hydroxamic acid or hydroxamic derivative for the antimicrobial benefits in order to combat conditions such as dandruff or acne, because the present invention is not looking for antimicrobial agents to treat dandruff. It is pointed out that “[I]t is not necessary in order to establish a prima facie case of obviousness… that there be a suggestion in or expectation from the prior art that the claimed compound or composition will have the same or a similar utility as one newly discovered by applicant” In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1902 (emphasis added). As further discussed in MPEP 2144(IV) “[t]he 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) (see MPEP 2141(I)). As further discussed in MPEP 2141(II), "[I]t is not necessary in order to establish a prima facie case of obviousness that both a structural similarity between a claimed and prior art compound (or a key component of a composition) be shown and that there be a suggestion in or expectation from the prior art that the claimed compound or composition will have the same or a similar utility as one newly discovered by applicant " ) (emphasis added); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972) ("The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be prima facie obvious from the purpose disclosed in the references.") Further still, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023).
As such, it is not necessary for the motivation for inclusion of a hydroxamic acid or hydroxamic acid derivative in the composition of Cochran et al. to be to provide a stable shampoo composition with an acceptable and consistent viscosity as made and over time. As such, it is MAINTAINED that Chu et al. properly motivate the inclusion of piroctone olamine in the composition of Cochran et al.
As such, the rejections of record are maintained over the claims as obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9, 11-13, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 and 19-20 of copending Application No. 17/961,148 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of copending application ‘148 is drawn to a clear cleansing composition comprising: from about 3 wt% to about 35 wt% of an anionic surfactant; from about 5 wt% to about 15% of an amphoteric surfactant; from about 0.01 wt% to about 2 wt% of a cationic polymer; from about 0 wt% to about 1.0 wt% of inorganic salts; from about 0.01% to about 10% of a hydroxamic acid or hydroxamic acid derivative; an aqueous carrier, wherein the composition is substantially free of sulfate based surfactant and wherein the composition has a %T value of greater than about 70. Claim 10 of copending application ‘148 is drawn to the composition of claim 1 wherein the composition has a viscosity greater than about 2000 cP. Claims 1 and 10 of copending application ‘148 anticipate instant claim 1. Claims 2-9 and 11 of copending application ‘148 overlap with instant claims 2-9 and 11-12. Claims 12-17 of copending application ‘148 are identical in scope to instant claims 13 and 15-18. Claims 19-20 of copending application ‘148 overlap with instant claims 19-20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9, 11-13, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-18 of copending Application No. 19049671 in view of Chu et al. (WO 2021/144326; of record).
19049671 teaches a shampoo composition comprising a stable shampoo composition comprising: A. a surfactant system comprising: i. about 3% to about 35% of an anionic surfactant; ii. about 5% to about 15% of an amphoteric surfactant; wherein the surfactant system is substantially free of sulphated surfactants; B. about 0.01% to about 2% of a cationic polymer; C. about 0.15% to about 1.5% of a thickener comprising sclerotium gum; wherein the composition has a viscosity of greater than 2500 cP and a pH of greater than 5.5 (see claim 1). Further claim 2 recites the limitation of the composition comprising less than about 1% of an inorganic salt (see claim 2). The list of inorganic salts in claim 3 is identical to the list in instant claim 7.
In regards to claims 4-5 of 19049671, the viscosity and pH overlaps with the ranges in the instant claims.
In regards to claims 8-9 and 17, there is no mention of alkyl polyglucoside, fatty esters, or silicones in the instant claims, thus are free of them.
In regards to claims 12-14, the lists of components are identical to the instant claims.
In regards to claims 15-16, the composition teaches the use of piroctone olamine in the composition.
In regards to claim 18, the limitation is identical to instant claim 19.
19049671 is silent on the amount of hydroxamic acid or hydroxamic acid derivative (i.e., piroctone olamine).
The teachings of Chu et al. have been described supra.
In regards to claims 1-9, 11-13, and 15-20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 19049671 and Chu et al. to formulate a composition as instantly claimed as both references
teach compositions comprising similar compounds. Further, 19049671 teaches that the composition comprises compounds piroctone olamine but is silent on the amounts used and Chu et al. gives one with ordinary skill in the art an idea of what amounts these compounds are used in a similar composition. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of 19049671 with the amounts of Chu et al. according to the known method of making a topical composition (see Chu et al, Examples, method 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
In regards to claims 6, 10, and 11 of the 19049671, specifically to the limitations of “wherein the stable shampoo composition has a yield stress of greater than…Test Method”, a %T at 600nm of greater than 70%, and wherein the shampoo lacks an in situ coacervate, the combination of teachings of 19049671 and Chu renders it obvious to arrive at the composition as instantly claimed. As the combined teachings of the prior art arrives at the composition as claimed, the properties applicant discloses and/or claims would necessarily follow absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection.
Claims 1-9, 11-13, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18637740 in view of Cochran et al. (US 2019/0105246; of record) and Chu et al. (WO 2021/144326; of record).
18637740 teaches a cleansing composition comprising: a) about 3 wt % to about 35 wt % of an acyl taurate anionic surfactant; about 3 wt % to about 15% of an amphoteric surfactant; about 0.01 wt % to about 2 wt % cationic polymer having a weight average molecular weight of 300,000 g/mol to about 3,000,000 g/mol; about 0 wt % to about 1.0 wt % of inorganic salts; and an aqueous carrier, wherein the composition is substantially free of sulfate-based surfactant and does not form a coacervate prior to use. Dependent claims 2-3 list examples of acyl taurate anionic surfactants, all of which fall under the category of an anionic surfactant of the instant claims. Claims 4-6 and 13 list examples of cationic polymers, inorganic salts, and amphoteric surfactants that are identical to those in the instant claims. Claim 7 teaches a viscosity that overlaps with the instant claims. Claims 8-12 describe additional components and forms that the composition comprises.
18637740 is silent on the use and amount of hydroxamic acid or hydroxamic acid derivative (i.e., piroctone olamine).
The teachings of Cochran et al. and Chu et al. have been described supra.
In regards to claims 1-9, 11-13, and 15-20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 18637740 with Cochran et al. and Chu et al. to formulate a composition as instantly claimed as 18637740 and Cochran teach compositions comprising similar compounds. Further, Cochran et al. teaches that the composition comprises compounds piroctone olamine but is silent on the amounts used and Chu et al. gives one with ordinary skill in the art an idea of what amounts these compounds are used in a similar composition. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of 18637740 with the compounds and amounts of Cochran et al. and Chu et al. according to the known method of making a topical composition (see Chu et al, Examples, method 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
This is a provisional nonstatutory double patenting rejection.
Claims 1-9, 11-13, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11904036 in view of Cochran et al. (US 2019/0105246; of record) and Chu et al. (WO 2021/144326; of record).
11904036 teaches a cleaning composition comprising about 3 wt % to about 35 wt % of an anionic surfactant; about 5.8 wt % to about 15% of an amphoteric surfactant; about 0.01 wt % to about 2 wt % cationic polymer; about 0 wt % to about 1.0 wt % of inorganic salts; and an aqueous carrier, wherein the composition is substantially free of sulfate-based surfactant, does not form a coacervate prior to use, and has a viscosity of about 100 cP to about 15,000 cP measured at 26.6° C with a Brookfield R/S Plus Rheometer at 2 s−1. The list of anionic surfactants, cationic polymers, inorganic salts, and amphoteric surfactants, as well as the properties thereof overlap with those of the instant claims (see 11904036, claims 2-7 and 14-15). Claims 8-13 describe additional components and forms that the composition comprises.
11904036 is silent on the use and amount of hydroxamic acid or hydroxamic acid derivative (i.e., piroctone olamine).
The teachings of Cochran et al. and Chu et al. have been described supra.
In regards to claims 1-9, 11-13, and 15-20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 11904036 with Cochran et al. and Chu et al. to formulate a composition as instantly claimed as 11904036 and Cochran teach compositions comprising similar compounds. Further, Cochran et al. teaches that the composition comprises compounds piroctone olamine but is silent on the amounts used and Chu et al. gives one with ordinary skill in the art an idea of what amounts these compounds are used in a similar composition. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of 11904036 with the compounds and amounts of Cochran et al. and Chu et al. according to the known method of making a topical composition (see Chu et al, Examples, method 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claims 1-9, 11-13, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11992540 B2 in view of Cochran et al. (US 2019/0105246; of record) and Chu et al. (WO 2021/144326; of record).
11992540 teaches a cleansing composition comprising: a) about 3 wt % to about 35 wt % of an anionic surfactant; b) about 3 wt % to about 15% of an amphoteric surfactant; c) about 0.01 wt % to about 2 wt % of a cationic polymer having a weight average molecular weight of 300,000 g/mol to about 3,000,000 g/mol; d) about 0 wt % to about 1.0 wt % of inorganic salts; and e) an aqueous carrier, wherein the composition is substantially free of sulfate-based surfactant and does not form a coacervate prior to use. The list of anionic surfactants, cationic polymers, inorganic salts, and amphoteric surfactants, as well as the properties thereof overlap with those of the instant claims (see 11992540, claims 1-6 and 13-16). Claim 7 teaches a viscosity that overlaps with the instant claims as well. Claims 8-12 describe additional components and forms that the composition comprises and claims 17-19 recite different embodiments of the composition with similar amounts as the instant claims.
11992540 is silent on the use and amount of hydroxamic acid or hydroxamic acid derivative (i.e., piroctone olamine).
The teachings of Cochran et al. and Chu et al. have been described supra.
In regards to claims 1-9, 11-13, and 15-20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of 11992540 with Cochran et al. and Chu et al. to formulate a composition as instantly claimed as 11992540 and Cochran teach compositions comprising similar compounds. Further, Cochran et al. teaches that the composition comprises compounds piroctone olamine but is silent on the amounts used and Chu et al. gives one with ordinary skill in the art an idea of what amounts these compounds are used in a similar composition. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of 11992540 with the compounds and amounts of Cochran et al. and Chu et al. according to the known method of making a topical composition (see Chu et al, Examples, method 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive.
In response, the examiner notes that a request to address the issue further upon an indication of allowance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). As set forth above, the double patenting rejections of claims 1-9 and 11-20 are maintained.
Conclusion
No claims allowed.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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