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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 January 2025 has been entered.
Status of Claims
The amendments and arguments filed 27 January 2025 are acknowledged and have been fully considered. Claims 1-20 are currently pending. Claims 1, 3, 5, 8-9, 12, 16, and 18-20 are amended; no claims are cancelled; claims 19-20 withdrawn; no claims are new.
Claims 1-18 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Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation "the total amount of nonionic surfactants with an HLB value of lower than or equal to about 5" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this limitation is interpreted as "the total amount of nonionic surfactants with an HLB value of lower than or equal to about 4".
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.
Claims 1-7 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Mintel (Shampoo & Conditioner Duo, Published Feb 2021; of record) in view of Humblebee & me (“Behentrimonium Chloride”; of record), The Natural Haven (“Ingredients Dictionary: Stearamidopropyl Dimethylamine”; of record), Saffire Blue Inc. (“The HLB System – Choosing which surfactant to use in your formulation”; of record), Convergent Cosmetics (“Emulsions and the HLB System”), and Duggan (“Octyldodecanol for Hair”; of record).
The instant claims are drawn to a hair treatment composition comprising:
from about 0 2% to about 6% by weight of the quaternary alkyl amine behentrimonium chloride;
from about 0.3% to about 1.5% of the tertiary alkyl amine stearamidopropyl dimethylamine;
from about 0.2% to about 2% of at least one nonionic surfactant with an HLB value of greater than or equal to about 15;
from about 0.05% to about 1% at least one nonionic surfactant with an HLB value of less than or equal to about 4;
from about 0.2% to about 2% of at least one branched saturated alkyl alcohol having at least 8 carbon atoms;
at least one solvent; and
further comprising a cationic polymer, carboxylic acids, thickening agents, or combinations thereof;
wherein:
the weight ratio of the total amount of quaternary alkyl amines to the total amount of tertiary alkyl amines ranges from about 3 to about 10;
the weight ratio of nonionic surfactants with an HLB value of greater than or equal to 15 to the total amount of nonionic surfactants with an HLB value of lower than or equal to about 4 ranges from about 3 to about 7; and
the composition is substantially free of silicones.
As thus summarized, the invention reads on claims 1-14 and 16-18.
Mintel teaches on page 2 a conditioner comprising:
the quaternary alkyl amine, behentrimonium chloride;
the tertiary alkyl amine, stearamidopropyl dimethylamine;
the nonionic surfactant with an HLB value of greater than or equal to 15, Ceteareth-20;
the nonionic surfactant Steareth-2;
-
the solvent, water; and
further comprising the cationic polymer, Polyquaternium-4; a carboxylic acid, citric acid; and a thickening agent, hydroxypropyl starch;
wherein:
the composition is free of silicones.
As such, the composition of Mintel differs from the instantly claimed composition in the following ways:
Mintel is silent as to the amount of behentrimonium chloride present in the composition;
Mintel is silent as to the amount of stearamidopropyl dimethylamine present in the composition;
Mintel is silent as to the weight ratio of quaternary alkyl amines to tertiary alkyl amines;
the composition of Mintel does not comprise a nonionic surfactant with an HLB value of less than or equal to about 4;
Mintel is silent as to the amount of the nonionic surfactants present in the composition; and
the composition of Mintel does not comprise an alcohol having at least 8 carbon atoms.
Yet, as to 1: Humblebee & me teaches that behentrimonium chloride “is an excellent conditioner, helping improve comb-through, reduce static, and soften coarse hair” (Pg. 2).
And, as discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the concentration of behentrimonium chloride is clearly a result-effective variable, determining the static reducing and hair softening ability of the composition. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of behentrimonium chloride in order to best achieve the desired results.
As to 2: The Natural Haven teaches that typical conditioners contain less than 5% stearamidopropyl dimethylamine (Pg. 2), overlapping with the instantly claimed range. The Natural Haven further teaches that stearamidopropyl dimethylamine “helps correct the negative charge from shampooing; gives slip to hair without causing excessive build up because it is water soluble unlike oils or silicon; [and] helps to smooth the cuticle and prevent static build up (flyaways!)” (Pg. 2).
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 conditioner of Mintel to include less than 5% stearamidopropyl dimethylamine as taught by The Natural Haven. One would have been motivated to do so to combine the known conditioner of Mintel with the known concentration of stearamidopropyl dimethylamine to yield the predictable result of a conditioner capable of smoothing the cuticle and preventing static build up, with a reasonable expectation of success. Further, as discussed in MPEP 2144.05, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of stearamidopropyl dimethylamine in order to best achieve the desired negative charge correction, cuticle smoothing, and static prevention.
As to 3: Mintel, humblebee & me, and The Natural Haven do not explicitly teach the weight ratio of behentrimonium chloride to stearamidopropyl dimethylamine. However, the optimization of the concentrations of each behentrimonium chloride to stearamidopropyl dimethylamine as discussed above would necessarily result in the optimization of the ratio between them, as it is impossible to change the amount of one without affecting the ratio.
As to 4: Saffire Blue Inc. teaches “HLB values are additive, so if the use of two different surfactants is desired, the HLB will be the weighted average of the HLB values for each product” (Pg. 2). Saffire Blue Inc. further teaches that different HLB value ranges correspond to different surfactant system behaviors e.g., HLB of 13 to 15: Detergent and HLB of 7 to 9: Wetting and spreading agent (Pg. 1).
Convergent Cosmetics teaches nonionic surfactants for cosmetic compositions (Pg. 1), further teaching on pg. 10 surfactants and their corresponding HLB values, including steareth-2 (HLB = 4.9) and glyceryl stearate (HLB = 3.8).
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 Mintel to include glyceryl stearate. It would have been obvious to substitute one nonionic surfactant for another having similar HLB values to obtain the predictable result of a composition having a suitable surfactant system, with a reasonable expectation of success.
As to 5: Saffire Blue Inc. teaches “HLB values are additive, so if the use of two different surfactants is desired, the HLB will be the weighted average of the HLB values for each product” (Pg. 2). Saffire Blue Inc. further teaches that different HLB value ranges correspond to different surfactant system behaviors e.g., HLB of 13 to 15: Detergent and HLB of 7 to 9: Wetting and spreading agent (Pg. 1).
And as discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the concentration of the surfactants are clearly result-effective variables, determining the overall HLB of the composition. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of the surfactants in the composition in order to best achieve the desired HLB and thus, behavior of the composition.
The optimization of concentrations of each of the nonionic surfactants would also necessarily optimize the weight ratio of the total amount of nonionic surfactants with an HLB value of greater than or equal to 15 to the total amount of nonionic surfactants with an HLB value of lower than or equal to about 4.
And, as to 6: Duggan teaches the use of octyldodecanol (i.e., a saturated, branched alcohol containing 20 carbon atoms) “as an emollient, emulsifier, texture enhancer, and anti-foaming agent” (Pg. 1). Duggan further teaches that octyldodecanol “moisturizes scalp and hair… softens skin and hair, and stabilizes beauty formulations” (Pg. 1) as well as there being “no known ingredients that interact with octyldodecanol negatively” (Pg. 2).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified the composition of Mintel, humblebee & me, and The Natural Haven to include octyldodecanol as taught by Duggan. One would have been motivated to do so to combine the known hair care composition of Mintel with the known hair care ingredient octyldodecanol to yield the predictable result of a hair care composition that moisturizes the scalp and hair, with a reasonable expectation of success.
And, as discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the concentration of octyldodecanol is clearly a result-effective variable, determining the scalp moisturizing ability of the composition. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of octyldodecanol in order to best achieve the desired results.
Based on all of the foregoing, claims 1-14 and 16-18 are rejected as prima facie obvious.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mintel, humblebee & me, The Natural Haven, Saffire Blue Inc., Convergent Cosmetics, and Duggan as applied to claims 1-14 and 16-18 above, and further in view of happi (“Baby Shampoo”; of record).
The teachings of Mintel, humblebee & me, The Natural Haven, Saffire Blue Inc., Convergent Cosmetics, and Duggan have been set forth above.
Claim 15 is drawn to the composition of claim 1, having a pH ranging from about 2.5 to about 6.
Mintel, humblebee & me, The Natural Haven, Saffire Blue Inc., Convergent Cosmetics, and Duggan do not teach the pH of the composition.
However, happi teaches “to increase viscosity, adjust shampoo pH down with small amount of dilute citric acid solution” and “[t]o decrease viscosity, adjust pH up with small amount of dilute sodium hydroxide solution” (Pg. 1)
And as discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the pH of the composition is clearly a result-effective variable, determining the viscosity of the composition. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal pH of the composition in order to best achieve the desired results.
As such, claim 15 is rejected as prima facie obvious.
Response to Arguments
Applicant's arguments filed 27 January 2025 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the nonionic surfactant having an HLB value of less than or equal to about 4 are moot in view of the new grounds of rejection set forth above.
Applicant argues on Pg. 10 of the remarks that the Office simply points to MPEP 2144.05 and bases the rejection on what a skilled artisan could have done without proper motivation.
This argument is not persuasive. As discussed in the rejection of claims under 35 U.S.C. 103 above, the concentrations of the various ingredients are directly linked to various tangible properties of the composition (e.g., behentrimonium chloride and the hair softening ability of the composition as taught by Humblebee & me). As such, the ordinarily skilled artisan would be motivated to optimize the various concentrations of ingredients to obtain a composition with desirable properties.
Applicant argues on pg. 10 of the remarks that the instantly claimed invention provides unexpected synergy between the ingredients to provide improved conditioning and cosmetic benefits.
It is well settled that a showing of unexpected results is generally sufficient to overcome a prima facie case of obviousness. In re Albrecht, 514 F.2d 1389 (CCPA 1975). However, as recognized by the court in In re Schulze, 346 F.2d 600 (CCPA 1965), mere arguments are not sufficient to demonstrate unexpected results. Rather, unexpected results must be established by factual evidence by comparing the claimed invention with that of the closest prior art. In re Burckel, 592 F.2d 1175 (CCPA 1979). As discussed by the court in In re De Blauwe, 736 F.2d 699 (Fed. Cir. 1994), “the absence of tests comparing [Applicant’s claimed invention] with those of the closest prior art… constitute mere argument”.
In the instant case, Applicant has not appropriately compared the claimed invention with that of the closest prior art (i.e., the composition taught by Mintel comprising each of behentrimonium chloride, stearamidopropyl dimethylamine, a high HLB nonionic surfactant, and a low HLB nonionic surfactant) and provided factual evidence which Applicant asserts establishes unexpected results of the claimed invention. In particular, Applicant has only compared the instantly claimed invention to comparative examples missing one of ingredients (a)-(d) recited in claim 1.
As such, the allegation of unexpected results is insufficient to overcome the prima facie case of obviousness.
Conclusion
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/PAUL HOERNER/Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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