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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/26/26 has been entered.
Claims 1, 3, 4, 7-17, and 19-21 are pending. Claims 3, 12-14, 16 and 17 have been withdrawn. Claims 1 and 15 have been amended. Claims 1, 4, 7-11, 15, and 19-21 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Election/Restrictions
Applicant's election with traverse of the invention of Group I, Claims 1-11 and 15, and the species of:
Species (A): trimethylsiloxysilicate;
Species (B): High-molecular-weight dimethylpolysiloxane, viscosity 20,000,000 mm2/s (Silsoft B3020, Component B, in formula (1), each of R11, R12, and R13 is a methyl group): and
Species (C): (Bisisobutyl PEG-15/amodimethicone) copolymer (SS-3588, Component C), in the reply filed on 5/30/25 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 8 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites “wherein the degree of polymerization of the component (B) is 650 or more”, however, claim 1 has been amended to include this language in line 6-7 on page 3 “…n indicates a degree of polymerization, and is a number of 650 or more”. Therefore, claim 4 does not further limit claim 1.
Claim 8 recites “wherein a total content of the components (A) to (C) in the cosmetic composition is 0.1% by mass or more and 50% by mass or less”. However, claim 1 has been amended to recite ranges of (A) to (C) which total 1.5-50 % by mass. Claim 8 expands claim 1 by allowing for totals between 0.1 and 1.5 % by mass. Therefore, claim 8 does not further limit claim 1.
Claim 19 recites a Markush group of component (E), however, claim 1 has been amended to recite the same Markush group in lines 11-18 on page 3. Therefore, claim 19 does not further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4, 7-11, 15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Terada (JP 2009/298743-A) in view of Reich et al. (US 6,287,546; 2001).
Terada teaches a hair detergent having an appropriate viscosity, a good foaming property with a fine foam quality having a good slidability on washing the hair, a smooth feeling on rinsing and also a good low temperature stability (e.g. abstract). Terada discloses the inclusion of two or more kinds of silicones may be used in combination, including the high-molecular weight organopolysiloxane KF-96H-1,000,000 (i.e. component (B)) and an amino-modified silicone including SS-3588 (i.e. component (C) bisisobutyl PEG-15/amodimethicone as evidenced by Applicant’s election and Specification) (e.g. pages 7-8). Terada teaches 0.01-10% of the two or more silicones (i.e. (B)+(C)) (e.g. page 8). Assuming a 50/50 split for the two silicones results in 0.005-5% (B) and 0.005-5% (C), which overlap the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I). Terada further teaches the inclusion of an oil agent, including hydrocarbons and higher alcohols in an amount of 0.1 to 2% by mass, and a viscosity modifier, including ethanol and benzyl alcohol (i.e. liquid organic solvents) in an amount of 0.01 to 5% by mass, which overlap with the claimed range (e.g. page 9).
Terada does not teach the inclusion of a silicone film-forming agent (A) or amount thereof. This is made up for by the teachings of Reich et al.
Reich et al. teach improved stabilized shampoo compositions containing siloxysilicate materials (e.g. abstract). Reich et al. teach 0.1-15 w% of the siloxysilicates (A) (e.g. Claim 1), which overlaps with the claimed range, and further teach that the siloxysilicates material is trimethylsiloxysilicate (e.g. column 5, lines 13-25; Claim 15). Reich et al. teach that it is an object of the invention to provide shampoo compositions which contain MQ resins and to retain the stability of the compositions which can be formulated with a variety of MQ resins depending on the types of properties desired, for example, increased shine, conditioning effects, reduced combing force, curl retention, volume and/or better manageability (e.g. column 1, lines 39-56).
Regarding Claims 1, 4, 8, 15, and 19, it would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions are useful as hair shampoos and one of ordinary skill would have been motivated in order to provide the benefits of slidability on washing the hair, a smooth feeling on rinsing, increased shine, conditioning effects, reduced combing force, curl retention, volume and/or better manageability, as taught by Terada and Reich et al. In addition, "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).
Regarding Claim 7, Terada teaches 0.01-10% of the two or more silicones (i.e. (B)+(C)) (e.g. page 8). Assuming a 50/50 split for the two silicones results in 0.005-5% (B) and 0.005-5% (C). Reich et al. teach 0.1-15 w% of the siloxysilicates (A) (e.g. Claim 1). This results in a ratio of C/(A+B+C) of (0.005-5)/(0.11-25), or approximately 0.02-50 wt%, which overlaps the claimed ratio and total. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 9, Terada further teaches the inclusion of titanium oxide, which as evidenced by [0091] is a functional powder (e.g. page 9).
Regarding Claims 10 and 11, the limitations are directed to an intended use and do not structurally further limit claim 1. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the composition is taught by Terada and Reich et al. In addition, both Terada and Reich et al. teach that the compositions are for hair and may further comprise dyes (e.g. Terada page 9, and Reich Claim 22).
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Terada (JP 2009/298743-A) in view of Reich et al. (US 6,287,546; 2001) as applied to claims 1, 4, 7-11, 15, and 19 above, and further in view of Wells et al. (US 5,883,058; 1999).
Regarding Claims 1, 4, 7-11, 15, and 19 the teachings of Terada and Reich et al. are described supra.
Terada further teaches the inclusion of an oil agent, including hydrocarbons and higher alcohols, and a viscosity modifier, including ethanol and benzyl alcohol (i.e. liquid organic solvents) (e.g. page 9), but does not teach the inclusion of isododecane. This is made up for by the teachings of Wells et al.
Wells et al. teach hair shampoo compositions which have improved cleansing, lathering, and styling benefits comprising an alkyl glyceryl ether sulfonate surfactant, a hair styling polymer, a non-polar volatile solvent, and water (e.g. abstract). Wells et al. teach that styling agents, such as styling polymers, cannot be readily incorporated into conventional shampoos without suppressing the lathering and cleansing ability of the shampoos, or the ultimate deposition and performance of the styling polymer (e.g. column 1, line 53-60). Wells et al. teach that upon deposition of the polymer and solvent mixture onto the hair, the solvent is volatilized leaving only the styling polymer on the hair, thus providing the maximum styling benefits (e.g. column 7, lines 26-29). Wells et al. teach that the non-polar solvent is preferably isododecane (e.g. column 7, lines 34-59; Examples).
Regarding Claims 20 and 21, it would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as all of Terada, Reich, and Wells are useful as hair shampoos and one of ordinary skill would have been motivated in order to provide the benefits of improved cleansing, lathering, and styling benefits, as taught by Wells et al. In addition, "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).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4, 7-11, 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/713,556 in view of Terada (JP 2009/298743-A).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claim require, a cosmetic composition comprising (A) a silicone film-forming agent, and (B) a high-molecular-weight organopolysiloxane (i.e. having a degree of polymerization of 100 or more).
Copending ‘556 does not claim the inclusion of component (C) an organopolysiloxane having a cationic group, other than the component (A) and the component (B). This is made up for by the teachings of Terada.
Terada discloses the inclusion of two or more kinds of silicones may be used in combination, including the high-molecular weight organopolysiloxane KF-96H-1,000,000 (i.e. component (B)) and an amino-modified silicone including SS-3588 (i.e. component (C) bisisobutyl PEG-15/amodimethicone as evidenced by Applicant’s election and Specification) (e.g. pages 7-8). It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. "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).
This is a provisional nonstatutory double patenting rejection.
Claims 1, 4, 7-11, 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/713,537 in view of Terada (JP 2009/298743-A).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claim require, a cosmetic composition comprising (A) a silicone film-forming agent, and component (B) (C in the instant claims) an organopolysiloxane having a cationic group, other than the component (A),
Copending ‘537 does not claim the inclusion of (B) a high-molecular-weight organopolysiloxane. This is made up for by the teachings of Terada.
Terada discloses the inclusion of two or more kinds of silicones may be used in combination, including the high-molecular weight organopolysiloxane KF-96H-1,000,000 (i.e. component (B)) and an amino-modified silicone including SS-3588 (i.e. component (C) bisisobutyl PEG-15/amodimethicone as evidenced by Applicant’s election and Specification) (e.g. pages 7-8). It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. "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).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments and Declaration
Applicant's arguments filed 5/26/26 have been fully considered but they are not persuasive.
Applicant argues, beginning on page 14 that there is nothing in the cited references which would suggest the combined effect for components (A), (B), (C), and (E).
This is not found persuasive. The layered structure and effects of using the instant composition are not claimed. The claims are directed to a cosmetic composition and not to a method of use. The claimed composition is met by the teachings of Terada and Reich, as described supra. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003).
Regarding the data presented in the Declaration filed on 10/27/26, Applicant further argues, beginning on page 17 that additional Comparative Examples 1 and 2 in which the composition does not contain any (A), a silicone film-forming agent, were prepared and evaluated as described in the above-identified application, and the shampoo resistance for the additional comparative examples was evaluated. The Additional Comparative Examples are inferior in terms of rubfastness (difficulty of color transfer) and shampooing resistance (difficulty of color discoloration by shampooing).
This is not found persuasive. The claims are much broader than the tested compositions, both in terms of ingredients and amounts thereof. It is unclear if the same effect would be seen for all concentrations and structures within the scope of the claims. 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 addition, Reich et al. teach the benefits of silicone (A) of increased shine, conditioning effects, reduced combing force, curl retention, volume and/or better manageability (e.g. column 1, lines 39-56). “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Accordingly, the rejections are maintained.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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