The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 4-12, 14, are pending in this application.
Claim 2-3, 13, are deleted.
Claim Rejections - 35 USC § 112
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, 4-12, 14, 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.
The combination of the percentages of the constituents of the composition, claim 1, is not disclosed in the specification or the claims as filed. Therefore, the amendment filed 11/24/25 is deemed new matter and must be deleted.
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.
Claims 1, 4-12, 14, are 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.
The term Comprising is an open-ended term, which implies other silicon compounds other than dimethicone are claimed. Hence, the claims are indefinite.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was filed to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 4-12,14, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pan Vel Farmacias, Anti-Dandruff Shampoo, Record Id. 3900813, Mintel GNPD, April, 2016, in view of Volker et al., DE102010063791 A1, 8/8/2011.
Pan Vel teaches hair composition comprising piroctone olamine, benzophenpne-2, a silicone compound and carriers, which include instantly claimed surfactant. The hair composition is useful as shampoo and/or conditioner. See the entire document
The prior art does not teach %wt. of the ingredients. The invention is still obvious over the prior art in view of Volker et al., which teaches similar composition, wherein %wt. of each active ingredient and the excipients is 0.01-10. See the entire document, particularly [0009], [0024].
“Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum workable ranges”. In re Aller, 105 USPQ 232, 235 (CCPA, 1955), In re Russell, 169 USPQ 426, 439 F2d 1228 (CCPA, 1971). Such is a routine practice in the art, and not significant under the US patent practice. The motivation for adding %wt. to the composition by Pan Vay, is to avoid Pan Val, and because Volker et al., teaches each ingredient is 0.01-10%wt. In the instant, benzophenone is 0.2-10%wt.; piroctone and silicone compound are each 0.01-10%wt. The range by Volker et al., is the same as piroctone and silicone, and embraced the instant range of benzophenone. A POSA who wanted to avoid the prior arts would have known and be motivated to add the %wt. by Volker at the time the invention was made. There is reasonable expectation of success because Applicant did as taught by the prior arts.
The claims are not allowable over the combination of the prior arts and knowledge known in the art.
Response
Applicant's arguments filed 11/24/25 have been fully considered but they are not persuasive. Applicant amends claim 1, and contends the amended combined percentages show unexpected result. The amendment is deemed new matter. Hence, such is not persuasive.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Taofiq A. Solola, whose telephone number is (571) 272-0709.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor Andy Kosar, can be reached on (571) 272-0913. The fax phone number for this Group is (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the Group receptionist whose telephone number is (571) 272-1600.
/TAOFIQ A SOLOLA/Primary Examiner, Art Unit 1625
December 31, 2025
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