DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 19 December 2025, is acknowledged.
Claims 1, 8, and 10 have been amended.
Claims 3, 7, and 9 have been cancelled.
Claims 14-19 were previously withdrawn from consideration in the non-final Office Action, mailed on 1 October 2025, as being drawn to a nonelected invention.
Claims 1-2, 4-6, 8, 10, and 12-13 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
PEG-115M is the water-soluble polymer and
polyquaternium-10 is the cellulosic cationic polymer.
Objections Withdrawn
Objections to Claims
Applicant’s amendment to claim 10, submitted on 19 December 2025, has overcome the objection to the claim set forth in the Office Action mailed on 1 October 2025. Accordingly, the relevant objection is withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 1-2, 4-6, 8, 10, and 12-13 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendment to claim 1 and in favor of the new grounds of rejection below. The rejection of claims 3, 7, and 9 have been rendered moot by Applicant’s cancellation of the claims.
New Grounds of Rejection
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 1-2, 4-6, 8, 10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Moloney et al. (WIPO International Patent Application Publication No. WO 2016/100000 A1, published on 23 June 2016, hereafter referred to as Moloney) in view of Stephens et al. (European Patent Application No. EP 3478247 A1, published on 8 May 2019, provided by Applicant in the IDS filed on 16 February 2023, references to English translation, hereafter referred to as Stephens).
Moloney teaches a lubricating member for razor cartridges comprising a water-soluble polymer which exhibits improved lubricating properties while being easily manufactured (pg. 1, lines 6-8). The lubricating member is described as a solid, compressed composition which comprises the water-soluble polymer in an amount ranging from 10-90% by weight (pg. 3, line 31 - pg. 4, line 3). A preferred example of a suitable water-soluble polymer is polyethylene oxide, otherwise known as polyethylene glycol (PEG) (pg. 4, lines 5-9). The PEG polymer is taught to preferably have a molecular weight of 300 kDa – 5,000 kDa, such as POLYOX™ COAGULANT, which is otherwise known as PEG-115M (pg. pg. 4, lines 11-19). In a preferred embodiment, PEG-115M is present in an amount of 40-80% by weight, resulting in 4-72% of the total composition, falling within the range recited in amended claim 1. Moloney further teaches that additional solid, dry components can be used in the lubricating material, in a preferred embodiment the cationic cellulose derivative Polymer JR 400®, otherwise known as polyquaternium-10 (pg. 12, line 23 - pg. 13, line 3). The lubricating member may be mounted on the razor cartridge of a hair removal device, either forward and/or aft of the blades, along an “elongated edge”, which is interpreted as a shaving aid strip (pg. 18-20, Hair removal head). The shaving aid composition may be used for wet and/or dry application (pg. 18, Hair removal head, para. 1).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “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). These guidelines apply to the ranges of concentration of water-soluble polymer (PEG-115M) taught by Moloney, which significantly overlaps with the range recited in instant claim 1.
Moloney does not teach the quantity of polyquaternium-10 in their composition. This deficiency is offset by the teachings of Stephens.
Stephens teaches a shaving aid composition that can be added to razor cartridges which exhibits “lubricating properties…with improved visual and tactile aesthetics” (Abstract). To achieve lubrication of skin during shaving while providing appealing visual and tactile aesthetics, Stephens teaches solid filaments that are incorporated onto razor cartridges and contain water-soluble components (pg. 2, Background of the Invention, para. 3-6). The composition comprising the filaments is taught to comprise at least 15% by weight water soluble filament forming material, which in one embodiment may be a quaternary ammonium polymer (pg. 4, para. 4 and pg. 4, para. 9-10). Stephens also teaches that quaternary ammonium polymers may serve as skin care active agents, which are present in an amount from 0-70% w/w, resulting in a range of quaternary ammonium polymer that is 15-70% w/w (pg. 4, para. 5). One specific suitable quaternary ammonium polymer to be UCARE® Polymer JR 400, which is polyquaternium-10. Finally, in Example Filaments 8-9, Stephens teaches their compositions to comprise 42% and 22% w/w quaternary ammonium polymers, respectively.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Stephens to use polyquaternium-10 in the quantity of 20-50% w/w because combining prior art elements from similar inventions impart a known benefit yields predictable results. Moloney teaches shaving aid compositions comprising the PEG polymer PEG-115M and polyquaternium-10, the former in a quantity range that significantly overlaps the range recited instant claim 1. The ordinary artisan would be motivated to use polyquaternium-10 in an amount from 15-70% in view of the teachings of Stephens because Stephens teaches the range to be suitable for shaving aid compositions that impart lubricity and appealing visual and aesthetic properties, which a person of ordinary skill would recognize as desirable. Further, Stephens teaches quantities absent from the teachings of Moloney and would better enable one of ordinary skill to complete the invention of Moloney.
Generally, 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. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moloney teaches the range of 15-70% w/w of polyquaternium-10, which encompasses the claimed range of 20-50% w/w in instant claim 1. Further, Moloney teaches two examples of compositions which contain 42% or 22% w/w quaternary ammonium polymer, and a person of ordinary skill in the art would be able to optimize within the taught range of 15-70% w/w, beginning with the starting concentrations of 42% or 22% w/w, via routine experimentation. As a result, there is a reasonable expectation of success in arriving at the claimed composition and shaving implement in view of the teachings of Moloney and Stephens.
The nitrogen content and viscosity of a polymer is an inherent property of the chemical structure. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01. “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.” Because a shaving aid composition comprising PEG-115M and polyquaternium-10 has been rendered obvious (vide supra), PEG-115M is necessarily is a cellulosic cationic polymer with the nitrogen content and viscosity recited in instant claims 1, 5-6, and 8. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-2, 4-8, 10, and 12-13 in view of the teachings of Moloney and Stephens.
Response to Arguments
The Applicant’s arguments, filed on 19 December 2025, have been fully considered but are not persuasive.
In the penultimate para. of pg. 5, Applicant argues that the Moloney reference does not teach a composition with 40-80% w/w PEG-115M. The reference has been updated to account for the water-soluble polymer being present in an amount from 10-90% of the total composition (Moloney, pg. 3, lines 32-33). The resulting quantity still falls within the claimed range, therefore the Applicant’s argument does not overcome the rejection above.
From the final para. of pg. 5 to para. 1 of pg. 6, Applicant argues that an artisan would not use PEG-115M in an amount from 40-80% w/w because Moloney does not teach a composition with this range, which has been addressed above. In the final para. of pg. 6, Applicant argues that one of ordinary skill in the art would “not disregard the basis for [the PEG] range and arbitrarily apply that range to then substantially change the concentration of those ingredients”. This argument is now moot in view of the new grounds of rejection presented above.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the O’Grady (U.S. Patent Application Publication No. US 2007/0110703 A1, published on 17 May 2007, provided by Applicant in IDS filed on 16 February 2023) and Moloney references in para. 2 of pg. 7, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the O’Grady and Moloney references are both drawn to shaving aid compositions and are therefore in the same field of invention. Because the O’Grady reference is no longer cited in the rejection under 35 U.S.C. § 103, this argument is considered moot.
Finally, in the para. that spans the bottom of pg. 7 and top of pg. 8, Applicant purports to disclose surprising and unexpected results in para. [0042-0048] of the instant specification. Guidelines on determining whether results are expected or unexpected are provided in MPEP § 716.02. To demonstrate that results are unexpected and significant, the Applicant has the responsibility of presenting evidence that establishes “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims” (bold added for emphasis). See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e).
In para. [0043], Applicant claims to compare Example 1 (40-80% w/w PEG-115M, 20-50% w/w polyquaternium-10, and “additional ingredients” to achieve 100%) with Comparative Example 1 and asserts that the Example 1 “scored statistically significantly better in twelve of the thirteen attributes tested in a two-week, five shave per each week test”.
The comparison of Example 1 and Comparative Example 1 is not a persuasive demonstration of unexpected and surprising results. The composition of Comparative Example 1 is not disclosed, therefore no comparison of any particular components can be made nor can any analysis of the claimed ranges be made. Further, the method by which attributes A1-A13 are measured is not defined, so the presented data cannot be analyzed.
In para. [0044-0048], Applicant argues that the use of polyquaternium-10 produces superior results as compared to compositions using polyquaterniums with different nitrogen content and/or viscosity. This is not unexpected because both the Moloney and Stephens references teach the use of polyquaternium-10 in shaving aid compositions. Additionally, the Applicant argues that varying “Wt. %” in Table II does not demonstrate improvements over the claimed Example 1. It is unclear whether the Wt. % values from 20-54.15% are demonstrating changes in the quantity of PEG-115M or polyquaternium-10, and furthermore, these values largely fall within the claimed ranges and are purported not to improve the properties of the composition. Therefore the claim of unexpected and surprising results is not found to be supported.
Further, the Applicant has not demonstrated unexpected results commensurate in scope with the claimed invention. “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” (bold added for emphasis) In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d). The compositions of Comparative Examples 1-7 are unclear, preventing a comparison of values inside and outside the claimed range. Therefore, the original disclosure also does not demonstrate the criticality of the claimed range.
Conclusion
No claims are allowed.
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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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619