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 .
Formal Matters
Receipt of Applicant’s response dated 04/09/2026 is acknowledged.
Claims 1 and 5-11 are pending.
Claims 2-4 are canceled.
Claim 1 is amended.
Claims 1 and 5-11 are under consideration in the instant Office action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/09/2026 has been entered.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objection to the specification set forth in the Office action dated 12/09/2025 is hereby withdrawn in light of Applicant’s amendments to the specification.
Claim Objections
The objections to claim 1 set forth in the Office action dated 12/09/2025 are hereby withdrawn in light of Applicant’s amendments to claim 1.
Claim Rejections - 35 USC § 103
The obviousness rejections set forth in the Office action dated 12/09/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF OBJECTION/REJECTION
Specification
The disclosure is objected to because of the use of trade names/marks without their proper symbol in at least Par. [0021] and [0051] of the specification.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Appropriate correction is required.
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 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Miyoshi et al (US 2015/0239993 A1, published 08/27/2015).
Miyoshi et al teach a surfactant composition that exhibits excellent effects when used as a hair wash composition, and may be in solid form (See entire document, e.g., [0241]-[0242]).
The surfactant composition comprises a cationic group-containing cellulose ether (CCE), one or more surfactants, and water (e.g., Abstract, [0017], [0138], [0141]).
The CCE content in the surfactant composition of the present invention, from the viewpoint of providing the effects of the present invention and the handleability of the surfactant composition, the content is preferably from 0.01 to 10% by mass (e.g., [0139]).
Suitable surfactants include anionic surfactants and nonionic surfactants, wherein suitable anionic surfactants include acylisethionates such as sodium cocoylisethionate and wherein suitable nonionic surfactants include fatty acid alkanolamides such as coconut oil fatty acid monoethanolamide, coconut oil fatty acid N-methylmonoethanolamide, etc. (e.g., [0142], [0144], [0168], [0269]). The content of the surfactant in the surfactant composition of the present invention is, from the viewpoint of providing the effects of the present invention, preferably within a range of from 0.1 to 80% by mass (e.g., [0173]).
The content of water in the surfactant composition of the present invention is, from the viewpoint of providing the effects of the present invention, preferably at least 10% by mass in the surfactant composition and is preferably at most 99.5% by mass (e.g., [0175]).
The surfactant composition of the present invention may additionally contain a cationic polymer than CCE, from the viewpoint of, in application thereof to a hair wash composition, the foam softness and the good finger-combing feeling and the softness in washing hair, and the smoothness property, its sustained feeling, the softness, and the coated feeling in hair rinsing (e.g., [0176]). Suitable cationic polymers other than CCE include cationic galactomannans and cationic synthetic polymers produced through radical polymerization, wherein suitable cationic galactomannans include cationized guar gum such as Jaguar C-14S and Jaguar C-500 (by Rhodia) and wherein suitable cationic synthetic polymers produced through radical polymerization include diallyl quaternary ammonium-acrylic acid copolymers, such as Merquat 295 (by Lubrizol) (e.g., [0177], [0179], [0185]). The content of the other cationic polymer than CCE in the surfactant composition of the present invention is, from the viewpoint of the foam softness, the finger-combability and the softness of hair in hair washing, and the smoothness property, its sustained feeling, the softness, and the coated feeling in hair rinsing in application of the surfactant composition of the present invention to a hair wash composition preferably at least 0.01% by mass and is preferably at most 5% by mass (e.g., [0188]).
Glycerin may be incorporated into the surfactant composition (e.g., [0237]).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Miyoshi et al but such “picking and choosing” within several variables does not necessarily give rise to anticipation (Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989)). That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious” (KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742).
Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed ingredients of a surfactant composition from the disclosure of Miyoshi et al and arrive at a solid surfactant composition used for washing hair comprising from 0.01 to 10% by mass of CCE, from 0.1 to 80% by mass of one or more surfactants being sodium cocoyl isethionate and a fatty acid alkanolamide, such as coconut oil fatty acid monoethanolamide or coconut oil fatty acid N-methylmonoethanolamide, from 10% to 99.5% by mass of water, from 0.01% to 5% by mass of additional cationic polymers being cationized guar gum, such as Jaguar C-14S and Jaguar C-500, and diallyl quaternary ammonium-acrylic acid copolymers, such as Merquat 295, and glycerin, wherein % by mass is relative to surfactant composition.
Sodium cocoyl isethionate is a suitable alkali metal cocoyl isethionate salt (i.e., component (A)) of the instant claims as evidenced by Par. [0016] of the specification. Cationized guar gum, such as Jaguar C-14S and Jaguar C-500, is a suitable cationized guar gum (i.e., component (B)) of the instant claims as evidenced by Par. [0021] of the specification. A diallyl quaternary ammonium-acrylic acid copolymer, such as Merquat 295 (i.e., polyquaternium-22), is a suitable cationized polymer other than cationized guar gum containing a diallyl dimethyl quaternary ammonium halide as a constitutional unit (i.e., component (D)) of the instant claims as evidenced by Par. [0033] and [0051] of the specification. Glycerin is a suitable polyhydric alcohol (i.e., component (E)) of the instant claims as evidenced by Par. [0038] of the specification. A fatty acid alkanolamide, such as coconut oil fatty acid monoethanolamide or coconut oil fatty acid N-methylmonoethanolamide, is a suitable coconut oil fatty acid (i.e., component (F)) of the instant claims.
Regarding the wt% and weight ratio requirements of the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Specifically regarding the weight ratio requirements of instant claims 9-10, it would have been prima facie obvious to optimize via routine experimentation the amount of glycerin to add to the composition and arrive at the ranges of instant claims 9-10. 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 (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Thus, the composition of Miyoshi et al renders obvious instant claims 1 and 5-11.
Response to Applicant’s Arguments
Applicant’s arguments filed on 04/09/2026 have been considered.
The arguments regarding the obviousness rejections are moot as the rejections under 35 USC 103 over each of Thomas et al and Botto et al set forth in the Office action dated 12/09/2025 have been withdrawn. Specifically regarding the argument that the amount of component (A) is different from both Thomas et al and Botto et al and neither references teaches the proposed specific ranges that are critical, the Examiner notes that, as can be seen in the new grounds of rejection under 35 USC 103 above, the amounts of components (A), (B), and (C) as recited in amended claim 1 are all rendered obvious by those taught by Miyoshi et al. Further, as can be seen in the new grounds of rejection under 35 USC 103 above, Miyoshi et al teach that by using the CCE in an amount of from 0.01 to 10% by mass, desired handleability of the composition is achieved.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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