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 .
Status of Claims
Receipt of Applicant’s response, dated 09/15/2025 and 09/18/2025, is acknowledged.
Claims 1-2 and 5-11 are pending.
Claims 3-4 are canceled.
Claims 1 and 10 are amended.
Claims 1-2 and 5-11 are under consideration in the instant Office action.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objection regarding the embedded hyperlink and/or other form of browser-executable code in Par. [0005] of the Specification set forth in the Office action dated 05/13/2025 is hereby withdrawn in light of Applicant’s amendments to the Specification.
Claim Objections
The claim objections set forth in the Office action dated 05/13/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 102
The anticipation rejection of claims 1, 8-9, and 11 by Thomas et al set forth in the Office action dated 05/13/2025 is hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejections of claims 1-11 over Thomas et al and of claims 1-11 over Botto et al in view of Carew et al are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments.
OBJECTIONS/REJECTIONS MAINTAINED
Specification
The disclosure remains objected to because the replacement tables in Par. [0058] on Pages 22 and 23 of the amended Specification remain illegible.
Appropriate correction is required.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 1 is objected to because 1) each recitation of “component A”, “component B”, and “component C” in lines 4-7 should be amended to “component (A)”, “component (B)”, and “component (C)”, respectively, in order to improve claim consistency and readability and 2) element (iii) spanning the last two lines should be amended to recite “of the total weight of the solid hair detergent composition” following each recitation of “wt%” in order to improve claim consistency and readability.
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 1-2 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al (US 10,555,890 B2, published 02/11/2020, cited in IDS dated 02/23/2023).
Thomas et al teach an aqueous cosmetic composition which is in the form of a flexible solid, comprising from 25% to 70% by weight of one or more anionic surfactants chosen from acyl isethionates and one or more types of non-hollow solid particles, as a composition for cleaning or washing keratin materials, in particular the hair (See entire document, e.g., Abstract).
The at least one anionic surfactant that may be used in the composition includes alkali metal salts (e.g., sodium) of cocoyl isethionate (e.g., Col. 3 Lines 60-64, Col. 4 Lines 6-14). The total amount of acyl isethionates in the composition is from 15% to 40% by weight, relative to the total weight of the composition (e.g., Col. 5 Lines 52-56).
Thomas et al teach that the composition comprises from 20% to 80% by weight of water relative to the total weight of the composition (e.g., Col. 38 Lines 24-31).
Thomas et al teach that the composition may comprise at least one conditioning agent, wherein conditioning agents that may be used include cationic polymers, including the dimethyldiallylammonium salt (for example chloride) homopolymer for example sold under the name Merquat 100 by the company Nalco (and homologues thereof of low weight-average molar masses) and the copolymers of diallyldimethylammonium salts (for example chloride) and of acrylamide, sold in particular under the name Merquat 550 or Merquat 7SPR (e.g., Col. 13 Lines 24-27, Col. 20 Lines 38-41, Col. 24 Lines 26-34) as well as cationic guar gums (e.g., Col. 22 Lines 61-67). The conditioning agents are used in an amount from 0.001% to 20% by weight, relative to the total weight of the composition (e.g., Col. 31 Lines 41-46).
Thomas et al additionally teach that the composition may comprise at least one polyol from 0.1% to 60% by weight, relative to the total weight of the composition (e.g., Col. 35 Lines 43-44, Col. 36 Lines 29-33).
Thomas et al teach that the composition may comprise fatty alcohols, including coconut oil (e.g., Col. 18 Lines 19-20).
The aqueous cosmetic composition in the form of a flexible solid of Thomas et al comprising:
alkali metal salts (e.g., sodium) of cocoyl isethionate as the at least one anionic surfactant from 15% to 40% by weight;
one or more types of non-hollow solid particles;
water from 20% to 80% by weight;
cationic guar gums and dimethyldiallylammonium chloride homopolymer and/or copolymers of diallyldimethylammonium chloride and of acrylamide as the at least one conditioning agent from 0.001% to 20% by weight;
at least one polyol from 0.1% to 60% by weight; and
coconut oil as a fatty acid;
where weight is relative to the total weight of the composition, renders obvious the solid hair detergent composition of instant claims 1-2 and 5-11.
The dimethyldiallylammonium chloride homopolymer and/or copolymers of diallyldimethylammonium chloride and of acrylamide in the composition of Thomas et al is a suitable cationized polymer other than cationized guar gum that is a polymer containing a diallyl dimethyl quaternary ammonium halide as a constitutional unit (i.e., component (D)) of the instant claims.
The ranges of amounts of the components in the composition of Thomas et al render obvious the weight ratios of the components required by instant claims 2, 7, and 9-10. 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)).
The amount of water in the modified cleansing composition of Thomas et al being from 20% to 80% by weight, relative to the total weight of the composition, renders obvious element (ii) of instant claim 1 requiring that the content of water be from 5 to 19 wt%, e.g., the composition of Thomas et al comprising 20 wt% water renders obvious the composition of the instant claims comprising 19 wt% of water. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). 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)). See MPEP 2144.05.
The specific combination of features claimed is disclosed within the broad generic ranges taught by Thomas 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)). Where, as here, the reference does not provide any motivation to select this specific combination of variables of an aqueous cosmetic composition in the form of a flexible solid anticipation cannot be found.
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 an aqueous cosmetic composition in the form of a flexible solid from within the prior art disclosure of Thomas et al, to arrive at the composition of the instant claims “yielding no more than one would expect from such an arrangement.”
Claims 1-2 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Botto et al (US 2020/0078284 A1, published 03/12/2020, cited in Notice of References Cited dated 05/13/2025) in view of Carew et al (US 2003/0008790 A1, published 01/09/2003, cited in Notice of References Cited dated 05/13/2025).
Botto et al teach cleansing compositions that are free of sodium chloride and sulfate-based surfactants, are particularly useful for cleaning and conditioning the body and hair, and may be in the form of an aqueous gel (See entire document, e.g., [0001], [0207]).
The cleansing compositions of Botto et al comprise (a) about 1 to about 25 wt. % of one or more non-sulfate anionic surfactants, (b) about 1 to about 15 wt. % of one or more amphoteric surfactants, (c) about 1 to about 15 wt. % of one or more nonionic surfactants, (d) about 0.01 to about 10 wt. % of one or more hydrophobically modified poly(meth)acrylates, (e) about 0.1 to about 10 wt. % of one or more silicones, (f) about 50 to about 95 wt. % of water, wherein all weight percentages are based on the total weight of the cleansing composition (e.g., [0023]-[0030]).
The non-sulfate anionic surfactants include acetyl isethionates including sodium isethionate and sodium cocoyl isethionate (e.g., [0035]-[0038]). The total amount of acyl isethionates in the cleansing composition is typically from about 0.01 to about 20 wt. % based on the total weight of the cleansing composition (e.g., [0039]).
The one or more nonionic surfactants include fatty acid alkanolamides including coconut fatty acid monoisopropanolamide, coconut acid monoethanolamide, coconut fatty acid diethanolamide, polyoxyethylene coconut fatty acid monoethanolamide, coconut fatty acid monoethanolamide, coconut fatty acid diisopropanolamide, and mixtures thereof (e.g., [0104], [0109]). The total amount of alkanolamides in the cleansing composition is typically about 0.01 to about 15 wt. %, based on the total weight of the cleansing composition (e.g., [0116]).
The cleansing compositions may optionally include one or more conditioning agents such as cationic polymers (e.g., [0161]). Cationic conditioning polymers that can be used include cationic guar gum derivatives, such as guar hydroxypropyltrimonium chloride, and cationic diallyl quaternary ammonium-containing polymers including, for example, dimethyldiallylammonium chloride homopolymer (referred to as Polyquaternium-6) and copolymers of acrylamide and dimethyldiallyammonium chloride (referred to as Polyquaternium-7) (e.g., [0173], [0175]). The total amount of cationic conditioning polymers is typically in an amount of about 0.01 to about 10 wt. % based on the total weight of the cleansing composition (e.g., [0179]).
The cleansing compositions may optionally include one or more water-soluble solvents (e.g., [0226]). Non-limiting examples of water-soluble solvents include, for example, organic solvents selected from glycerin, alcohols (for example, C1-12, C1-10, C1-8, or C1-4 alcohols), polyols (polyhydric alcohols), and glycols (e.g., [0228], [0231]). The total amount of water-soluble solvents in the cleansing compositions is typically in an amount of about 0.01 to about 15 wt. % based on the total weight of the cleansing composition (e.g., [0277]).
Botto et al do not teach the cleansing compositions comprising 5 to 25 wt% of water.
These deficiencies are made up for in the teachings of Carew et al.
Carew et al teach that typical hair care conditioning compositions in the form of liquids, cream-like emulsions, or lotions suffer from the disadvantage of being wasted because they are difficult to measure out, they escape through the fingers when being held in the hand, and also they can escape from their packaging e.g. during transport (e.g., [0004]), and that when formulated in solid form overcome these disadvantages while also the smaller size requires less packaging and is more handy to transport (e.g., [0005]). Carew et al teach that solid hair conditioner formulations of the prior art require the use of additional components not generally present in conventional hair conditioner compositions in order to provide structure/rigidity to the compositions, which leads to negative effects on conditioning performance as well as added expense of the additional components (e.g., [0015]-[0016]). In contrast, Carew et al teach a hair conditioner composition in solid form that can be prepared without the need for additional structuring aids by simply lowering the water content of a conventional conditioner composition (e.g., [0017]), is cheap, i.e. it does not require any specialized structuring agents, is easily rinsed from the hair, has a hardness which allows it to be readily applied to the hair whilst maintaining its shape, and because essentially the same formulation is used as in a conventional liquid conditioner apart from the level of water, it is possible to manufacture solid and liquid forms of product on the same site which gives a considerable saving in production cost (e.g., [0018]).
The hair conditioner composition in solid form comprises:
One or more conditioning surfactants from 5 wt% to 25 wt% (e.g., [0026], [0060]);
A fatty alcohol material from 5 wt% to 65 wt% (e.g., [0061], [0065]); and
Water in an amount of most preferably less than 50 wt% (e.g., [0067]).
The hair conditioner composition in solid form may comprise other ingredients normally used in conditioner formulations including polyols such as glycerine and polypropylene glycol, where the optional ingredients are included individually at a level of up to 25 wt % (e.g., [0069]).
The hair conditioner composition in solid form may comprise a cationic polymer for enhancing conditioning performance of the conditioner (e.g., [0070]), including guar hydroxypropyltrimonium chloride (e.g., [0088]) and cationic diallyl quaternary ammonium-containing polymers including dimethyldiallyammonium chloride homopolymer and copolymers of acrylamide and dimethyldiallylammonium chloride, referred to as Polyquaternium 6 and Polyquaternium 7, respectively (e.g., [0080]).
The hair conditioner composition in solid form may comprise a dispersed, nonvolatile, water-insoluble oily conditioning agent (e.g., [0138]) including coconut oil (e.g., [0156]-[0157]).
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 lower the water content of the cleansing composition of Botto et al in order to formulate the composition into solid form. One of ordinary skill in the art would have been motivated to do so because Carew et al teach that formulating a conventional hair composition as a solid by simply lowering the water content offers the advantages of a solid composition that is cheap, i.e. it does not require any specialized structuring agents, is easily rinsed from the hair, has a hardness which allows it to be readily applied to the hair whilst maintaining its shape, and has a lower production cost (supra). There would have been a reasonable expectation of success because Carew et al teach that conventional hair compositions can be formulated as a solid by simply lowering the water content (supra) and, further, because the compositions of Botto et al and Carew et al share many of the same ingredients (See teachings of each of Botto et al and Carew et al supra), there is a reasonable expectation of compatibility.
The modified cleansing composition of Botto et al in view of Carew et al comprising:
sodium isethionate and sodium cocoyl isethionate as the one or more non-sulfate anionic surfactants from about 0.01 to about 20 wt. %;
one or more amphoteric surfactants from about 1 to about 15 wt. %;
coconut fatty acid monoisopropanolamide, coconut acid monoethanolamide, coconut fatty acid diethanolamide, polyoxyethylene coconut fatty acid monoethanolamide, coconut fatty acid monoethanolamide, and/or coconut fatty acid diisopropanolamide as the one or more nonionic surfactants from about 0.01 to about 15 wt. %;
one or more hydrophobically modified poly(meth)acrylates from about 0.01 to about 10 wt. %;
one or more silicones from about 0.1 to about 10 wt. %;
guar hydroxypropyltrimonium chloride, dimethyldiallylammonium chloride homopolymer, and/or copolymers of acrylamide and dimethyldiallyammonium chloride as the one or more conditioning agents about 0.01 to about 10 wt. %;
polyhydric alcohols and/or glycerin as the one or more water-soluble solvents from about 0.01 to about 15 wt. %; and
less than 50 wt% of water,
where wt. % is based on the total weight of the cleansing composition, renders obvious the solid hair detergent composition of instant claims 1-2 and 5-11.
The sodium cocoyl isethionate in the modified cleansing composition of Botto et al is a suitable alkali metal cocoyl isethionate salt (i.e., component (A)) of the instant claims. The guar hydroxypropyltrimonium chloride in the modified cleansing composition of Botto et al is synonymous with cationized guar gum (i.e., component (B)) of the instant claims as evidenced by Par. [0019] of the instant specification. The dimethyldiallylammonium chloride homopolymer, and/or copolymers of acrylamide and dimethyldiallyammonium chloride in the modified cleansing composition of Botto et al is a suitable cationized polymer other than cationized guar gum that is a polymer containing a diallyl dimethyl quaternary ammonium halide as a constitutional unit (i.e., component (D)) of the instant claims. The sodium isethionate in the modified cleansing composition of Botto et al is a suitable alkali metal isethionate salt (i.e., component (G)) of the instant claims.
The ranges of amounts of the components in the modified cleansing composition of Botto et al render obvious the weight ratios of the components required by instant claims 7 and 9-10. The amount of water in the modified cleansing composition of Botto et al being less than 50 wt% based on the total weight of the cleansing composition renders obvious element (ii) of instant claim 1 requiring that the content of water be from 5 to 19 wt%. 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)).
Response to Applicant’s Arguments
Applicant’s arguments filed on 09/18/2025 have been considered.
Applicant argues that with the amendments to claim 1 to recite elements (i), (ii), and (iii), instant claim 1 is more clearly distinguished over the cited references applied in the prior art rejections set forth in the Office action dated 05/13/2025. Applicant argues the unexpected criticality of the ranges specified in element (i) of instant claim 1 via a Declaration under 37 CFR 1.132, for which Norifumi Mori states a content of component (A) below the claimed range and the component (B) to component (C) ratio below the claimed range diminishes at least one of the handleability and crack suppression properties. Applicant argues that none of the cited references suggest any crack suppression during storage, and the presently claimed solid hair detergent composition comprising element (ii) of instant claim 1 with components (A) and (B) unexpectedly suppresses cracking during storage and using a content of water that exceeds the specified range in element (ii) results in poor crack suppression. Applicant argues that none of the cited references produce a solid composition as claimed which is easily transferred to the hand when moistened and that does not diverge from a shape to which it is molded and that element (iii) of instant claim 1 represents exemplified compositions which unexpectedly achieve a desirable handleability and moldability.
The above argument regarding the unexpected criticality of the ranges specified in element (i) of instant claim 1 via a Declaration under 37 CFR 1.132 has been fully considered by the Examiner but is not found persuasive because instant claim 1 does not require that element (i) be present, i.e., instant claim 1 requires that the solid hair detergent composition have element (i), (ii), or (iii) and therefore the argued criticality of a composition having element (i) is not commensurate in scope with the composition of instant claim 1. The above arguments regarding the unexpected results obtained from elements (ii) and (iii) are similarly not found persuasive. 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). Further, the amendments to claim 1 have not distinguished the instant composition over that of the cited references and, as can be seen in the new grounds of rejection above, the cited references do render obvious the composition of instant claim 1, specifically a composition having element (ii). The above arguments regarding that none of the cited references suggest any crack suppression during storage or produce a solid composition as claimed which is easily transferred to the hand when moistened and that does not diverge from a shape to which it is molded has been fully considered by the Examiner but is not found persuasive because the cited references are not required to teach or suggest these features of the claimed composition. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
No claims are allowable.
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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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619