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 .
Claim Status
Applicant’s claim amendments and arguments in the response filed 24 November 2025 are acknowledged.
Claims 1-15 & 17-23 are pending.
Claims 16 & 24 are cancelled.
Claims 22 & 23 are amended.
Claims 19 & 20 withdrawn.
Claims 1-15, 17, 18 & 21-23 are under consideration.
Examination on the merits is to the extent of the following species:
Polyether-modified polysiloxane-PEG-PPG-4/12 dimethicone;
Cationic Conditioning Agent-Cetrimonium chloride; and
Nonionic Thickening Polymer-Sclerotium gum
Withdrawn Objections/Rejections
The objection to claim 22 is withdrawn due to use of the correct claim status identifier.
The rejection of claim 22 under 35 USC 112(b) is withdrawn due to amendments to claim 22 ( e) to clarify what the upper limit is for water.
The rejection of claim 23 under 35 USC 112(b) is withdrawn due to amendments to recite “cationic conditioning agents” to provide antecedent basis.
Maintained Rejections
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.
Claim 23 is 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. This is a new matter rejection. Claim 23 recites the composition of claim 2 provides hair that has been treated with the composition with improved shine as compared to treatment with a composition not comprising the polyether-modified polysiloxanes, propylene glycol and cationic surfactant. Applicant argues page 6, paragraph 1 states “The hair treatment compositions advantageously impart or enhance shine and luster to hair, reduce frizz, and improve the overall appearance and fee of hair” (reply, pg. 8). Applicant argues page 6, last paragraph states “The compositions are particularly useful for improving the look and feel of hair…the hair treatment compositions impart shine and luster to hair, improve texture and feel of hair, and prevent or reducing frizz…” (reply, pg. 8-9). Applicant then points to Example 2 for alleged unexpected results and points to page 76, last paragraph for the statement “The results show that a combination of polyether-modified polysiloxanes, propylene glycol, and cationic surfactant in the compositions imparted a substantial increase in shine to the hair. This is illustrated by the results for Comparative Composition F, which lacked cationic surfactant. The data also show that propylene glycol, in combination with the polyether-modified polysiloxanes and cationic surfactant contributes to the surprising improvement in shine” (reply, pg. 9).
This is not persuasive. The composition recited by claim 23 is generic to the species of polyether-modified polysiloxanes, and cationic conditioning agent/cationic surfactant (see claims 1, 2 & 23). The amounts of these reagents and propylene glycol are broad (see claims 1, 2 & 23). While pages 1 and 6 of the specification contemplated “impart[ing] a desirable shine and luster to hair” and “enhance[d] shine and luster to hair” there was not disclosure that it was compared to a “treatment composition not comprising the one or more polyether-modified polysiloxanes, propylene glycol, and one or more cationic conditioning agents”. Example 2 only examined THREE species of polyether-modified polysiloxanes (i.e. PEG 12 dimethicone, PEG-14 dimethicone and PEG/PPG 4/12 dimethicone) in amounts of either 1.5% or 1.4%. Propylene glycol was examined at only 7% in Example 2. Example 2 also only examined THREE species of cationic surfactant (i.e. behentrimonium chloride, cetrimonium chloride, stearamidopropyl dimethylamine) at concentrations of 0, 3.2% and 3.22%. Support is not present for any polyether-modified polysiloxane, any cationic conditioning agent, in combination propylene glycol, resulting in improved shine as compared to a formulation which does not comprise the one or more polyether-modified polysiloxanes, propylene glycol, and the one or more cationic conditioning agent. Notably, claim 23 requires the comparative treatment to not comprise the three reagents (i.e. the poly-ether modified polysiloxane, propylene glycol, and cationic conditioning agent/surfactant) however the negative controls in Example 2 only lacked either the propylene glycol (i.e. comparative G) or cationic surfactant (comparative F). In other words, the inventive formulations were not compared to a hair treatment lacking all three reagents as required by claim 23. For these reasons, claim 23 changes the scope of the as-filed disclosure; thereby constituting NEW MATTER.
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.
Claims 1-15, 17, 18, & 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Rughani (US 2018/0280270; Published: 10/04/2018; previously cited) in view of Sengupta (WO 2008/127766; Published: 10/23/2008; previously cited).
*Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. PEG/PPG 17/18 dimethicone which belongs to the genus to which the elected species of PEG-PPG-4/12 dimethicone belongs and xanthan gum which belongs to the genus to which the elected species of sclerotium gum belongs) and in an effort to expedite prosecution, this art has been applied.
Rughani teaches a composition unique in its ability to improve the shine of hair [0015]. With regard to claims 1 (a), 3, 4, 17 (h), 18 (a), 18 (h), 21 (a), 22 (a) & 22 (h), Rughani teaches the hair treatment may be a shampoo which comprise “about 0.1 to about 5 wt. % of one or more silicones selected from the group consisting of… amodimethicone, PEG/PPG-17/18 dimethicone… and a mixture thereof” [0106]. With regard to claims 1 (b), 2, 18 (b), 21 (b), 22 (b) & 22 (e), Rughani teaches the hair treatment may be a shampoo which comprise “about 0.01 to about 5 wt. % of one or more alkanediols (polyhydric alcohols) such as ethylene glycol, propylene glycol, butylene glycol…” (i.e. one or more organic solvents; [0127]). With regard to claims 1 (c), 5-8, 18 (c), 21 (c), & 22 (c), Rughani teaches the hair treatment may cationic polymers which include cetrimonium chloride in an amount 0.1 to about 5 wt. ([0065], [0066] & [0072] & [0160]). With regard to claims 1 (c), 9, 18 (c), 21 (c) & 22(c), Rughani teaches a conditioning shampoo comprising about 1 to about 10 wt. % of one or more cationic surfactants which are selected from the group cetrimonium chloride and oleamidopropyl dimethylamine ([0154] & [0160]). With regard to claims 1 (d), 10, 18(d), 21 (d) & 22 (d), Rughani teaches the hair treatment may be a shampoo which comprise fatty alcohols, including cetearyl alcohol and cetyl alcohol, as one or more fatty compounds in an amount of about 1 to about 10 wt. % ([0097], [0100] & [0104]) . With regard to claims 1 (e), 11, 18(e), 21 (e) & 22 (e), Rughani teaches inclusion of water in a total amount of water is about 50 to 95 wt. % including about 60 to 90 wt. % and about 65 to about 85 wt. % [0049]. With regard to claims 12, 13, 14, 18 (f) & 22 (f), Rughani teaches the hair treatment may comprise the thickeners which may be xanthan gum with the one or more thickening agents present in an about 0.1 to about 6 wt. % ([0080] & [0082]). With regard to claims 1 (g), 15, 18 (g) & 22 (g), Rughani teaches the hair treatment may be a shampoo which comprise alkyl betaines including coco betaine in an amount of about 0.1 to about 10 wt. % (i.e. one or more surfactants other than cationic surfactants; [0049], [0118], [0139], [0142], [0146] & [0161]). With regard to claim 22 (j), Rughani teaches inclusion of 3 % of taurine (i.e. miscellaneous ingredient) in Example 7 [0509]. Rughani teaches when aminosilicones are used they are in the form of an oil-in-water emulsion [0442]. Rughani teaches a conditioning shampoo embodiment ([0151]).
Rughani does not teach the formulation is an oil-in-water emulsion.
In the same field of invention which may be shampoos, Sengupta teaches most commercial conditioning shampoos contain a water-immiscible silicone fluid as a hair conditioning agent, with the silicone fluid remaining dispersed in the form of oil-in- water (O/W) emulsions in the shampoo base (a water-based solution; [0003]).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here, at least rationale (G) may be employed in which it would have been prima facie obvious at the time of the effective filing date to have modified Rughani liquid silicone containing shampoo by formulating it as an oil-in-water emulsion because Rughani teaches their shampoo may be a conditioning shampoo and most conditioning shampoos are oil-in-water emulsions with the silicones dispersed as taught by Sengupta. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide the shampoo in an art recognized form (i.e. O/W emulsion) art recognized as suitable for shampoos.
With regard to the recited amounts of one or more polyether modified polysiloxanes, glycols/propylene glycol, cationic conditioning agents/cetrimonium chloride and oleamidopropyl dimethylamine, fatty alcohols/cetyl alcohol, water, nonionic thickening polymers/xanthan gum, alkyl betaine/coco betaine, aminofunctionalized silicone oils/amodimethicone, water-soluble organic solvents/butylene glycol, and miscellaneous ingredients/taurine, the combined teachings of Rughani and Sengupta teach these reagents with quantities which overlap or fall within 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).
With regard to the claim 23 recitation that the formulation provides hair that has been treated with the composition with improved shine as compared to treatment with a composition not comprising the one or more polyether-modified polysiloxanes, propylene glycol, and one or more cationic conditioning agents surfactant, the composition suggested by the combined teaching of Rughani and Sengupta necessarily have this property because the formulation is in the form of a O/W emulsion comprising polyether-modified polysiloxanes which is PEG-PPG- 17/18 dimethicone, propylene glycol, and the cationic conditioning agent cetrimonium chloride in amounts which overlap or fall within the claimed ranges. "Products of identical chemical composition can not have mutually exclusive properties." 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This assertion is supported by Rughani’s teaching that their composition is unique in its ability to improve the shine of hair [0015].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rughani and Sengupta as applied to claims 1-15, 17, 18 & 21-23 above, and further in view of Silva (WO 2018/023180; Published 02/08/2018; previously cited; PTO-892: 09/17/2024).
*This rejection addresses the elected species of PEG-PPG-4/12 dimethicone.
The teachings of Rughani and Sengupta are described above. In brief, the combined teachings of Rughani and Sengupta suggest a shampoo comprising PEG/PPG-17/18.
Neither Rughani nor Sengupta teach inclusion of PEG/PPG 4/12 dimethicone.
In the same field of invention, Silva teaches embodiments which are rinse-off shampoos, conditioning cleansing compositions such as 2 in 1 shampoos (pg. 9, ll. 5-15). With regard to claim 4, Silva teaches inclusion of at least one silicone compound selected from “…PEG/PPG-4/12 Dimethicone,
PEG/PPG-17/18 Dimethicone…and mixtures thereof” (pg. 7, ll. 1-15, Silva’s claim 18). Silva teaches when the invention included at least one or more of silicone compounds greater conditioning and manageability benefits to hair was observed (pg. 9, ll. 20-30).
Here, at least rationale (A) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of the effective filing date to have modified the shampoo suggested by the combined teachings of Rughani and Sengupta by adding PEG/PPG-4/12 Dimethicone to the composition as suggested by Silva because Rughani, Sengupta and Silva are all directed to shampoos and Silva teaches a mixture of PEG/PPG-17/18 and PEG/PPG-4/12 Dimethicone can be used to enhance conditioning and manageability benefits to hair. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to increase the conditioning and manageability benefits of the formulation.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Rughani and Sengupta as applied to claims 1-15, 17, 18 & 21-23 above, and further in view of Lee (US 2019/0125650; Published: 05/02/2019).
*This rejection addresses the elected species of sclerotium gum.
The teachings of Rughani and Sengupta are described above. In brief, the combined teachings of Rughani and Sengupta suggest a shampoo comprising xanthan gum.
Neither Rughani nor Sengupta teach inclusion of sclerotium gum.
In the same field of invention, Lee teaches a composition which is preferentially a shampoo [0209]. Lee teaches inclusion of at least two polysaccharide gums “In one or more embodiments, the one or more polysaccharide gums are selected from sclerotium gum, xanthan gum, … and a mixture thereof” which function as a thickening agents ([0034] & [0094]).
Here, at least rationale (A) may be employed in which it would have been prima facie obvious at the time of filing to have modified the shampoo composition suggested by the combined teachings of Rughani and Sengupta by adding sclerotium gum as suggested by Lee because Rughani, Sengupta, Lee are all directed to shampoos and Lee teaches thickening shampoos with a mixture of sclerotium gum and xanthan gum. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the shampoo.
Response to Arguments
Applicant provides a discussion of the background of their invention stating that their invention is to impart desirable shine and luster without build up originating from styling product containing film forming properties, oils, waxes and other fatty materials (reply, pg. 10-11).
This is not persuasive. Rughani teaches that their composition is unique in its ability to improve the shine of hair [0015]. Applicant’s argument is also not commensurate with the scope of the claims which use the transitional phrase, “comprising”. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). As such, the claims permit inclusion of film formers, oils, waxes and other fatty materials. Further, claims 1 (d), 10, 17, 21 & 22 recite inclusion of fatty alcohols (i.e. fatty materials) including cetyl alcohol and stearyl alcohol.
Applicant argues Rughani does not have a specific embodiment having all the specifically claimed elements (reply, pg. 11-12).
This is not persuasive. The standard for obviousness under 35 USC 103(a) is not limited to specific embodiments. “Patents are relevant as prior art for all they contain” (MPEP 2123. I.). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Applicant argues Rughani’s use of polyether-modified polysiloxane is for the purpose of providing a foam while the present invention is not a foam or an aerosol (reply, pg. 12-13). Applicant argues Rughani teaches away from the present invention (reply, pg. 13).
This is not persuasive. It is noted that the instant specification does not define foam. “Foam” is used only once in the instant specification and it is to state the form of the composition. ”[T]he hair treatment compositions are not a foam” (instant specification-pg. 2). The ordinary skilled artisan would recognize that a foam product form is analogous to that of a mousse. Rughani does not contemplate mousses or aerosols. Rughani uses the term “foam” only once to state “With regard to silicones having hydrophilic or polar groups, as described previously, silicones that are repulsive with regard to the hydrophobic chains of the oil are thought to produce more stable foams because they do not inhibit the hydrophobic-hydrophobic interactions of the oil” [0399]. Rughani appears to be discussing the foaming as a lathering aid which is commensurate with the teaching that their composition being shampoos and paragraph [0525] which states the shampoo was lathered throughout the hair.
Applicant argues the Sengupta reference individually, arguing it does not cure Rughani’s deficiencies and teaches the foam form by teaching “do not adversely affect the stability, detergency and foaming properties of the cleansing product compositions” (reply, pg. 13-14). In the traverse of claim 4, Applicant argues Silva is used to teach foams by stating “an object…[is] to provide cosmetic compositions that can clean keratinous substrates…an have good foaming qualities…” (reply, pg. 14). In the traverse of claim 14, Applicant reiterates this argument stating that Lee teaches their combination of reagents “resulted in a composition with good foaming and cleansing properties” (reply, pg. 15).
This is not persuasive. Applicant is attempting to broaden the term “foam” beyond that contemplated in the specification. The specification does not define what a foam is. In the cosmetic arts, US 2008/0281008 states “[t]he term "composition in (the) foam form" and the term "composition in the form of a foam" mean the same thing and are understood to mean a composition comprising a gas phase (for example air) in the form of bubbles; another equivalent term is "composition expanded in volume"” [0015]. Rughani’s compositions are shampoos comprising water (i.e. liquids). Silva teaches embodiments which are rinse-off shampoos, conditioning cleansing compositions such as 2 in 1 shampoos (pg. 9, ll. 5-15). Lee teaches a composition which is preferentially a shampoo [0209]. There is a difference between having the property of foaming/lathering and the composition being in foam form.
The examiner notes that Applicant’s exemplary compositions contain cocamidopropyl betaine. As evidenced by US 2008/0127994, cocamidopropyl betaine is recognized as a foaming surfactant [0091]. On its face, it appears that Applicant’s own compositions would have the property of foaming/lathering.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619