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, arguments and declaration, in the response filed 13 October 2025, are acknowledged.
Claims 1, 2, 8, 9, 11-17, 19, 20 & 23 are pending.
Claims 1 & 23 are amended.
Claims 3-7, 10, 18, 21 & 22 are cancelled.
Claim 20 is withdrawn.
Claims 1, 2, 8, 9, 11-17, 19 & 23 are under consideration.
Examination on the merits is to the extent of the following species:
Co-propellant & Co-solvents: Co-propellants-absent; Co-solvent-water,
Additive: Lubricant,
-and-
Fixative polymer: acrylate-octylacrylamide copolymer.
Declaration Filed Under § 1.132
The declaration filed on 13 October 2025 by Applicant is acknowledged. The declaration is addressed in the response to Applicant’s traverse below.
Maintained Rejections
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, 2, 8, 9, 11-17, 19 & 23 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuto (JP2021025037; Published: 02/22/2021; IDS: 04/27/2023; previously cited) [all references refer to the Examiner supplied English language translation]).
*All references refer to the English language translation (previously supplied).
With regard to claims 1, 2, 15, 16, & 23, Yasuto in Example 6 teaches aerosol styling compositions consisting of a propellant which is trans-1,3,3,3-tetrafluoroprop-1-ene (i.e. a fluoroolefin having a GWP of 10 or less), ethanol/solvent, triethanolamine/amine neutralizer, and fixative polymer AMPHOMER 28-4910 (i.e. octylacrylamide/acrylates/butylaminoethyl methacrylate copolymer) ([0043]-[0045]). With regard to claims 1, 11, & 23, more broadly, Yasuto teaches the “the content of the hydrofluoroolefin in the aerosol composition is preferably 15% by mass or more, and more preferably 20% by mass or more. The content of the hydrofluoroolefin in the aerosol composition is preferably 70% by mass or less, and more preferably 65% by mass or less [0029]. With regard to claims 1 & 23, more broadly, “the content of the concentrate is not particularly limited” [0026]. “[T]he content of the concentrate in the aerosol composition is preferably 30% by mass or more, and more preferably 35% by mass or more. The content of the concentrate in the aerosol composition is preferably 85% by mass or less, and more preferably 80% by mass or less. By having the content of the concentrate within the above range, the aerosol composition can be easily adjusted so that the particles have an appropriate size when sprayed. As a result, the aerosol composition feels good when used and easily adheres to hair, etc.” [0026]. With regard to claims 1, 12, & 23, Yasuto teaches the alcohol may be ethanol and the amount of alcohol in the concentrate is 70% or more and 92% or less. With regard to claims 1, 12 & 23, as such, Yasuto teaches the composition may comprise 21-78% ethanol [Math: (85 * 0.92)/(15 +85) = 78%; (30 * 0.7)/(70 + 30) = 21%]. With regard to claims 1, 12 & 23, Yasuto teaches alcohol is “blended as a solvent for stably dissolving the above-mentioned styling resin and hydrofluoroolefin and forming a uniform aerosol composition. Furthermore, alcohol is added to adjust the elasticity and other properties of the film formed by the sprayed aerosol Composition” [0021]. With regard to claims 1, 13, & 23, Yasuto teaches the neutralizer makes the styling resin water-soluble so it can be washed off with a shampoo and adjusts the pH; the amount of neutralizing agent in the concentrate is not particularly limited and is present in an amount “preferably 0.5% by mass or more, and more preferably 0.8% by mass or more. The content of the neutralizing agent in the concentrate is preferably 8% by mass or less, and more preferably 5% by mass or less” ([0018] & [0020]). With regard to claims 1, 13 & 23, as such, Yasuto teaches 0.15-6.8% amine neutralizer/triethanolamine [Math: (85* 0.08)/ (15+ 85) =6.8%; (30 * 0.005)/(70 + 30) = 0.15%]. With regard to claims 1, 14 & 23 Yasuto teaches the styling resin/-Octylacrylamide/Acrylates/Butylaminoethyl Methacrylate Copolymer is not particularly limited and is preferably 3% by mass or more, and more preferably 5% by mass or more. The content (solid content) of the styling resin in the concentrate is preferably 20% by mass or less, and more preferably 15% by mass or less” [0017]. With regard to claims 1, 14 & 23, as such, Yasuto teaches the styling resin/- Octylacrylamide/Acrylates/Butylaminoethyl Methacrylate Copolymer in an amount from 0.9%-17% [Math: (85*.20)/(15 + 85) =17%; (30 * 0.03)/(70+ 30) = 0.9%]. With regard to claim 8, Yasuto teaches compressed gas may be blended as a propellant for pressurizing the product [0031]. With regard to claim 9, Yasuto teaches the composition may comprise active agents which may be oils of silicone (i.e. lubricant) and fragrances [0024]. With regard to claim 17, Yasuto teaches the compositions of their invention are a “spray product” that is applied to hair having styling resins to set the hair (i.e. a hair spray; [0014], [0040]).
While there is not a single example consisting of trans-1,3,3,3-tetrafluoropropene, ethanol/solvent, amine neutralizer/TEA/TIPA and fixative polymer/ Octylacrylamide/Acrylates/-Butylaminoethyl Methacrylate Copolymer in the recited amounts, the claimed ranges fall within the ranges taught by Yasuto. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the amounts of these reagents within the ranges taught as suitable by Yasuto
through routine experimentation to arrive at the claimed concentrations in order to optimize the resulting product.
With regard to the recited amounts of trans-1,3,3,3-tetrafluoropropene, ethanol/solvent, fixative/ octylacrylamide-acrylate-butylaminoethyl-methacrylate copolymers, and amine neutralizer/TEA, Yasuto teaches these reagents in amounts which overlap with 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).
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).
With regard to the claims 1 & 23 recitation that “the formulation generates less than 200 ppm fluoride as determined by ion selective electrode…”, Yasuto teaches the recited reagents with values that overlap with the recited range. "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).
With regard to the claim 19 recitation that “the formulation includes less than 100 ppm fluoride as determined by ion selective electrode…”, Yasuto teaches the recited reagents with values that overlap with the recited range. "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).
Response to Arguments
Applicant summarizes the examiner’s rebuttal to Applicant’s traverse of prior office actions (reply, pg. 5). Applicant argues their amended claim is a specific formulation which generates less than 200 ppm fluoride following storage at 50 °C for three months which is stringent stability criterion (reply, pg. 6 & 7; Declaration-pg. 2). Applicant argues Yasuto’s Example 6 generates > 200 ppm fluoride after 3 months storage at 50 °C and that formulations generating > 200 ppm fluoride are considered unstable and unsuitable for long-term use (Declaration-pg. 2). Applicant argues Yasuto’s Example 6 in Test 1 results in 124 ppm after storage at 45 °C for three months (reply ; Declaration-pg. 2). Applicant further argues their inventive composition consistently yields less than 200 ppm fluoride under the same protocol, demonstrating that the stability is not inherent to the class of compositions described in Yasuto (reply, pg. 6; Declaration-pg. 2). Applicant argues small changes in ethanol or polymer content, as between Example 6 and the claimed formulation, result in significant and unpredictable differences in fluoride generation (from 222 ppm to 100 ppm; reply, pg. 6 & 7). Applicant argues the combination of HFO-1234ze ( E) (40-50 wt.%), ethanol (45-55 wt.%), TEA/TIPA (0.2-1.2 wt.%), and octylarylamide-acrylate-butylaminoethyl-methacrylate copolymer (3-7 wt%) is essential for achieving the claimed stability <200 ppm (or <100 ppm; reply, pg. 6). Applicant argues this stability is not achieved by all formulations within the compositional ranges disclosed by Yasuto, nor is it predictable (reply, pg. 6).
This is not persuasive. First, Declarant’s inventive formulation is not the same as the claimed formulation. In particular, the amount of the amine neutralizer used in the formulation of the declaration (HON-formulation) is 1.37% (i.e. 1.4%). However, the upper limit of the amine neutralizer recited by the instant claims is 1.2 wt% (see claim 1) or 1 wt.% (see claim 23). "[E]vidence must be reasonably commensurate in scope with the claimed invention”. See, e.g., In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 777 (Fed. Cir. 1983).
Next, Declarant’s evidence is also not commensurate in scope with the claims in that Declarant did not provide fluoride generation results for the claimed triisopropanolamine (TIPA) amine neutralizer (see claims 1 & 23). Declarant also does not evaluate fluoride generation with acrylate-octylacryl-amide copolymers and vinyl acetate-crotonate-vinyl neodecanoate copolymers (see claim 23). This is important because paragraph [0036] of the instant specification states “when tertiary amines are used in formulations for hairspray, the performance of the fixative polymer on the hair is often unacceptable…it is thought that tertiary amines may have an adverse effect on the performance of fixative polymers…”. This teaching is further bolstered by the arguments of Applicant’s representative in which they argued stability is not inherent (reply, pg. 6).
Next, Declarant has shown that Example 6 of Yasuto generates 222 ppm fluoride when stored at 50 °C for 3 months. However, claims 1 & 23 require the fluoride generation be less than 200 ppm which is close to the 222 ppm achieved with Yasuto’s Example 6 formulation. Applicant has not explained why a difference of less than 200 ppm, as opposed to 222 ppm, is a difference in kind rather than degree. “A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent.” (See MPEP 2144. III. A). This is important because paragraph [0039] of the instant specification discloses “a formulation was deemed stable if the amount of fluoride present was less than 300 ppm”. Are these differences in stability of significant and practical significance? The evidence relied upon should establish “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). What is a practical significance for this invention? A change in stability, performance? "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
With regard to Applicant’s argument that small changes in ethanol or polymer content, as between Example 6 and the claimed formulation, result in significant and unpredictable differences in fluoride generation (from 222 ppm to 100 ppm), the Examiner notes that the declaration discloses that Declarant’s HON formulation generated “100ish” ppm fluoride when stored at 50 °C for 3 months. (Declaration, pg. 2). It is unclear what “100ish” ppm is. 150 ppm? 90 ppm? Further, is this of statistical or practical is significance? The evidence relied upon should establish “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). What is a practical significance for this invention? A change in stability, performance? "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
With regard to Applicant’s argument that the recited stability is not achieved by all formulations within the compositional ranges disclosed by Yasuto, and that this stability is not predictable, “nonpreferred embodiments and alternative embodiments constitute prior art” (MPEP 2123.II.). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Yasuto teaches a composition consisting of the recited reagents. The broader disclosure of Yasuto teaches amounts of these reagents which overlap with the recited ranges. As such, the latent property of a fluoride generation of less than 200 ppm and less than 100 ppm following storage for 3 months at 50 °C would necessarily flow from following Yasuto’s teachings. “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).
Applicant may wish to consider supplying data commensurate with the scope of the claims (e.g. formulations comprising TIPA amine neutralizer and acrylate-octylacrylamide copolymers, and vinyl acetate-crotonate- vinyl neodecanoate copolymers in the recited amounts). See claims 1 & 23.
Applicant argues Yasuto addresses pH stability and avoidance of precipitate formation but does not teach chemical stability against fluoride formation (reply, pg. 6-7).
This is not persuasive. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. 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 Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
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