Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08 July 2025 has been entered.
Claim Status
Applicant’s claim amendments in the response filed 08 July 2025 are acknowledged.
Claims 1, 6, 9, 12-17, 20-23, 27, 28, 32, 34, 35, 39, 40, 44 & 45 are pending.
Claim 45 is new.
Claims 1, 12-14 & 27 are amended.
Claims 2-5, 7, 8, 10, 11, 18, 19, 24-26, 29-31, 33, 36-38 & 41-43 are cancelled.
Claims 6, 9, 16, 17, 20-23, 39 & 40 are withdrawn.
Claims 1, 12-15, 27, 28, 32, 34, 35, 44 & 45 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied and constitute the complete set presently being applied to the instant application.
Examination on the merits is to the extent of the following species
Natural film-forming polymer-alginic acid;
Compound containing an amine moiety or a compound containing a quaternary ammonium moiety -2 amino-2-methyl-1 propanol;
Alcohol-ethanol; and
What the composition comprises -no synthetic polymers
New Objections/Rejections
Claim Objections
Claims 13 and 32 are objected to because of the following informalities:
Claim 13 is rejected to because it contains a typographical error in the third to the last line (i.e., “…wherein said C1-12 heteroalkyl contains one of more heteroatoms selected from oxygen, nitrogen or sulphur…”; emphasis added).
Applicant may wish to consider whether “contains one or more heteroatoms selected from oxygen, nitrogen or sulphur…” would obviate the objection.
Claim 32 has an incorrect status identifier. The status identifier states “Previously Presented” but the claim has an underline in line 2 indicating a space has been added.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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, 12-15, 27, 32, 34, 35, 44 & 45 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tanner (WO 98/35651; Published: 1998; cited in parent application 14/648,937; previously cited) and Kraemer (US 2003/0083322; cited in parent application 14/648,937; previously cited).
Claim Analysis: The recitation of “wherein the composition is for application to hair substrate” is a statement of intended use that does not further compositionally distinguish the personal care composition (e.g. reagents or their amounts).
With regard to claim 1, Tanner in Examples IX-XII teaches hairspray compositions (pg. 34-35). With regard to claim 1, Tanner in Examples IX-XII teaches hairspray compositions comprising a mixture of denatured ethanol and water (pg. 34-35). More broadly, Tanner further teaches the compositions of their invention comprise alcohol which is most preferably ethanol (pg. 4). With regard to claims 1 & 27, Tanner teaches the compositions of their invention comprise alcohol, which may be ethanol, in an amount from about 60% to about 99.9% by weight (pg. 4). More broadly, Tanner teaches water is an optional ingredient but it is included in a preferred embodiment (pg. 27). With regard to claims 1 & 32, Tanner further teaches “[t]ypically the concentration of water can range from 0 to about 39.949% by weight of the composition” (pg. 27). With regard to claim 1, Tanner teaches the compositions of their invention include a personal care polymer, which may be alginic acid, in an amount from about 0.01 to about 20% as a polymer useful and derived from natural sources (pg. 4 & 5). The ordinary skilled artisan, before the effective filing date, recognized that alginic acid is an acid by definition. With regard to claims 1, 12-15 & 44, Tanner in the Example IX-XII hairsprays teaches the compositions comprise aminomethyl propanol in an amount of 0.657% (pg. 34-35). This value is close to the recited lower limit of 0.85%, is a matter of three decimal places and rounding (i.e. 0.008 versus 0.007), with values as low as “about 0.1%” taught as suitable for practicing the recited invention at paragraph [0078] of the as-filed specification. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, 0.657% aminomethylpropanol (i.e. 0.7%) and about 0.85% aminomethylpropanol (i.e. 0.8%) are expected to have the qualities of solvency, and “evapor[ation] after facilitating the delivery of active components” (Tanner-pg. 1). With regard to claim 1, Tanner in hairspray compositions IX-XII teaches “the final product is packaged in a conventional non-aerosol pump spray container or in an aerosol canister with a suitable propellant”. With regard to claim 35, Tanner in hairspray compositions IX-XII teaches inclusion of the humectant, dipropylene glycol. Tanner in Examples IX-XII hairsprays teaches the compositions comprise the personal care polymer, octylacrylamide/acrylates butylaminoethyl methacrylate copolymer in an amount of 4.0% (i.e. Amphomer; pg. 15-18; 34-35; Tanner’s claim 4).
Tanner does not teach a hairspray comprising alginic acid in an amount of 0.1 to 5% based on the total weight of the hair spray composition which is free of synthetic polymers.
In the same field of invention of the hair arts, Kraemer teaches alginic acid and octylacrylamide/acrylic acid ester/butylaminoethyl methacrylic acid copolymers are film forming agents applied to hair fibers ([0076]; Kraemer’s claim 24 & 27). Kraemer teaches the compositions of their invention may be in the form of aerosols which comprise ethanol and water [0075].
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 (B) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of the invention to have modified Tanner’s hairspray composition by substituting the octylacrylamide/acrylic acid ester/butylaminoethyl methacrylic acid copolymer with alginic acid as suggested by the combined teachings of Tanner and Kraemer [yielding a composition free of synthetic polymers as set forth by claim 34 comprising 4.0% alginic acid] because octylacrylamide/-acrylic acid ester/butylaminoethyl methacrylic acid copolymer and alginic acid are personal care polymers that are film forming that may be used in hair care formulations comprising ethanol and water as set forth by the teachings of Tanner and Kraemer. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to alter the stiffness of the hairspray by substituting the film forming and personal care polymer of the hairspray.
With regard to the recited amounts of alginic acid, ethanol, and water, the combined teachings of Tanner and Kraemer suggest these reagents with values that fall within or 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).
Claims 1, 12-15, 27, 28, 32, 34, 35, 44 & 45 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tanner (WO 98/35651; Published: 1998; cited in parent application 14/648,937; previously cited), Kraemer (US 2003/0083322; cited in parent application 14/648,937; previously cited), and Dobbs (US 6,752,983; Published: 06/22/2004).
The teachings of Tanner are described above with regard to hair spray compositions comprising water, ethanol, alginic acid, humectant/dipropylene glycol, aminomethylpropanol and the amount of these reagents. Tanner teaches the hairspray compositions are “packaged in a conventional non-aerosol pump spray container or in an aerosol canister with a suitable propellant”. The ordinary skilled artisan, at the time of invention, knew alginic acid is an acid by definition.
Tanner does not teach a hairspray comprising alginic acid in an amount of 0.1 to 5% based on the total weight of the hair spray composition, aminomethyl propanol in an amount of 0.85 to 2.9%, which is free of synthetic polymers, or an ethanol concentration of about 45% to about 55% by total weight of the hair spray composition.
The teachings of Kraemer are described above. In brief, Kraemer teaches alginic acid and octylacrylamide/acrylic acid ester/butylaminoethyl methacrylic acid copolymers are film forming agents applied to hair fibers ([0076]; Kraemer’s claim 24 & 27). Kraemer teaches the compositions of their invention may be in the form of aerosols which comprise ethanol and water [0075].
Dobbs teaches hairsprays (title). Dobbs teaches ethanol is used in hair sprays as a solubilizer for polymers because it dries quickly upon application (col. 2, ll. 1-10). However, “alcohol is a VOC and is accounted as such in hair spray systems. To lower the VOC content of the spray, many manufacturers have replaced ethanol in their sprays with water. However, an increase in the water concentration can adversely affect the performance of the hair spray by accelerating the initial curl droop and/or increasing the dry time on the hair” (col. 2, ll. 5-15). To solve this problem, Dobbs teaches that “alkyl acetates can thus replace some of the alcohol in consumer spray formulations without lessening consumer acceptance” (col. 2, ll. 40-45). With regard to claims 1, 27 & 28, Dobbs teaches a preferred embodiment in which the compositions of their invention comprise from about 30 to about 55 weight % ethanol, and from about 10 to about 40 weight % acetate (methyl acetate and/or I-butyl acetate), and from about 4 to about 8 weight % fixative (col. 6, ll. 55-60). With regard to claims 1 & 12-15, Dobbs teaches the hair sprays of their invention comprise a “neutralizer, if required to neutralize acidic sites on the fixative. Thus, in another embodiment the invention provides a hair care composition further comprising from about 0.1 to about 5 weight % of a neutralizer. Exemplary neutralizers include aminomethyl propanol…” (col. 9, ll. 45-55). With regard to claims 1 & 32, Dobbs teaches a preferred embodiment in which water is present in an amount which is more preferably present from about 0.01 to about 35 weight % (col. 6, ll. 30-40). With regard to claims 1, 12-15, 27, 28, 44 & 45 , Dobbs teaches in Example 3 teaches a clear hairspray comprising 4.0% Amphomer LV-71 (i.e. Octylacryamide/Acrylates/-Butylaminoethyl Methacrylate Copolymer), 55.0% ethanol, 25.0% methyl acetate, 15.2% water, and 0.8% AMP-95 (aminomethyl propanol; col. 12, ll. 10-15; col. 13, ll. 1-20).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of the invention to have modified Tanner’s hairspray composition by substituting the octylacrylamide/acrylic acid ester/butylaminoethyl methacrylic acid copolymer with alginic acid [yielding a hair spray substantially free of synthetic polymers], adding from about 10 to about 40 weight % acetate (methyl acetate and/or I-butyl acetate), reducing the amount of ethanol to about 30 to about 55 weight % ethanol, adjusting the amount of water to about 0.01 to about 35 weight % and adjusting the amount of neutralizer/aminomethyl propanol to about 0.1 to about 5 weight % as suggested by the combined teachings of Tanner, Kraemer, and Dobbs [yielding a composition comprising 4.0% alginic acid] because octylacrylamide/acrylic acid ester/butylaminoethyl methacrylic acid copolymer and alginic acid are personal care polymers that are film forming that may be used in hair care formulations comprising ethanol and water as set forth by the combined teachings of Tanner and Kraemer. The reduction in ethanol and adjustment of water would have been prima facie obvious to the ordinary skilled artisan at the time of the invention to address the evolution of regulation in the field by regulatory bodies in which the VOC content of hairsprays is “accounted”, ethanol being a VOC that must be accounted, but simple substitution of ethanol with extra water leading to curl droop and longer drying times and the addition of acetate (methyl acetate and/or I-butyl acetate) being the solution that permits lower amounts of ethanol to be made without the corresponding increase in water as taught by Dobbs. The adjustment of aminomethyl propanol would have been prima facie obvious to the ordinary skilled artisan at the time of the invention to use a neutralizer for the film forming polymer in amounts art recognized as suitable for neutralization in hairsprays as taught by Dobbs. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to alter the stiffness, VOC content, drying time and neutralization properties of the hairspray by using the amount of alginic acid/film forming polymer, ethanol, water and aminomethyl propanol in amounts art recognized as suitable as suggested by the combined teachings of Kraemer and Dobbs.
With regard to the recited amounts of alginic acid, ethanol, water, and aminomethyl propanol, the combined teachings of Tanner, Kraemer and Dobbs suggest these reagents with values that fall within or 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).
Response to Arguments
In the traverse of the rejection of claims 1, 12-15, 27, 32, 34, 35, 44 & 45 under 35 U.S.C. 103(a) over Tanner and Kraemer, Applicant argues the claims now require an amine moiety in an amount of 0.85% to 2.9% by total weight of the hair spray composition, in which the compound is a hydroxyalkylamine (reply, pg. 11). Applicant explains that “if enough hydroxyalkylamine is included in the composition, hair spray films containing alginic acid provide a clear film, even with significant amounts of ethanol present, as well as demonstrating all the other desirable features of a hair spray” (reply, pg. 11). Applicant argues they have shown that opacity of alginic acid hairspray compositions is at desirable levels when 0.85% to 2.9% hydroxyalkylamine is present (reply, pg. 12). Applicant argues the amount of aminomethyl propanol showing in Tanner’s Examples IX-XII of 0.657 weight % is too low and Tanner does not recognize it as an result effective variable (reply, pg. 12).
This is not persuasive. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, 0.657% aminomethylpropanol (i.e. 0.7%) and about 0.85% aminomethylpropanol (i.e. 0.8%) are expected to have the qualities of solvency, and “evapor[ation] after facilitating the delivery of active components” (Tanner-pg. 1).
The next issue is an issue of criticality. Applicant appears to be arguing that a minimum amount of 0.85% hydroxyalkylamine is necessary to achieve films with a low opacity but Applicant has not shown there is a significant difference in the film opacity when a hydroxyalkylamine (e.g. aminomethyl propanol) is present in an amount of 0.657 weight % as opposed to 0.85%. This is important because the recited differences in concentration is within that of rounding to THREE decimal places (i.e. 0.007 versus 0.008) and Applicant’s own specification discloses that amounts as low as “about 0.1%” is suitable for practicing the recited invention at paragraph [0078]. Tanner’s exemplified amount of 0.657% of aminomethyl propanol falls well within the range of suitable amounts disclosed by the instant specification for practicing the invention and achieving a film with suitable opacity.
Applicant traverses the Kraemer references individually, arguing Kraemer does not apply to hairsprays and is directed to lotions to the scalp (reply, pg. 13-15). Applicant further argues there is no reason to look to Kraemer to increase the amount of aminomethylpropanol (reply, pg. 15).
This is not persuasive. Kraemer is in the same field of endeavor as Tanner (i.e. the hair care arts). Kraemer is also directed to formulations comprising ethanol and water as reagents which are delivered as aerosols [0075]. As such, Kraemer shows that it was recognized at the time of the invention in the hair care field that alginic acid and octylacrylamide/acrylic acid ester/butylaminoethyl methacrylic acid copolymers are film forming agents applied to hair fibers ([0076]; Kraemer’s claim 24 & 27). Kraemer was not used to teach adjustment of the amount of aminomethyl propanol; the closeness of the recited range to that taught by Tanner is addressed immediately supra.
Applicant traverses the rejection of claims 1, 11-15, 19, 27, 28, 32, 35, and 44 under 35 U.S.C. § 103 over Stebles, Kramer, and Tanner reiterating arguments pertaining to the recited amount of hydroxyalkylamine (reply, pg. 14-15).
Applicant’s arguments are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
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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/LORI K MATTISON/ Examiner, Art Unit 1619
/NICOLE P BABSON/ Primary Examiner, Art Unit 1619