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 06/03/2026 is acknowledged.
Claims 1-27 are pending.
Claims 16-27 are new.
Claims 1-15 are amended.
Claim 7 remains withdrawn from consideration as being drawn to a nonelected species.
New claim 25 is withdrawn from consideration as being drawn to a nonelected species (i.e. Applicant elected the one or more alkyl glucoside non-ionic surfactants as coco glucoside, not as decyl glucoside).
New claim 27 is withdrawn from consideration as being drawn to a nonelected species (i.e. Applicant elected the anti-dandruff agent as sodium shale oil sulfonate, not as the combination of sodium shale oil sulfonate and tea tree oil).
Claims 1-6, 8-24, and 26 are under consideration in the instant Office action to the extent of the elected species, i.e., the one or more amino acid-based anionic surfactants is disodium cocoyl glutamate, the one or more alkyl glucoside non-ionic surfactants is coco glucoside, the one or more amphoteric surfactants different from betaine amphoteric surfactants is sodium cocoamphoacetate, the one or more physiologically acceptable carriers and/or adjuvants is water, the anti-dandruff agent is sodium shale oil sulfonate, and the composition is in the form of a solution.
Manner of Making Amendments, 37 C.F.R. 1.121
Claim 1 has been amended in the claim set dated 06/03/2026, however the status identifier of ‘Original’ instead of ‘Currently amended’ is used. Applicant is reminded to include proper claim status identifiers moving forward to avoid delays. See MPEP 714.
OBJECTIONS/REJECTIONS WITHDRAWN
Drawings
The objections to the drawings set forth in the Office action dated 02/03/2026 are hereby withdrawn in light of Applicant’s submission of drawings dated 06/03/2026.
Specification
The objections to the specification set forth in the Office action dated 02/03/2026 are hereby withdrawn in light of Applicant’s amendments to the specification.
Claim Objections
The claim objections set forth in the Office action dated 02/03/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The indefiniteness rejections set forth in the Office action dated 02/03/2026 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejections set forth in the Office action dated 02/03/2026 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 to the claims.
NEW GROUNDS OF OBJECTION/REJECTION
Specification
The disclosure is objected to because the wt% table entry for “Optional active agents” appearing in both tables on Page 14 of the Marked up version of the specification dated 06/03/2026 should be amended from “1,0 – 10,0” to “1.0 – 10.0” (i.e., the commas should be replaced with decimals).
Appropriate correction is required.
Claim Objections
Claims 1, 3-6, 9, 12-15, and 21-22 are objected to because of the following:
In the last line of claim 1, “comprised” should be deleted in order to improve claim readability;
In each of claims 3-6, each recitation of “surfactant” (appearing twice in claim 3, twice in claim 4, once in claim 5, and three times in claim 6) should be amended to “surfactants” in order to improve claim consistency and readability (See claim 2);
In line 6 of claim 9, the typographical error of “soodium” should be corrected to “sodium”;
Either “the topical anti-dandruff composition” in line 2 of claim 12 should be amended to “the topical composition” or “the topical composition” in line 2 of each of claims 13-15 should be amended to “the topical anti-dandruff composition” in order to improve claim consistency and readability; and
In each of claims 21-22, the comma after “surfactants” in line 2 should be deleted in order to improve claim readability.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-6, 8-24, and 26 are 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.
Claim 1 has been amended to recite “wherein the topical anti-dandruff composition is stable for at least three months at a temperature comprised between 5 °C and 40 °C”. No support is pointed to for this amendment. Although the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims, when filing an amendment an Applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and 2163.06 (“Applicant should therefore specifically point out the support for any amendments made to the disclosure”). The Examiner has reviewed the specification for support, however, the specification does not contain written support for “a topical anti-dandruff composition comprising: (a) from 0.05 to 1% by weight of N-ethyl-lauroyl-arginate relative to the total weight of the composition; (b) a surfactant system comprising:(b1) one or more amino acid-based anionic surfactants;(b2) one or more alkyl glucoside non-ionic surfactants;(b3) one or more amphoteric surfactants different from betaine amphoteric surfactants;(c) one or more physiologically acceptable carriers and/or adjuvants; wherein the surfactant system does not comprise more than six surfactants” being “stable for at least three months at a temperature comprised between 5 °C and 40 °C”, but instead discloses the exemplified “INV” composition comprising the ingredients of table 1 being stable for at least three months at the tested temperatures listed in table 2 (See Example 1 of the specification). Therefore, support for the limitation of “the topical anti-dandruff composition is stable for at least three months at a temperature comprised between 5 °C and 40 °C” is limited to the exemplified “INV” composition and not to the broader recitation of claim 1. Therefore, claim 1 is rejected for containing subject matter not described in the specification. Claims 2-6, 8-24, and 26 are rejected for depending from claim 1.
Amended claim 1 now recites limitation(s), which were not clearly disclosed in the specification as filed, and now change the scope of the instant disclosure as filed. Such limitation(s) recited in amended claim 1, which did not appear in the specification, as filed, introduces new concepts and violates the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitations recited in instant claim 1 in the specification or claims, as-filed, or remove these limitations from the claims in response to this Office Action.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 is indefinite in the recitation of “wherein the one or more alkyl glucoside non-ionic surfactants is selected from the group consisting of sultaines, alkylpolyaminocarboxylates, alkylamphoacetates, alkylamphoacetate derivatives, alkylamphodiacetates, alkylamphodiacetates derivatives, glycine derivatives and mixtures thereof” because it is unclear what is meant by the recitation because the recited selections are not alkyl glucosides.
Based on the third and fourth to last lines of Page 1 of Applicant’s remarks dated 06/03/2026, the Examiner suggests amending “the one or more alkyl glucoside non-ionic surfactants” in claim 11 to “the one or more amphoteric surfactants different from betaine amphoteric surfactants” in order to overcome this rejection.
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 1-6, 8-11, 14-24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Rowney et al (EP 3369415 A1, published 09/05/2018, cited in Notice of References Cited dated 02/03/2026) in view of Minguet et al ("Ethyl Lauroyl Arginate HCl for Natural Preservation", Cosmetics & Toiletries, published 12/02/2011, cited in Notice of References Cited dated 02/03/2026).
Rowney et al teach a cosmetic cleansing composition for topical application to the skin and/or hair that effectively cleanses the skin and/or hair while maintaining mildness (See entire document, e.g. [0001], [0007], [0055]). The composition comprises a cosmetically acceptable carrier, a surfactant system consisting of an anionic surfactant, an amphoteric surfactant, and a non-ionic surfactant, and may comprise one or more preservatives (e.g., [0008], [0062]). Rowney et al teach that the specific combination of an anionic, an amphoteric and a non-ionic surfactant at defined levels, provides an improved cleansing experience for the user in that adequate cleansing can be achieved whilst preventing or reducing harshness, damage or irritation to the skin and/or hair, and that despite the overall surfactant level being low, adequate cleansing can still be achieved (e.g., [0009]).
The composition may be formulated as a liquid and the cosmetically acceptable carrier may be water (e.g., [0052], [0054]-[0055]).The anionic surfactant is selected from a group including disodium cocoyl glutamate (e.g., [0016]-[0017]). The amphoteric surfactant is selected from a group including sodium cocoamphoacetate (e.g., [0024]-[0026]). The non-ionic surfactant is selected from a group including coco glucoside (e.g., [0032]-[0034]). The one or more preservatives may be selected from, but is not limited to, a group including isothiazolone (e.g., [0062]).
The anionic surfactant may be present in an amount of from about 0.01% to about 6% by weight relative to the total weight of the composition (e.g., [0021]). The amphoteric surfactant may be present in an amount of from about 0.01% to about 12% by weight relative to the total weight of the composition (e.g., [0029]). The non-ionic surfactant may be present in an amount of from about 0.01% to about 8% by weight relative to the total weight of the composition (e.g., [0037]). The anionic surfactant, amphoteric surfactant and non-ionic surfactant making up the surfactant system add up to 100% (e.g., [0042]). The one or more preservatives may be present in an amount of about 0.001% to about 10% by weight of the composition (e.g., [0062]).
The amphoteric surfactant may be present in an amount of at least the same amount as the anionic surfactant, e.g., the amphoteric surfactant is present in an amount of about 2.3 times or less the amount of the anionic surfactant, the non-ionic surfactant may be present in an amount of at least the same amount as the anionic surfactant, and the amphoteric surfactant may be present in an amount of at least the same amount as the non-ionic surfactant (e.g., [0038]-[0040]).
In addition to the carrier and the surfactant system, the cosmetic composition will generally comprise other ingredients or excipients which will be well known to those skilled in the art (e.g., [0058]).
Rowney et al do not teach N-ethyl-lauroyl-arginate as a suitable preservative.
This deficiency is made up for in the teachings of Minguet et al.
Minguet et al teach that several preservatives, including isothiazolinones, either have been banned or their use strongly limited (See entire document, e.g., Par. 1 on Page 1). Minguet et al teach ethyl lauroyl arginate HCl (LAE; synonymous with N-ethyl-lauroyl-arginate) as an alternative that has high antimicrobial/antibacterial activity against the microorganisms Malassezia furfur, involved in the proliferation of dandruff, and Propionibacterium acnes, involved in acne formation, yet is safe for human use and for the environment (e.g., Par. 2 on Page 1). Minguet et al teach that LAE is a food-grade cationic surfactant with antimicrobial properties that is derived from the natural building blocks lauric acid and L-arginine, is deemed Generally Recognized as Safe by the US FDA, is readily biodegradable with low aquatic toxicity, does not irritate the eyes or skin at recommended use levels, and is non-sensitizing (e.g., Par. 3 on Page 1). Minguet et al teach that an EU Directive has included LAE as an accepted preservative for cosmetic formulations with a maximum allowed dosage of 0.4% active and as an allowable active for anti-dandruff shampoos, antibacterial soaps and deodorants at an upper limit of 0.8% (e.g., Par. 4 of Page 1 – Par. 1 of Page 2).
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 use LAE as preservative up to 0.4% or 0.8% in the composition of Rowney et al, and arrive at a liquid cosmetic cleansing composition for topical application to the skin and/or hair that effectively cleanses the skin and/or hair while maintaining mildness and having anti-dandruff and/or anti-acne properties comprising a cosmetically acceptable carrier being water, a surfactant system consisting of an anionic surfactant being disodium cocoyl glutamate from about 0.01% to about 6% by weight, an amphoteric surfactant being sodium cocoamphoacetate from about 0.01% to about 12% by weight, and a non-ionic surfactant being coco glucoside from about 0.01% to about 8% by weight, and a preservative being LAE from about 0.001% to about 0.4%, or to about 0.8%, by weight, wherein percent by weight is relative to the total weight of the composition, and wherein the amphoteric surfactant may be present in an amount of at least the same amount as the anionic surfactant, e.g., the amphoteric surfactant is present in an amount of about 2.3 times or less the amount of the anionic surfactant, the non-ionic surfactant may be present in an amount of at least the same amount as the anionic surfactant, and the amphoteric surfactant may be present in an amount of at least the same amount as the non-ionic surfactant.
One of ordinary skill in the art would have been motivated to use LAE as a preservative in the composition of Rowney et al because Minguet et al teach advantages of using LAE as an alternative preservative to isothiazolone (see supra) including being safer for human use, being better for the environment, and being effective against the microorganisms Malassezia furfur, involved in the proliferation of dandruff, and Propionibacterium acnes, involved in acne formation. There would have been a reasonable expectation of success in using LAE as a preservative in the composition of Rowney et al because Rowney et al teach the compatibility of the composition with preservatives such as isothiazolone. One of ordinary skill in the art would have been motivated to use LAE up to 0.4% or 0.8% in the composition of Rowney et al because Minguet et al teach safe use of LAE in amounts with these upper limits in cosmetic formulations and for anti-dandruff shampoos, antibacterial soaps and deodorants, respectively. There would have been a reasonable expectation of success in using LAE up to 0.4% or 0.8% in the composition of Rowney et al because Rowney et al teach the compatibility of the composition with preservatives from about 0.001% to about 10% by weight of the composition, and the amounts taught by Minguet et al, i.e., up to 0.4% or 0.8%, fall within the range taught by Rowney et al.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950)).
Regarding the ranges required by 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)).
Because the modified composition of Rowney et al in view of Minguet et al is the same as the composition of the instant claims, the modified composition of Rowney et al in view of Minguet et al is necessarily stable for at least three months at a temperature between 5 °C and 40 °C. 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. "Products of identical chemical composition cannot have mutually exclusive properties" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Further, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether the stability of Applicant’s composition at a temperature of between 5 °C and 40 °C over at least three months differs, and if so to what extent, from the modified composition of Rowney et al in view of Minguet et al, and therefore, the burden of establishing non-obviousness by objective evidence is shifted to Applicant.
Regarding the requirement of instant claim 14 that the composition be in the form of a solution (the elected species of the form of the composition), the modified composition of Rowney et al in view of Minguet et al being formulated as a liquid renders obvious this limitation.
Thus, the modified composition of Rowney et al in view of Minguet et al renders obvious the composition of instant claims 1-6, 8-11, 14-24, and 26.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Rowney et al (as cited above) in view of Minguet et al (as cited above) as applied to claims 1-6, 8-11, 14-24, and 26 above, and further in view of Personal Care Magazine (“Dealing with dandruff needs integrated approach”, published 04/30/2009, cited in Notice of References Cited dated 02/03/2026).
The modified composition of Rowney et al in view of Minguet et al has been discussed supra.
Although Rowney et al teach the composition comprising other ingredients or excipients which will be well known to those skilled in the art (see supra), Rowney et al do not teach sodium shale oil sulfonate as a suitable other ingredient or excipient.
This deficiency is made up for in the teaching of Personal Care Magazine (hereafter PCM).
PCM teaches sodium shale oil sulfonate (SSOS) as an active substance for treatment of scaling skin disorders such as dandruff and psoriasis of the scalp on account of its multifunctionality together with natural origin and good tolerance (See entire document, e.g., Last Par. of Page 4, Conclusion on Page 12). PCM teaches that SSOS treats symptoms occurring together with dandruff or as a result of its aggressive treatment, i.e., skin redness, inflammation and agonizing itching (e.g., Conclusion on Page 12). PCM teaches use of and tolerance of SSOS in cosmetics and shampoos (e.g., e.g., Last Par. of Page 4).
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 use SSOS as one of the other ingredients or excipients in the modified composition of Rowney et al in view of Minguet et al. One of ordinary skill in the art would have been motivated to do so in order to further enhance the anti-dandruff properties of the composition and to further treat symptoms occurring together with dandruff or as a result of its aggressive treatment, i.e., skin redness, inflammation and agonizing itching, and there would have been a reasonable expectation of success because the modified composition of Rowney et al in view of Minguet et al is a liquid cosmetic cleansing composition for topical application to the skin and/or hair that effectively cleanses the skin and/or hair while maintaining mildness and having anti-dandruff and/or anti-acne properties and PCM teaches the compatibility of SSOS in cosmetics and shampoos.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950)).
Thus, the modified composition of Rowney et al in view of Minguet et al further comprising SSOS as one of the other ingredients or excipients in view of PCM renders obvious the composition of instant claim 12.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Rowney et al (as cited above) in view of Minguet et al (as cited above) as applied to claims 1-6, 8-11, 14-24, and 26 above, and further in view of Tian et al (“Nanoemulsification of Ceramide-2 by Sodium Dilauramidoglutamide Lysine, a Novel Peptide-Based Gemini Surfactant”, J. Surfact. Deterg., (2016), 19, 653-661, published 05/18/2016, cited in Notice of References Cited dated 02/03/2026).
The modified composition of Rowney et al in view of Minguet et al has been discussed supra.
Although Rowney et al teach the composition comprising other ingredients or excipients which will be well known to those skilled in the art (see supra), Rowney et al do not teach sodium dilauramidoglutamide lysine as a suitable other ingredient or excipient.
This deficiency is made up for in the teaching of Tian et al.
Tian et al teach a study regarding sodium dilauramidoglutamide lysine (DLGL) (See entire document), and in their introduction regarding background information about DLGL, Tian et al teach that DLGL is similar to ceramides, however DLGL possesses repair qualities for skin and hair damage, and unlike ceramides, DLGL does not significantly irritate the skin (e.g., Page 653 Col. 2 Par. 2 – Page 654 Col. 1 Par. 1). Tian et al teach that DLGL is biodegradable and is known to remarkably improve ecological compatibility by lowering the potential toxicity, which makes it more widely applicable for pharmaceutical and cosmetic applications (e.g., Page 653 Col. 2 Par. 2 – Page 654 Col. 1 Par. 1).
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 use DLGL as one of the other ingredients or excipients in the modified composition of Rowney et al in view of Minguet et al. One of ordinary skill in the art would have been motivated to do so in order to introduce a skin and/or hair repairing property to the composition without significant skin irritation and there would have been a reasonable expectation of success because the modified composition of Rowney et al in view of Minguet et al is a liquid cosmetic cleansing composition for topical application to the skin and/or hair that effectively cleanses the skin and/or hair while maintaining mildness and having anti-dandruff and/or anti-acne properties and Tian et al teach the compatibility of DLGL in cosmetics.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950)).
Thus, the modified composition of Rowney et al in view of Minguet et al further comprising DLGL as one of the other ingredients or excipients in view of Tian et al renders obvious the composition of instant claim 13.
Response to Applicant’s Arguments
Applicant’s arguments filed 06/03/2026 have been considered.
Applicant argues that neither Rowney nor Minguet disclose a topical anti-dandruff composition that is stable for at least three months at a temperature comprised between 5°C and 40°C and neither Rowney nor Minguet discuss the issue of composition stability. Applicant argues that Rowney makes no mention of dandruff treatment, Minguet discloses anti-dandruff compositions but containing betaine-based surfactants, for which Applicant has demonstrated in comparative examples C3 and C4 of Example 1 show that the inclusion of betaine-based surfactants leads to opaque formulations that are unstable after one week.
The above arguments have been fully considered by the Examiner but are not found persuasive because the rejection of claims 1-6, 8-11, 14-24, and 26 under 35 USC 103 does not rely on Minguet et al for a teaching of an anti-dandruff composition containing betaine-based surfactants, but rather the rejection relies on Minguet et al to cure the deficiency in the teaching of Rowney et al being that Rowney et al do not teach N-ethyl-lauroyl-arginate as a suitable preservative. As can be seen in the new grounds of rejection of claims 1-6, 8-11, 14-24, and 26 under 35 USC 103 above, (1) one of ordinary skill in the art would have been motivated to use LAE as a preservative in the composition of Rowney et al because Minguet et al teach advantages of using LAE as an alternative preservative to isothiazolone including being safer for human use, being better for the environment, and being effective against the microorganisms Malassezia furfur, involved in the proliferation of dandruff, and Propionibacterium acnes, involved in acne formation and there would have been a reasonable expectation of success because Rowney et al teach the compatibility of the composition with preservatives such as isothiazolone and (2) one of ordinary skill in the art would have been motivated to use LAE up to 0.4% or 0.8% in the composition of Rowney et al because Minguet et al teach safe use of LAE in amounts with these upper limits in cosmetic formulations and for anti-dandruff shampoos, antibacterial soaps and deodorants, respectively, and there would have been a reasonable expectation of success because Rowney et al teach the compatibility of the composition with preservatives from about 0.001% to about 10% by weight of the composition, and the amounts taught by Minguet et al, i.e., up to 0.4% or 0.8%, fall within the range taught by Rowney et al. The modified composition of Rowney et al in view of Minguet et al being a liquid cosmetic cleansing composition for topical application to the skin and/or hair that effectively cleanses the skin and/or hair while maintaining mildness and having anti-dandruff and/or anti-acne properties meets the limitation of a topical anti-dandruff composition required by amended claim 1. Applicant is reminded that 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). Although the stability of the modified composition of Rowney et al in view of Minguet et al is not directly taught, because the modified composition of Rowney et al in view of Minguet et al is the same as the composition of the instant claims, the modified composition of Rowney et al in view of Minguet et al is necessarily stable for at least three months at a temperature between 5 °C and 40 °C. 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. "Products of identical chemical composition cannot have mutually exclusive properties" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Further, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether the stability of Applicant’s composition at a temperature of between 5 °C and 40 °C over at least three months differs, and if so to what extent, from the modified composition of Rowney et al in view of Minguet et al, and therefore, the burden of establishing non-obviousness by objective evidence is shifted to Applicant.
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.
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
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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