DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Receipt of Remarks/Amendments filed on 12/03/2025 is acknowledged. Claims 1, 7-8, 15, 18, and 20 are amended and claims 3-6, 17, and 19 are canceled. Claims 1-2, 7-16, 18, and 20 are currently pending and are examined on the merits herein.
Priority
The instant application filed 09/29/2023, is a 371 filing of PCT/EP2022/060335, filed 04/20/2022, which claims priority to Provisional Application No. 63/177,938, filed 04/21/2021.
Claim Interpretation
Regarding the recitation of “for treating a keratinous surface” as recited in claim 1, this is simply a statement of intended use. Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). If the composition of the prior art is found to meet all of the structural limitations of claim 1, it will also be considered capable of performing the recited intended use. An anhydrous composition is being interpreted as a composition comprising less than 5% by weight of water relative to the total weight of the composition, as defined in the instant specification and claim 9. A deodorant spray as recited in claim 14 may be broadly interpreted as any spray that removes or conceals unpleasant smells, especially bodily odors, as evidenced by the definition of a deodorant in the Oxford Language Dictionary (PTO-892). As such, any spray that provides a masking perfume or fragrance will be interpreted as reading on a deodorant spray.
Withdrawn Rejections
Claims 15-16 and 19-20 were rejected under 35 U.S.C. 112(a) for scope of enablement. Applicant’s amendments to the claims and the cancelation of claim 19 have overcome the rejection and the rejection is withdrawn.
Claim 3-4 and 17 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s cancelation of claims 3-4 and 17 have overcome the rejection and the rejection is withdrawn.
Claim 7 and 8 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s amendments to the claims have overcome the rejection and the rejection is withdrawn.
Claims 1-3 and 7-14 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kimoto. Applicant’s amendments to the claims have overcome the rejection and the rejection is withdrawn.
Claims 1-3, 7-14, and 17 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holzner. Applicant’s amendments to the claims have overcome the rejection and the rejection is withdrawn.
Claims 1-4, 7-14, and 17 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wight. Applicant’s amendments to the claims have overcome the rejection and the rejection is withdrawn.
Claims 3-6, 17, and 19 were rejected under 35 U.S.C. 103 over Hammer in view of Rinaudo. Applicant’s cancelation of claims 3-6, 17, and 19 have overcome the rejection and the rejection is withdrawn.
The following rejections are new and maintained, with the new rejections being necessitated by amendment:
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.
Claims 1-20 are 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.
Claims 1 and 10 recite a “cosmetically acceptable excipient” which encompasses a broad range of compounds including perfumes and alcohols. Additionally, the water-soluble matrix materials, such as starch, can be considered excipients. Thus, it is unclear how the second and third components of claim 1 (i.e., the entrapped perfume and the alcohol) are different from the cosmetically acceptable excipient of claims 1 and 10. As such, the claim is indefinite. For the sake of compact prosecution, the cosmetically acceptable excipient is being interpreted as any component present in the final composition which has excipient properties, regardless of if it reads on another component.
The remaining claims are rejected by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 7-14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kimoto, Y., et al. (JP H08208429 A, 08/13/1996, IDS dated 09/29/2023, ip.com translation used, on record), hereinafter Kimoto, in view of Rinaudo, E., et al. (WO 2020049192 A2, 03/12/2020, IDS dated 09/29/2023), hereinafter Rinaudo, as evidenced by Special Chem, Alcohol, Updated 07/02/2025. Retrieved 2025. (on record), hereinafter Special Chem.
Kimoto teaches a powder-containing aerosol composition containing a microencapsulated fragrance and a specific powder dispersant, having a persistent scent after use, and having extremely good powder dispersibility and usability (p. 2, para. 3). The microcapsules of Kimoto contain a water-soluble saccharide and an arbitrary fragrance in the form of liquid fine particles (p. 2, para. 7). Specifically, microencapsulated perfume (citrus) is microencapsulated with 25 g of starch, 10 g of mannitol, and 1g of lactose (p. 8, para. 5). Example 6 teaches a powder cologne spray comprising talc, silica anhydride, microencapsulated fragrance (citrus), ethanol (20.0%), 1,3-butylene glycol, cetyl isooctanoate, sorbitan monooleate, citrus fragrance, and liquefied petroleum gas. The components are put in an aluminum aerosol can and then a valve is attached and liquified petroleum gas is pressure-filled (p. 9, example 6). The composition comprises no water thereby reading on an anhydrous composition as defined in instant claims 1 and 9. The microencapsulated perfume (citrus) reads on the instantly claimed perfume ingredient that is entrapped in a water-soluble matrix as recited in claim 1. The liquid fine particles read on a particulate form as recited in claim 7. The 20.0% ethanol reads on the instantly claimed alcohol and its amount as recited in claims 1-2. Ethanol further reads on the cosmetically acceptable excipient of claim 1, specifically the preservative of claim 10, as evidenced by Special Chem. The liquified petroleum gas reads on the propellant of claim 11. Overall, the powder cologne spray reads on the consumer product of claims 12-14.
The teachings of Kimoto differ from that of the instantly claimed invention in that Kimoto does not explicitly teach the water-soluble matrix as defined in amended claim 1, nor its associated properties as recited in claims 7-8, and additional components of claim 18.
Rinaudo discloses an encapsulated composition comprising at least one perfume and/or cosmetic ingredient that is entrapped in a matrix. The matrix comprises a starch and a hemicellulose (abstract; claim 1). It is known to employ encapsulated perfume compositions in leave-on personal care products, both to fragrance the human or animal body and to counteract malodor. Leave-on products are adapted for topical application to hair or skin of a subject and left on the body for a prolonged period of time (p. 1, lines 5-8). In order to control perfume release, encapsulated perfume compositions are used in such products (p. 1, lines 18-19). It has been found that addition of a hemicellulose to a starch matrix leads to a modification of the matrix, improving its perfume release properties under moisture and mechanical (e.g. friction) activation. The resulting perfume encapsulates are facile and cost-effective in manufacture. Furthermore, they are prepared of naturally-based polysaccharides, which are non-toxic and biodegradable. Such encapsulates therefore have an increased consumer-appeal (p. 2, lines 25-30). The starch is a water-soluble modified starch selected from the group consisting of bleached starch, hydroxypropyl starch, hydroxypropyl distarch phosphate, dydroxypropyl distarch glycerol, acetylated distarch phosphate, starch acetate esterified with acetic anhydride, starch acetate esterified with vinyl acetate, acetylated distarch adipate, acetylated distarch glycerol, starch sodium octenyl succinate and mixtures thereof (p. 3, lines 3-7; claims 2-3). Such water-soluble modified starches read on the starches of instant claim 1. The hemicellulose is a xyloglucan obtainable from tamarind seeds (p. 3, lines 16-21; claim 4), which reads on b) of claim 1 and 18. The encapsulated composition additionally comprises a compound selected from the group consisting of maltodextrin, mannitol and mixtures thereof (claim 5), which reads on a) of claim 1.
The encapsulated composition is in particulate form (claim 10), which reads on instant claim 7. Regarding claim 8, because the water-soluble matrix comprising an entrapped perfume of Rinaudo is identical to the water-soluble matrix comprising an entrapped perfume claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
The process of preparing the encapsulated composition comprises the steps of: a) Preparing an emulsion comprising at least one perfume and/or cosmetic ingredient, a starch and a hemicellulose in water; b) Subjecting the emulsion to drying, in particular spray-drying or adsorption onto silicon dioxide, to obtain an encapsulated composition (p. 8-9, lines 29-2; claim 11). The drying method of Rinaudo would therefore yield the encapsulates anhydrous. Examples 2-4 teach encapsulated composition comprising perfume oil, starch sodium octenyl succinate, maltodextrin or mannitol, and tamarid kernel powder (i.e., hemicellulose), which reads on a perfume encapsulated by the water-soluble matrix of instant claim 1. The encapsulated composition of Rinaudo has superior olfactive performance compared to conventional starch encapsulates (Ex. 4, p. 13, lines 27-30). Rinaudo further discloses a consumer product, preferably a personal care product, comprising the encapsulated composition (p. 10, lines 21-23; claim 14).
It would have been obvious to combine the compositions of Kimoto and Rinaudo before the effective filing date of the claimed invention by substituting the encapsulating matrix of Kimoto with the encapsulating matrix of Rinaudo to yield the instantly claimed invention. First, it would have been prima facie obvious to substitute the encapsulates of Kimoto with the encapsulates of Rinaudo since starch matrices for the encapsulation of perfume are known and routine in the art. Thus, one of ordinary skill in the art could have substituted one starch matrix for another to predictably yield an encapsulated perfume which can be incorporated into a consumer product. Additionally, one of ordinary skill in the art would have been motivated to use the encapsulates of Rinaudo in the composition of Kimoto, since the encapsulates of Rinaudo improve perfume release and olfactive performance compared to conventional starch encapsulates, such as those of Kimoto. The perfume encapsulates of Rinaudo read on the instantly claimed water-soluble matrix comprising an entrapped perfume ingredient as defined in claims 1, 7-8, and 18. Kimoto teaches each additional limitation of claims 1-2 and 9-14, as discussed above.
One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the encapsulates of Rinaudo in the composition of Kimoto since both teach spray consumer products comprising starch encapsulated perfumes.
Claims 1-2, 7-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hammer, J., (US 20120282190 A1, 11/08/2012, on record), hereinafter Hammer in view of Rinaudo, E., et al. (WO 2020049192 A2, 03/12/2020, IDS dated 09/29/2023), hereinafter Rinaudo as evidenced by Special Chem, Alcohol, Updated 07/02/2025. Retrieved 2025. (on record), hereinafter Special Chem.
Hammer relates to compositions, methods, and kits comprising a dry shampoo composition, and more particularly to a dry shampoo composition provided as an aerosol ([0001]). The aerosol dry shampoo composition comprises: a carrier material; a starch material; a clay material; and a propellant ([0004]; claim 1). Specifically, the starch material is aluminum starch octenylsuccinate; the carrier material comprises ethanol in a weight percentage between about 1% and about 20%; and the propellant is isobutane ([0005]-[0006]; claim 19). The composition further comprises an additive, specifically a perfume (abstract; claims 12 and 15). Hammer makes no mention of including water in the composition and examples 1-4 teach various aerosol dry shampoos of the invention, none of which comprise water. As such, the composition of Hammer is anhydrous as recited in claim 1 and 9. The carrier material (i.e., ethanol), starch, clay, and silica of Hammer read on the a cosmetically acceptable excipient as recited in claim 1. The 1-20% of ethanol in Hammer reads on the alcohol and its amount as defined in instant claims 1 and 2. Ethanol also reads on a preservative as recited in claim 10, as evidenced by Special Chem. The clay and silica also read on absorbents as recited in claim 10. The isobutane reads on the propellant of claim 11. The composition of Hammer is a dry shampoo aerosol composition which reads on the consumer product of claims 12-14. An effective amount of the dry shampoo composition may be applied to hair, preferably dry hair. In some cases, the application of the shampoo may encompass massaging or working the shampoo in the hair such that all or most of the hair proximate the scalp is contacted ([0029]). Hammer does not teach a rinsing step and it is typical in the art that dry shampoo is not rinsed. As such, the method of Hammer reads on the instantly claimed method of claims 15-16 and 20.
The teachings of Hammer differ from that of the instant invention in that Hammer does not explicitly teach a perfume ingredient that is entrapped in the water-soluble matrix of claim 1, nor its associated properties as recited in claims 7-8, and additional components of claim 18.
Rinaudo discloses an encapsulated composition comprising at least one perfume and/or cosmetic ingredient that is entrapped in a matrix. The matrix comprises a starch and a hemicellulose (abstract; claim 1). Such encapsulates read on a perfume ingredient that is entrapped in a water-soluble matrix as recited in claim 1. It is known to employ encapsulated perfume compositions in leave-on personal care products, both to fragrance the human or animal body and to counteract malodor. Leave-on products are adapted for topical application to hair or skin of a subject and left on the body for a prolonged period of time (p. 1, lines 5-8). In order to control perfume release, encapsulated perfume compositions are used in such products (p. 1, lines 18-19). It has been found that addition of a hemicellulose to a starch matrix leads to a modification of the matrix, improving its perfume release properties under moisture and mechanical (e.g. friction) activation. The resulting perfume encapsulates are facile and cost-effective in manufacture. Furthermore, they are prepared of naturally-based polysaccharides, which are non-toxic and biodegradable. Such encapsulates therefore have an increased consumer-appeal (p. 2, lines 25-30). The starch is a water-soluble modified starch selected from the group consisting of bleached starch, hydroxypropyl starch, hydroxypropyl distarch phosphate, dydroxypropyl distarch glycerol, acetylated distarch phosphate, starch acetate esterified with acetic anhydride, starch acetate esterified with vinyl acetate, acetylated distarch adipate, acetylated distarch glycerol, starch sodium octenyl succinate and mixtures thereof (p. 3, lines 3-7; claims 2-3). Such water-soluble modified starches read on the starches of instant claim 1. The hemicellulose is a xyloglucan obtainable from tamarind seeds (p. 3, lines 16-21; claim 4), which reads on b) of claim 1 and 18. The encapsulated composition additionally comprises a compound selected from the group consisting of maltodextrin, mannitol and mixtures thereof (claim 5), which reads on a) of claim 1.
The encapsulated composition is in particulate form (claim 10), which reads on instant claim 7. Regarding claim 8, because the water-soluble matrix comprising an entrapped perfume of Rinaudo is identical to the water-soluble matrix comprising an entrapped perfume claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
The process of preparing the encapsulated composition comprises the steps of: a) Preparing an emulsion comprising at least one perfume and/or cosmetic ingredient, a starch and a hemicellulose in water; b) Subjecting the emulsion to drying, in particular spray-drying or adsorption onto silicon dioxide, to obtain an encapsulated composition (p. 8-9, lines 29-2; claim 11). The drying method of Rinaudo would therefore yield the encapsulates anhydrous. Examples 2-4 teach encapsulated composition comprising perfume oil, starch sodium octenyl succinate, maltodextrin or mannitol, and tamarid kernel powder (i.e., hemicellulose), which reads on a perfume encapsulated by the water-soluble matrix of instant claim 1. The encapsulated composition of Rinaudo has superior olfactive performance compared to conventional starch encapsulates (Ex. 4, p. 13, lines 27-30). Rinaudo further discloses a consumer product, preferably a personal care product, comprising the encapsulated composition (p. 10, lines 21-23; claim 14).
It would have been obvious to combine the compositions of Hammer and Rinaudo before the effective filing date of the claimed invention by incorporating the encapsulated composition of Rinaudo into the dry shampoo aerosol composition of Hammer to yield the instantly claimed invention. First, it would have been prima facie obvious to combine the compositions of Hammer and Rinaudo since both are used in fragranced cosmetic products that may be sprayed onto keratinous surfaces. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Additionally, one of ordinary skill in the art would have been motivated to use the encapsulated perfume composition of Rinaudo in the dry shampoo composition of Hammer, since the encapsulated perfume composition of Rinaudo helps control perfume release and the perfume encapsulates of Rinaudo are facile and cost-effective to manufacturer with increased consumer-appeal. The perfume encapsulates of Rinaudo read on the instantly claimed water-soluble matrix comprising an entrapped perfume ingredient as defined in claims 1, 7-8, and 18. Hammer teaches each additional limitation of claims 1-2, 9-16, and 20, as discussed above.
One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the encapsulated perfume composition of Rinaudo in the aerosol dry shampoo composition of Hammer since Rinaudo teaches perfume encapsulated with starch octenylsuccinate and Hammer teaches that perfume and starch octenylsuccinate may be successfully incorporated into its dry shampoo composition individually.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
1. Claims 1-2, 7-16, 18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, and 13 of copending Application No. 17/422,346 in view of Hammer. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Hammer.
Copending claim 1 recites an encapsulated composition comprising at least one perfume and/or cosmetic ingredient that is entrapped in a matrix, wherein the matrix comprises a starch and a hemicellulose. The water- soluble modified starch is selected from the group consisting of bleached starch, hydroxypropyl starch, hydroxypropyl distarch phosphate, etc. (copending claim 3). The encapsulated composition additionally comprises a compound selected from the group consisting of maltodextrin, mannitol and mixtures thereof (copending claim 5). Copending claim 13 recites a consumer product comprising an encapsulated composition of claim 1. The copending claims differ from the instant invention in that they do not recite an anhydrous composition comprising an alcohol in an amount of 1-30 wt. % nor a method for treating a keratinous surface.
Hammer relates to compositions, methods, and kits comprising a dry shampoo composition, and more particularly to a dry shampoo composition provided as an aerosol ([0001]). The aerosol dry shampoo composition comprises: a carrier material; a starch material; a clay material; and a propellant ([0004]; claim 1). Specifically, the clay material is stearalkonium hectorite; the starch material is aluminum starch octenylsuccinate; the carrier material comprises ethanol in a weight percentage between about 1% and about 20% and cyclomethicone in a weight percentage between about 0.1% and about 15%; the propellant is isobutane; and further comprising silica ([0005]-[0006]; claim 19). The composition further comprises an additive, specifically a perfume (claims 12 and 15). Examples 1-4 teach aerosol dry shampoo compositions, none of which comprise water. As such, the compositions of Hammer are anhydrous. An effective amount of the dry shampoo composition may be applied to hair, preferably dry hair. In some cases, the application of the shampoo may encompass massaging or working the shampoo in the hair such that all or most of the hair proximate the scalp is contacted ([0029]).
It would have been obvious to combine the compositions of the copending claims and Hammer before the effective filing date of the claimed invention by incorporating the encapsulated composition of the copending claims into the dry shampoo aerosol composition of Hammer to yield the instantly claimed invention. It would have been prima facie obvious to use the encapsulated perfume composition of the copending claims in the dry shampoo composition of Hammer, since the combination of prior art elements according to known methods to yield predictable results is considered prima facie obvious. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the encapsulated perfume composition of the copending claims into the aerosol dry shampoo composition of Hammer since the copending claims recite a perfume encapsulated with starch and Hammer teaches that perfume and starch may be successfully incorporated into dry shampoo compositions individually. It would have been further obvious to use the combined composition of the copending claims and Hammer in the method of Hammer which comprises applying an aerosol composition to keratin material such as scalp hair.
This is a provisional nonstatutory double patenting rejection.
2. Claims 1-2, 7-16, 18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-9, and 22 of copending Application No. 18/250,443 in view of Hammer. The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Hammer.
Copending claim 1 recites an encapsulated composition comprising a perfume composition that is entrapped in a water-soluble matrix. The water-soluble matrix comprises at least one material selected from the group consisting of starch, in particular water- soluble modified starch, maltodextrin, mannitol, chitosan, gum Arabic, alginate, cellulose, pectins, gelatin, polyvinyl alcohol and mixtures thereof (copending claim 5). The water-soluble matrix comprises a water-soluble modified starch selected from the group consisting of bleached starch, hydroxypropyl starch, hydroxypropyl distarch, etc. (copending claim 6). The water-soluble matrix additionally comprises a material selected from the group consisting of maltodextrin, mannitol and mixtures thereof and additionally comprises hemicellulose, particularly xyloglucan obtainable form tamarind seeds (copending claims 7-9). Copending claim 22 recites a consumer product comprising an encapsulated composition of the invention, preferably a fabric care product, a home care product or a personal care product. The copending claims differ from the instant invention in that they do not recite an anhydrous composition comprising an alcohol in an amount of 1-30 wt. % nor a method for treating a keratinous surface.
Hammer relates to compositions, methods, and kits comprising a dry shampoo composition, and more particularly to a dry shampoo composition provided as an aerosol ([0001]). The aerosol dry shampoo composition comprises: a carrier material; a starch material; a clay material; and a propellant ([0004]; claim 1). Specifically, the clay material is stearalkonium hectorite; the starch material is aluminum starch octenylsuccinate; the carrier material comprises ethanol in a weight percentage between about 1% and about 20% and cyclomethicone in a weight percentage between about 0.1% and about 15%; the propellant is isobutane; and further comprising silica ([0005]-[0006]; claim 19). The composition further comprises an additive, specifically a perfume (claims 12 and 15). Examples 1-4 teach aerosol dry shampoo compositions, none of which comprise water. As such, the compositions of Hammer are anhydrous. An effective amount of the dry shampoo composition may be applied to hair, preferably dry hair. In some cases, the application of the shampoo may encompass massaging or working the shampoo in the hair such that all or most of the hair proximate the scalp is contacted ([0029]).
It would have been obvious to combine the compositions of the copending claims and Hammer before the effective filing date of the claimed invention by incorporating the encapsulated composition of the copending claims into the dry shampoo aerosol composition of Hammer to yield the instantly claimed invention. It would have been prima facie obvious to use the encapsulated perfume composition of the copending claims in the dry shampoo composition of Hammer, since the combination of prior art elements according to known methods to yield predictable results is considered prima facie obvious. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the encapsulated perfume composition of the copending claims in the aerosol dry shampoo composition of Hammer since the copending claims recite a perfume encapsulated with starch and Hammer teaches that perfume and starch may be successfully incorporated into its dry shampoo composition individually. It would have been further obvious to use the combined composition of the copending claims and Hammer in the method of Hammer which comprises applying an aerosol composition to keratin material such as scalp hair.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
(1) In regards the to the 112(b) rejection of claims 1 and 10, Applicant states that the perfume of claim 1 is entrapped in a water-soluble matrix, whereas the “cosmetically acceptable excipient” does not require such a structural limitation. Additionally, the water-soluble matrix is now further defined in claim 1.
In response to the 112(b) issues of a “cosmetically acceptable excipient”, the issue still remains. The fact that the excipient does not require the structural limitation of being entrapped in a water-soluble matrix, does not negate the fact that the additional components of claim 1 could be considered cosmetically acceptable excipients (i.e., a perfume entrapped in starch, an alcohol).
(2) Applicant argues that the perfume discloses in Hammer is a “free” perfume, as opposed to an “encapsulated” perfume, and that there is no teaching or suggestion in Hammer of a perfume ingredient that is entrapped in a water-soluble matrix (p. 5 of Remarks).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). While Hammer does teach a “free” perfume, Rinaudo is relied on for teaching an “encapsulated” perfume with specific advantages as discussed in the prior art rejection above.
(3) Applicant then points to Examples 4 and 5 of the instant specification comparing free perfume oil and entrapped perfumes according to the instant invention. The compositions of Examples 1 and 3 (both according to the invention) are superior to the shampoo containing free, unencapsulated perfume. Applicant asserts that this finding is surprising and unexpected in view of Hammer, alone or in combination with Rinaudo. According to Applicant, Rinaudo simply discloses that at least one perfume ingredient is entrapped in a water-soluble matrix, however, there is no teaching or suggestion of employing such a composition in combination with alcohol and at least one cosmetically acceptable excipient. As such, Applicant asserts that the skilled person finds no motivation, either in Hammer or in Rinaudo, to modify the compositions of Hammer in the expectation to provide an improved composition for the treatment of keratinous surfaces (p. 5-6 of Remarks)
In response to the above arguments, Examiner respectfully disagrees. As stated by the Applicant, Rinaudo teaches a perfume ingredient entrapped in a water-soluble matrix. Rinaudo further teaches that encapsulated perfume compositions are known and routine in leave-on personal care products adapted for topical application to hair or skin (p. 1, lines 5-14). Rinaudo explicitly teaches the use of the encapsulated perfume in a personal care product (p. 10, lines 21-27). Thus, Hammer and Rinaudo both teach perfumed personal care products applied to keratinous surfaces. At the very least, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). However, Rinaudo additionally teaches several advantages associated with the encapsulated perfume which would have provided even further motivation for one of ordinary skill in the art to incorporate the encapsulated perfume of Rinaudo into the personal care product of Hammer. For instance, the encapsulates of Rinaudo possess improved perfume release properties under moisture and mechanical (e.g. friction) activation. The resulting perfume encapsulates are facile and cost-effective in manufacture (p. 2, lines 25-30). Additionally, Rinaudo teaches the use of the encapsulated perfume for reducing the amount of the perfume in a personal care product (p. 10, lines 28-35). As such, one of ordinary skill in the art would have been motivated to use the encapsulates of Rinaudo in the dry shampoo of Hammer, since the encapsulates of Rinaudo provides increased control over perfume release in a facile and cost-effective manner, such that less perfume is needed in the personal care produce. An improvement in perfume release properties and the amount of perfume needed would have been desirable in the composition of Hammer which teaches a dry shampoo comprising perfume. The use of a known technique (i.e., perfume encapsulation of Rinaudo) to improve similar products (i.e., scented personal care products) in the same way is considered prima facie obvious. See MPEP 2143.
Regarding Applicant’s assertion of surprising and unexpected results as shown in Examples 4 and 5 of the instant specification, the Examiner does not think these results are surprising based on the teachings of Hammer and Rinaudo and the knowledge available to one of ordinary skill in the art. As discussed above, Rinaudo teaches improved perfume release properties under moisture and mechanical (e.g. friction) activation (p. 2, lines 25-30). Examples 1 and 4-5 of Rinaudo teaches the evaluation of encapsulated perfume compositions as rated by panelists on a scale of 0 to 5 (p. 11, lines 12-14). The compositions were scored pre-activation and post-friction/moisture activation. Compositions comprising encapsulated perfume according to Rinaudo showed a significant increase with respect to the benchmark following friction activation (p. 11, lines 29-31; Table 1). Example 4 further discloses that the encapsulated compositions of Rinaudo show superior olfactive performance and stability compared to conventional starch encapsulates at both pre-activation and post-activation (friction and moisture) (p. 13, lines 27-30; Table 2). Rinaudo also discusses how, in general, encapsulated perfume compositions are used to control perfume release. “On-demand” perfume release can be achieved with capsules that break due to friction or moisture (p. 1, lines 18-26). Thus, one of ordinary skill in the art would understand that a composition comprising a free perfume would not possess the controlled perfume release which is achieved by the perfume encapsulates of Rinaudo. A skilled artisan would have arrived at the instantly claimed invention by adding the encapsulated perfume of Rinaudo into a free-fragrance consumer product with a reasonable expectation of improving the perfume release properties in terms of pre and post activation (moisture or friction), as taught by Rinaudo. The entire disclosure of Rinaudo centers around the improvement of perfume release properties in regards to pre- and post- friction and moisture activation. The improvement of pre- and post-activation intensity after several hours as discussed in Applicant’s arguments and shown in the specification Examples 4 and 5, would not have been a surprising or unexpected result to one of ordinary skill in the art given the teachings of Hammer and Rinaudo. Furthermore, these results are even less surprising and unexpected in view of the rejection of Kimoto and Rinaudo, since Rinaudo explicitly teaches the improvement of pre- and post- friction and moisture activation when comparing conventional starch encapsulates, similar to those of Kimoto, and encapsulates of the instant invention.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616