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
Claims 21-40 are pending.
Claims 1-20 are canceled.
Election/Restriction
Applicant's election with traverse of Group I, claims 21-38, in the reply filed on 01/26/2026 is acknowledged.
Applicant has also elected the following in the reply dated 01/26/2026:
Sodium lauryl ether sulfate as the species of the at least one anionic surfactant;
Cocoyl betaine as the species of the at least one amphoteric or zwitterionic surfactant;
Dimethicone as the species of the one or more polydialkylsiloxanes comprising trialkylsilyl end groups and having a viscosity at 25 °C ranging from 40,000 to 100,000 mPa.s;
Amodimethicone as the species of the one or more amino silicones having a viscosity at 25 °C ranging from 1,000 to 15,000 mPa.s and an amine number ranging from 2 to 10 mg of KOH per gram of amino silicone;
PEG-100 stearate as the species of the one or more nonionic surfactants; and
Stearamidopropyl dimethylamine as the species of the one or more agents chosen from fatty amines, fatty acids, fatty alcohols, or mixtures thereof.
The traversal of the restriction requirement is on the grounds that Pinto does not teach agent d) of the instant claims and Groups I and II are directed to a single inventive concept that can be examined together without imposing a distinct search or examination burden, and accordingly, the unity of invention requirement is satisfied. The traversal of the election of species requirement is on the grounds that the Office has not shown that the disclosed species lack unity of invention and has not provided any reasoning as to why a single general inventive concept does not exist among the alleged species.
This is not found persuasive because, per PCT Rule 13.1, the international application shall relate to a group of inventions so linked as to form a single general inventive concept or a “unity of invention” (see MPEP 1850). Per PCT Rule 13.2, “unity of invention” is fulfilled by defining a special technical feature that is shared amidst the claimed inventions. The Rule further specifies that “[t]he expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.” Lack of unity of invention may be directly evident “a priori,” or before considering any prior art when no special technical feature is common to each of the independent claims. Alternatively, lack of unity of invention may only become evident “a posteriori,” or after considering the claims in relation to the prior art. By a posteriori analysis, the claimed invention still lacks unity of invention as demonstrated by the teaching of Pinto et al (WO 2020/146931 A1, published 07/23/2020, filed 01/17/2019, cited in IDS dated 11/22/2023) discussed in the instant Office action below (See rejection under 35 USC 103 below). The argument regarding search burden is not persuasive because these are not criteria for lack of unity of invention for national stage applications per PCT rule 13.1 and 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 39-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 36-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (i.e., Applicant has elected stearamidopropyl dimethylamine as the species of the one or more agents chosen from fatty amines, fatty acids, fatty alcohols, or mixtures thereof, for which stearamidopropyl dimethylamine is a fatty amine not a fatty acid or fatty alcohol), there being no allowable generic or linking claim.
Claims 21-35 and 38 are being examined to the extent of the elected species, i.e., the at least one anionic surfactant is sodium lauryl ether sulfate, the at least one amphoteric or zwitterionic surfactant is cocoyl betaine, the one or more polydialkylsiloxanes comprising trialkylsilyl end groups and having a viscosity at 25 °C ranging from 40,000 to 100,000 mPa.s is dimethicone, the one or more amino silicones having a viscosity at 25 °C ranging from 1,000 to 15,000 mPa.s and an amine number ranging from 2 to 10 mg of KOH per gram of amino silicone is amodimethicone, the one or more nonionic surfactants is PEG-100 stearate, and the one or more agents chosen from fatty amines, fatty acids, fatty alcohols, or mixtures thereof is stearamidopropyl dimethylamine.
Priority
This application is a 371 of PCT/EP2022/062977 filed 05/12/2022, claiming priority to FR2105047 filed 05/12/2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Because an English translation of the foreign priority document has not been provided, the effective filing date of the instant application is 05/12/2022.
Information Disclosure Statement
The information disclosure statements (IDS) filed 11/22/2023 and 02/20/2024 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action. The Non-Patent Literature Document Cite No. 1 in the IDS dated 02/20/2024 has been struck through because no corresponding document is present in the case file.
Claim Objections
Claims 21, 28-30, and 33 are objected to because of the following:
In each of claim 21 (line 7 and line 8) and claim 29 (line 2), a space should be inserted between the recitation of the temperature and the degree sign (i.e., “25°C” should be amended to “25 °C”);
In each of claim 21 (line 8 and line 9) and claim 29 (line 2), “mPa.s” should be amended to either “mPa·s” or “mPas”;
In each of claim 21 (line 4) and claim 33 (line 2), “D50” should be amended to “D50”;
In the last line of claim 28, “2000” should be amended to “2,000”;
In the last line of claim 30, “1000” should be amended to “1,000”; and
The formatting of either claim 28 or claim 30 should be amended for consistency (i.e., either add line breaks to claim 30 to offset formula (II) centered in its own line to match the formatting of claim 28 or delete the line breaks from claim 28 regarding formula (I) to match the formatting of claim 30).
Appropriate correction is required.
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 22-25, 27-34, and 38 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.
(a) Claim 22 recites the limitation "the anionic surfactant(s)" in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 22 nor claim 21 earlier recite “anionic surfactant(s)", however claim 21 recites “at least one anionic surfactant”. Thus, it is unclear whether "the anionic surfactant(s)" in claim 22 refers to one of the at least one anionic surfactant of claim 21, more than one of the at least one anionic surfactant of claim 21, all of the at least one anionic surfactant of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
Claim 23 is rejected for depending on claim 22 without resolving the ambiguity and similarly recites the limitation “the anionic surfactant(s)” in line 1.
The Examiner suggests amending "the anionic surfactant(s)" in each of claims 22 and 23 to “the at least one anionic surfactant” in order to overcome this rejection.
(b) Claim 24 recites the limitation "the anionic surfactant(s)" in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 24 nor claim 21 earlier recite “anionic surfactant(s)", however claim 21 recites “at least one anionic surfactant”. Thus, it is unclear whether "the anionic surfactant(s)" in claim 24 refers to one of the at least one anionic surfactant of claim 21, more than one of the at least one anionic surfactant of claim 21, all of the at least one anionic surfactant of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending "the anionic surfactant(s)" in claim 24 to “the at least one anionic surfactant” in order to overcome this rejection.
(c) Claim 25 recites the limitation "the total amount of anionic surfactant(s)" in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 25 nor claim 21 earlier recite “anionic surfactant(s)", however claim 21 recites “at least one anionic surfactant”. Thus, it is unclear whether the "anionic surfactant(s)" in claim 25 refers to one of the at least one anionic surfactant of claim 21, more than one of the at least one anionic surfactant of claim 21, all of the at least one anionic surfactant of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending "the total amount of anionic surfactant(s)" in claim 25 to “the total amount of the at least one anionic surfactant” in order to overcome this rejection.
(d) Claim 27 recites the limitation "the amphoteric or zwitterionic surfactant(s)" spanning lines 1-2. There is insufficient antecedent basis for this limitation in the claim because neither claim 27 nor claim 21 earlier recite “amphoteric or zwitterionic surfactant(s)", however claim 21 recites “at least one amphoteric or zwitterionic surfactant”. Thus, it is unclear whether "the amphoteric or zwitterionic surfactant(s)" in claim 27 refers to one of the at least one amphoteric or zwitterionic surfactant of claim 21, more than one of the at least one amphoteric or zwitterionic surfactant of claim 21, all of the at least one amphoteric or zwitterionic surfactant of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending "the amphoteric or zwitterionic surfactant(s)" in claim 27 to “the at least one amphoteric or zwitterionic surfactant” in order to overcome this rejection.
(e) Claim 28 recites the limitation “the polydialkylsiloxane(s) having trialkylsilyl end groups” spanning lines 1-2. There is insufficient antecedent basis for this limitation in the claim because neither claim 28 nor claim 21 earlier recite “polydialkylsiloxane(s) having trialkylsilyl end groups”, however claim 21 recites “one or more polydialkylsiloxanes comprising trialkylsilyl end groups”. Thus, it is unclear whether “the polydialkylsiloxane(s) having trialkylsilyl end groups” in claim 28 refers to one of the one or more polydialkylsiloxanes comprising trialkylsilyl end groups of claim 21, more than one of the one or more polydialkylsiloxanes comprising trialkylsilyl end groups of claim 21, all of the one or more polydialkylsiloxanes comprising trialkylsilyl end groups of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending “the polydialkylsiloxane(s) having trialkylsilyl end groups” in claim 28 to “the one or more polydialkylsiloxanes comprising trialkylsilyl end groups” in order to overcome this rejection.
(f) Claim 29 recites the limitation “the polydialkylsiloxanes having trialkylsilyl end groups” spanning lines 1-2. There is insufficient antecedent basis for this limitation in the claim because neither claim 29 nor claim 21 earlier recite “polydialkylsiloxanes having trialkylsilyl end groups”, however claim 21 recites “one or more polydialkylsiloxanes comprising trialkylsilyl end groups”. Thus, it is unclear whether “the polydialkylsiloxanes having trialkylsilyl end groups” in claim 29 refers to one of the one or more polydialkylsiloxanes comprising trialkylsilyl end groups of claim 21, more than one of the one or more polydialkylsiloxanes comprising trialkylsilyl end groups of claim 21, all of the one or more polydialkylsiloxanes comprising trialkylsilyl end groups of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending “the polydialkylsiloxanes having trialkylsilyl end groups” in claim 29 to “the one or more polydialkylsiloxanes comprising trialkylsilyl end groups” in order to overcome this rejection.
(g) Claim 30 recites the limitation “the amino silicone(s)” in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 30 nor claim 21 earlier recite “amino silicone(s)”, however claim 21 recites “one or more amino silicones”. Thus, it is unclear whether “the amino silicone(s)” in claim 30 refers to one of the one or more amino silicones of claim 21, more than one of the one or more amino silicones of claim 21, all of the one or more amino silicones of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending “the amino silicone(s)” in claim 30 to “the one or more amino silicones” in order to overcome this rejection.
(h) Claim 31 recites the limitations “(i) polydialkylsiloxanes” spanning lines 1-2 and “(ii) amino silicones” in line 2. There is insufficient antecedent basis for each of these limitations in the claim because neither claim 31 nor claim 21 recite “(i) polydialkylsiloxanes” nor “(ii) amino silicones”, however claim 21 recites “(i) one or more polydialkylsiloxanes” and “(ii) one or more amino silicones”. Thus, it is unclear whether “(i) polydialkylsiloxanes” in claim 31 refers to one of the one or more polydialkylsiloxanes of claim 21, more than one of the one or more polydialkylsiloxanes of claim 21, all of the one or more polydialkylsiloxanes of claim 21, or whether something else is meant by the phrase and it is unclear whether “(ii) amino silicones” in claim 31 refers to one of the one or more amino silicones of claim 21, more than one of the one or more amino silicones of claim 21, all of the one or more amino silicones of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending “(i) polydialkylsiloxanes” in claim 31 to “the one or more polydialkylsiloxanes” and amending “(ii) amino silicones” in claim 31 to “the one or more amino silicones” in order to overcome this rejection.
(i) Claim 32 recites the limitation “the nonionic surfactants” in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 32 nor claim 21 earlier recite “nonionic surfactants”, however claim 21 recites “one or more nonionic surfactants”. Thus, it is unclear whether “the nonionic surfactants” in claim 32 refers to one of the one or more nonionic surfactants of claim 21, more than one of the one or more nonionic surfactants of claim 21, all of the one or more nonionic surfactants of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending “the nonionic surfactants” in claim 32 to “the one or more nonionic surfactants” in order to overcome this rejection.
(j) Claim 33 recites the limitation “the oil-in-water emulsion” in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 33 nor claim 21 earlier recite “an oil-in-water emulsion”, however claim 21 recites “at least one oil-in-water emulsion”. Thus, it is unclear whether “the oil-in-water emulsion” in claim 33 refers to one of the at least one oil-in-water emulsion of claim 21, more than one of the at least one oil-in-water emulsion of claim 21, all of the at least one oil-in-water emulsion of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending “the oil-in-water emulsion” in claim 33 to “the at least one oil-in-water emulsion” in order to overcome this rejection.
(k) Claim 34 recites the limitation “the total amount of oil-in-water emulsion” spanning lines 1-2. There is insufficient antecedent basis for this limitation in the claim because neither claim 34 nor claim 21 earlier recite “oil-in-water emulsion”, however claim 21 recites “at least one oil-in-water emulsion”. Thus, it is unclear whether the "oil-in-water emulsion" in claim 34 refers to one of the at least one oil-in-water emulsion of claim 21, more than one of the at least one oil-in-water emulsion of claim 21, all of the at least one oil-in-water emulsion of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending "the total amount of oil-in-water emulsion” in claim 34 to “the total amount of the at least one oil-in-water emulsion” in order to overcome this rejection.
(l) Claim 38 recites the limitation “the total amount of agents” in line 1. There is insufficient antecedent basis for this limitation in the claim because neither claim 38 nor claim 21 earlier recite “agents”, however claim 21 recites “one or more agents”. Thus, it is unclear whether the "agents" in claim 38 refers to one of the one or more agents of claim 21, more than one of the one or more agents of claim 21, all of the one or more agents of claim 21, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The Examiner suggests amending "the total amount of agents” in claim 38 to “the total amount of the one or more agents” 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 21-35 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Pinto et al (WO 2020/146931 A1, published 07/23/2020, filed 01/17/2019, cited in IDS dated 11/22/2023).
Pinto et al teach a shampoo composition (A) comprising (a) from about 5 to about 15 wt.%, relative to the total weight of the shampoo composition, of at least one ethoxylated sulfate anionic surfactant having at least one degree of ethoxylation and/or its salt thereof; (b) from about 1 to about 10 wt.%, relative to the total weight of the shampoo composition, of at least one non-ethoxylated sulfate anionic surfactant and/or its salt thereof; (c) from about 1 to about 5 wt.%, relative to the total weight of the shampoo composition, of at least one amphoteric surfactant; (d) from about 0.1 to about 3 wt.%, relative to the total weight of the shampoo composition, of at least one water-soluble quaternary ammonium compound; (e) an oil-in-water emulsion having a particle size D50 of less than 350 nm, and comprising: a silicone mixture comprising (i) one or more polydialkylsiloxanes comprising trialkylsilyl end groups, having a viscosity, at 25°C, ranging from 40,000 to 100,000 mPa.s, preferably ranging from 40,000 to 70,000 mPa.s, in an amount of from 70% to 90% by weight relative to the total weight of the silicone mixture, and (ii) one or more aminosilicones having a viscosity, at 25°C, ranging from 1,000 to 15,000 mPa.s and an amine number ranging from 2 to 10 mg of KOH per gram of aminosilicone, in an amount of from 10% to 30% by weight relative to the total weight of the silicone mixture, a surfactant mixture comprising one or more non-ionic surfactants, said mixture having an HLB ranging from 10 to 16, and water (See entire document, e.g., Page 2 Lines 12-31, Page 5 Lines 18-25, Page 26 Lines 23-33, Page 27 Lines 12-15, claim 1).
The ethoxylated sulfate anionic surfactant of the shampoo composition (A) is preferably selected from sodium laureth sulfate (i.e., sodium lauryl ether sulfate), ammonium laureth sulfate, or a mixture thereof (e.g., Page 3 Lines 10-12, claim 4). The amphoteric surfactants of the shampoo composition (A) are preferably selected from cocamidopropyl betaine, coco-betaine (i.e., cocoyl betaine), or mixtures thereof (e.g., Page 3 Lines 32-33, claim 10). Suitable polydialkylsiloxanes include dimethicone and suitable aminosilicones include amodimethicone (e.g., Page 28 Lines 2-23, Page 38 Lines 8-9).
The surfactant mixture, which comprises one or more non-ionic surfactants, may optionally comprise one or more cationic surfactants (e.g., Page 30 Lines 4-6). The non-ionic surfactants may be chosen from steareth-6, PEG100 stearate, trideceth-3 and trideceth-10, and mixtures thereof (e.g., Page 33 Lines 25-26). Suitable cationic surfactants are exemplified in a list including stearamidopropyl dimethylamine and Pinto et al teach that in some cases the composition includes at least one cationic surfactant being stearamidopropyl dimethylamine (e.g., Page 21 Line 7, Page 23 Lines 3-4).
The oil-in-water emulsion has a particle size D50 of between 100 and 300 nm (e.g., Page 6 Lines 31-33). The oil-in-water emulsion is present in the shampoo composition (A) in a total amount ranging from about 0.1% to about 10% by weight, based on to the total weight of the composition (e.g., Page 6 Line 34-Page 7 Line 4). The oil-in-water emulsion preferably comprises the cationic surfactant(s) in a total amount ranging from 0.5% to 1.5% by weight relative to the total weight of the emulsion (e.g., Page 34 Lines 6-8).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Pinto et al but such “picking and choosing” within several variables does not necessarily give rise to anticipation (Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989)). That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious” (KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742).
Consistent with this reasoning, 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 have selected various combinations of various disclosed ingredients of a shampoo composition (A) from within the prior art disclosure of Pinto et al and arrive at a shampoo composition comprising (a) from about 5 to about 15 wt.%, relative to the total weight of the shampoo composition, of at least one ethoxylated sulfate anionic surfactant having at least one degree of ethoxylation and/or its salt thereof selected from sodium laureth sulfate, ammonium laureth sulfate, or a mixture thereof; (b) from about 1 to about 10 wt.%, relative to the total weight of the shampoo composition, of at least one non-ethoxylated sulfate anionic surfactant and/or its salt thereof; (c) from about 1 to about 5 wt.%, relative to the total weight of the shampoo composition, of at least one amphoteric surfactant selected from cocamidopropyl betaine, coco-betaine, or mixtures thereof; (d) from about 0.1 to about 3 wt.%, relative to the total weight of the shampoo composition, of at least one water-soluble quaternary ammonium compound; (e) from about 0.1% to about 10% by weight, relative to the total weight of the shampoo composition, of an oil-in-water emulsion having a particle size D50 of less than 350 nm, or between 100 and 300 nm, and comprising: (I) a silicone mixture comprising (i) dimethicone as the one or more polydialkylsiloxanes comprising trialkylsilyl end groups, having a viscosity, at 25°C, ranging from 40,000 to 100,000 mPa.s, preferably ranging from 40,000 to 70,000 mPa.s, in an amount of from 70% to 90% by weight relative to the total weight of the silicone mixture, and (ii) amodimethicone as the one or more aminosilicones having a viscosity, at 25°C, ranging from 1,000 to 15,000 mPa.s and an amine number ranging from 2 to 10 mg of KOH per gram of aminosilicone, in an amount of from 10% to 30% by weight relative to the total weight of the silicone mixture, (II) a surfactant mixture having an HLB ranging from 10 to 16 and comprising one or more non-ionic surfactants selected from steareth-6, PEG100 stearate, trideceth-3 and trideceth-10, and mixtures thereof and one or more cationic surfactants including stearamidopropyl dimethylamine in a total amount ranging from 0.5% to 1.5% by weight relative to the total weight of the emulsion, and (III) water.
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)).
Thus, the shampoo composition of Pinto et al renders obvious the composition of claims 21-35 and 38.
Claims 21-35 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Rughani et al (US 2018/0280270 A1, published 10/04/2018).
Rughani et al teach a hair-treatment composition, that may be in the form of a shampoo, comprising at least 0.5 wt. % of at least one amino acid or amino sulfonic acid, and/or a salt thereof, one or more surfactants, preferably at least one non-taurate surfactant, and water (See entire document, e.g., [0014], [0017]-[0021]). The one or more surfactants may include cationic, anionic, amphoteric/zwitterionic, and nonionic surfactants, and a mixture thereof, and the total amount of the one or more surfactants is typically about 0.1 to about 40 wt. %, based on the total weight of the hair-treatment composition (e.g., [0041]-[0042]). The hair-treatment composition may include one or more anionic surfactants from about 1 to about 40 wt. %, one or more amphoteric surfactants from about 0.1 to about 20 wt. %, one or more cationic surfactants from about 0.1 to about 20 wt. %, one or more silicones from about 0.1 to about 40 wt. %, one or more cationic polymers from about 0.01 to about 15 wt. %, wherein wt. % is based on the total weight of the hair-treatment composition (e.g., [0043]-[0048], [0058]-[0059], [0064], [0072]). Preferred non-taurate anionic surfactants include sodium laureth sulfate (i.e., sodium lauryl ether sulfate) (e.g., [0096]). Preferred amphoteric surfactants include coco betaine (i.e., cocoyl betaine) (e.g., [0118]). Preferred cationic surfactants include stearamidopropyl dimethylamine (e.g., [0160]). Suitable nonionic surfactants are exemplified in lists including the product containing glyceryl stearate and PEG-100 stearate, marketed under the name ARLACEL 165 by Croda (e.g., [0386]). Suitable silicones are exemplified in a list including dimethicone (e.g., [0058]). Suitable cationic polymers are exemplified in a list including amodimethicone (e.g., [0066]). Rughani et al teach that it is particularly advantageous when using amino silicones to use them in the form of an oil-in-water emulsion with silicone particle size ranging from 3 nm to 500 nm (e.g., [0442]).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Rughani et al but such “picking and choosing” within several variables does not necessarily give rise to anticipation (Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989)). That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious” (KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742).
Consistent with this reasoning, 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 have selected various combinations of various disclosed ingredients of a hair-treatment composition from within the prior art disclosure of Rughani et al and arrive at a hair-treatment composition in the form of a shampoo comprising at least 0.5 wt. % of at least one amino acid or amino sulfonic acid, and/or a salt thereof, sodium laureth sulfate as the one or more anionic surfactants from about 1 to about 40 wt. %, coco betaine as the one or more amphoteric surfactants from about 0.1 to about 20 wt. %, stearamidopropyl dimethylamine as the one or more cationic surfactants from about 0.1 to about 20 wt. %, the product containing glyceryl stearate and PEG-100 stearate, marketed under the name ARLACEL 165 by Croda, as the one or more nonionic surfactants, dimethicone as the one or more silicones from about 0.1 to about 40 wt. %, amodimethicone as the one or more cationic polymers from about 0.01 to about 15 wt. %, and water, wherein the total amount of surfactants is about 0.1 to about 40 wt. %, wherein wt. % is based on the total weight of the hair-treatment composition, and wherein the composition is in the form of an oil-in-water emulsion with silicone particle size ranging from 3 nm to 500 nm.
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)).
Thus, the hair-treatment composition of Rughani et al renders obvious the composition of claims 21-35 and 38.
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.
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Claims 21-35 and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, 8, 12-13, and 16-17 of U.S. Patent No. 12,589,065 B2 (hereafter ‘065) in view of Pinto et al (WO 2020/146931 A1, published 07/23/2020, filed 01/17/2019, cited in IDS dated 11/22/2023).
Instant claims 21-35 and 38 recite a cosmetic composition comprising: a) at least one anionic surfactant; b) at least one amphoteric or zwitterionic surfactant; c) at least one oil-in-water emulsion having a particle size D50 of less than 350 nm on a volume basis, the at least one oil-in-water emulsion comprising: - a silicone mixture comprising (i) one or more polydialkylsiloxanes comprising trialkylsilyl end groups and having a viscosity at 25°C ranging from 40,000 to 100,000 mPa.s, and (ii) one or more amino silicones having a viscosity at 25°C ranging from 1,000 to 15,000 mPa.s and an amine number ranging from 2 to 10 mg of KOH per gram of amino silicone; - a surfactant mixture comprising one or more nonionic surfactants, wherein the surfactant mixture has an HLB ranging from 10 to 16; and - water; and d) at least 0.01% by weight, relative to the total weight of the composition, of one or more agents chosen from fatty amines, fatty acids, fatty alcohols, or mixtures thereof, wherein the anionic surfactant(s) are chosen from sulfate-type surfactants, wherein the anionic surfactant(s) are chosen from alkyl sulfates, alkyl ether sulfates, alkylamido sulfates, alkylamido ether sulfates, alkylaryl polyether sulfates, monoglyceride sulfates, salts thereof, or mixtures thereof, wherein the anionic surfactant(s) are chosen from alkyl sulfates, alkyl ether sulfates, or mixtures thereof, wherein the total amount of anionic surfactant(s) ranges from 1% to 50% by weight, relative to the total weight of the composition, wherein the at least one amphoteric or zwitterionic surfactant is chosen from (C8-C20)alkylbetaines, (C8-C20)alkylamido(C3- C8)alkylbetaines, or mixtures thereof, wherein the total amount of the amphoteric or zwitterionic surfactant(s) ranges from 0.1% to 30% by weight, relative to the total weight of the composition, wherein the polydialkylsiloxane(s) having trialkylsilyl end groups are compounds of formula (I): R'3SiO(R'2SiO)pSiR'3 (I), wherein: - R' is independently chosen from a monovalent hydrocarbon-based radical comprising from 1 to 18 carbon atoms; and - p is an integer ranging from 500 to 2000, wherein the polydialkylsiloxanes having trialkylsilyl end groups have a viscosity ranging from 40,000 to 70,000 mPa.s at 25°C, wherein the amino silicone(s) are compounds of formula (II): XR2Si(OSiAR)n(OSiR2)mOSiR2X (II), wherein: - R is independently chosen from a monovalent hydrocarbon-based radical having from 1 to 18 carbon atoms; - X is independently chosen from R or a hydroxyl (OH) or a C1-C6 alkoxy group; - A is an amino radical of formula -R1-[NR2-R3-]xNR22, or the protonated form of formula -R1-[NR2-R3-]xNR22, wherein: R1 represents a C1-C6 alkylene radical, R2 is independently chosen from a hydrogen atom or a C1-C4 alkyl radical, R3 is a C1-C6 alkylene radical, and x is an integer equal to 0 or 1; - m and n are integers ranging from 50 to 1000, wherein the silicone mixture comprises (i) polydialkylsiloxanes in a total amount of from 70% to 90%, and (ii) amino silicones in a total amount of from 10% to 30%, wherein all amounts are measured by weight, relative to the total weight of the silicone mixture, wherein the nonionic surfactants are chosen from: (i) (poly)oxyalkylenated fatty alcohols of formula: R3-(OCH2CH2)cOH wherein:- R3 represents a linear or branched alkyl or alkenyl radical comprising from 8 to 40 carbon atoms; and - c is an integer ranging from 1 to 200, (ii) (poly)oxyalkylenated (C8-C32)alkyl phenyl ethers; (iii) polyoxyalkylenated esters of C8-C32 fatty acids and of sorbitan; and (iv) polyoxyethylenated esters of C8-C32 fatty acids, wherein the oil-in-water emulsion has a particle size D50 of between 100 and 300 nm, wherein the total amount of oil-in-water emulsion ranges from 0.1% to 10% by weight, relative to the total weight of the composition, wherein the fatty amines are chosen from fatty amidoamines, and wherein the total amount of agents ranges from 0.01% to 5% by weight, relative to the total weight of the composition.
Claims 1, 3, 6, 8, 12-13, and 16-17 of ‘065 recite a hair care system comprising: (A) a shampoo composition, comprising: (a) from 5 to 15 wt. % of at least one ethoxylated sulfate anionic surfactant having at least one degree of ethoxylation and/or its salt thereof; (b) from 1 to 10 wt. % of at least one non-ethoxylated sulfate anionic surfactant and/or its salt thereof; (c) from 1 to 5 wt. % of at least one amphoteric surfactant; (d) from 0.1 to 3 wt. % of at least one water-soluble quaternary ammonium compound; (e) an oil-in-water emulsion having a particle size D50 of less than 350 nm, and comprising: a silicone mixture comprising: (i) a polydialkylsiloxane comprising trialkylsilyl end groups, having a viscosity at 25° C ranging from 40,000 to 70,000 mPas; and (ii) an aminosilicone having a viscosity at 25° C ranging from 1,000 to 15,000 mPa.s and an amine number ranging from 2 to 10 mg of KOH per gram of aminosilicone; and wherein the weight ratio of the polydialkylsiloxane to the aminosilicone ranges from about 5:1 to about 1:1; a surfactant mixture comprising one or more non-ionic surfactants, said mixture having an HLB ranging from 10 to 16, and water; wherein the oil-in-water emulsion is present in the shampoo composition (A) in a total amount ranging from about 0.1% to about 10% by weight; all weights being based on the total weight of the shampoo composition, and (B) a conditioner composition, comprising: (a) from 0.5 to 2 wt. % of each of at least two different cationic surfactants, in a total amount of from 1 to 4 wt. % of cationic surfactant; (b) from 3 to 5 wt. % of at least one fatty alcohol; (c) from 2.2 to 3.1 wt. % of at least two silicones, wherein the first silicone is a polydialkylsiloxane, which is present at a range of 2.0 to 2.5 wt. % based on the total weight of the conditioner composition, and wherein the second silicone is an aminosilicone, which is present at a range of 0.2 to 0.6 wt. % based on the total weight of the conditioner composition; (d) water; all weights being based on the total weight of the conditioner composition, wherein the at least one ethoxylated sulfate anionic surfactant (a) having at least one degree of ethoxylation is selected from alkyl ether sulfates, their salts thereof, and mixtures thereof, wherein the at least one amphoteric surfactant (c) of the shampoo composition (A) is selected from betaines, alkyl amphoacetates, alkyl amphoproprionates, salts thereof, or a mixture thereof, wherein the at least one amphoteric surfactant (c) are selected from cocamidopropyl betaine, coco-betaine, or mixtures thereof, wherein the polydialkylsiloxane is selected from dimethicones, wherein the aminosilicone is selected from amodimethicones, wherein the polydialkylsiloxane comprising trialkylsilyl end groups, having a viscosity at 25° C. ranging from 51,000 to 70,000 mPa.s, and wherein the oil-in-water emulsion is present in the shampoo composition (A) in a total amount ranging from about 0.2% to about 8% by weight; the silicone mixture is present in a total amount ranging from 40% to 60% by weight relative to the total weight of the emulsion; the polydialkylsiloxane comprising trialkylsilyl end groups is present in a total amount ranging from 35% to 45% by weight relative to the total weight of the emulsion; the aminosilicone(s) is present in a total amount ranging from 5% to 15% by weight relative to the total weight of the emulsion; the surfactant mixture is present in a total amount ranging from 5% to 15% by weight relative to the total weight of the emulsion; and the water is present in a total amount ranging from 25% to 50% by weight of the emulsion.
Claims 1, 3, 6, 8, 12-13, and 16-17 of ‘065 do not recite the at least one ethoxylated sulfate anionic surfactant being sodium lauryl ether sulfate, the one or more non-ionic surfactants being PEG-100 stearate, or the shampoo composition comprising stearamidopropyl dimethylamine from at least 0.01% by weight, or from 0.01% to 5% by weight, relative to the total weight of the composition.
These deficiencies are made up for in the teaching of Pinto et al, which has been discussed in detail supra.
It would have been prima facie obvious to one of ordinary skill in the art, based on the teaching of Pinto et al, to use sodium laureth sulfate, ammonium laureth sulfate, or a mixture thereof as the at least one ethoxylated sulfate anionic surfactant, use steareth-6, PEG100 stearate, trideceth-3 and trideceth-10, and mixtures thereof as the one or more non-ionic surfactants, and to include in the shampoo composition one or more cationic surfactants including stearamidopropyl dimethylamine in a total amount ranging from 0.5% to 1.5% by weight relative to the total weight of the oil-in-water emulsion. One of ordinary skill in the art would have been motivated to use sodium laureth sulfate, ammonium laureth sulfate, or a mixture thereof as the at least one ethoxylated sulfate anionic surfactant because Pinto et al exemplify these ethoxylated sulfate anionic surfactants as preferable in an analogous shampoo composition (A). One of ordinary skill in the art would have been motivated to use steareth-6, PEG100 stearate, trideceth-3 and trideceth-10, and mixtures thereof as the one or more non-ionic surfactants because Pinto et al exemplify these as suitable choices for the one or more non-ionic surfactants in an analogous shampoo composition (A). One of ordinary skill in the art would have been motivated to include in the shampoo composition one or more cationic surfactants including stearamidopropyl dimethylamine in a total amount ranging from 0.5% to 1.5% by weight relative to the total weight of the oil-in-water emulsion because Pinto et al teach the inclusion of one or more cationic surfactants wherein not only is stearamidopropyl dimethylamine exemplified in a list of suitable cationic surfactants, but Pinto et al specifically teach the inclusion of at least one cationic surfactant being stearamidopropyl dimethylamine in an analogous shampoo composition (A) .
Thus, claims 1, 3, 6, 8, 12-13, and 16-17 of ‘065 in view of Pinto et al render obvious instant claims 21-35 and 38 to the extent of the elected species, i.e., the at least one anionic surfactant is sodium lauryl ether sulfate, the at least one amphoteric or zwitterionic surfactant is cocoyl betaine, the one or more polydialkylsiloxanes comprising trialkylsilyl end groups and having a viscosity at 25 °C ranging from 40,000 to 100,000 mPa.s is dimethicone, the one or more amino silicones having a viscosity at 25 °C ranging from 1,000 to 15,000 mPa.s and an amine number ranging from 2 to 10 mg of KOH per gram of amino silicone is amodimethicone, the one or more nonionic surfactants is PEG-100 stearate, and the one or more agents chosen from fatty amines, fatty acids, fatty alcohols, or mixtures thereof is stearamidopropyl dimethylamine.
Claims 21-35 and 38 are directed to an invention not patentably distinct from claims 1, 3, 6, 8, 12-13, and 16-17 of commonly assigned U.S. Patent No. 12,589,065 B2. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned U.S. Patent No. 12,589,065 B2, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claims are allowable.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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