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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 01/30/2026 is acknowledged. Claims 2-4 and 7 have been canceled and claims 5, 6, and 10 have been added. Claims 1, 8, and 9 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 01/30/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following. The rejection is modified based on the amendments.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 8, and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Dowell et al. (US 5,587,154) in view of Boles (US 4,762,546).
Dowell et al. teach an aqueous shampoo being an unexpectedly stable suspension of a water-insoluble hair treating compound (abstract) that is stable and resists phase separation or settling of composition ingredients at a temperature of about 20-25 °C essentially indefinitely (column 16, line 42-55) comprising:
about 3-40% by weight of an anionic cleansing surfactant;
about 0.1% to about 10% by weight of a water-insoluble antidandruff agent including elemental sulfur;
a suspending agent; and
an aqueous carrier (claims 1 and 2); and
exemplified in example 67 in table III a composition comprising
12% by weight of surfactant (the instant claims 1 and 8) and elemental sulfur in Carbopol (an acrylic acid homopolymer or copolymer, the claimed stabilizer) dispersion;
wherein elemental sulfur in Carbopol dispersion is presented in the composition as 6.37% sulfur-Carbopol slurry (2.03% elemental sulfur) (column 21, line 29-30), i.e., 4.34% by weight of Carbopol;
wherein the composition is prepared by the method comprising
adding the anionic cleansing surfactant aqueous solution into a vessel under moderate agitation and adding an amine compound followed by the acid (suspending agent), and stirred (agitation) for about 30-90 minutes to homogenize the mixture;
adding the remaining amount of water;
adding the remaining ingredients to the resulting mixture individually, in any desired order (including the water-insoluble hair treating compound including sulfur);
increasing agitation speed after addition of the water-insoluble hair treating compound to effectively disperse the water-insoluble hair treating compound throughout the composition (column 17, line 33-48).
Although Dowell et al. are silent about a yield stress of at least 0.06 Pa, the mixture of 12% by weight of surfactant, 4.34% by weight of Carbopol, and water is the same as the mixture in the claimed step a in the instant claim 1 and thus the mixture of 12% by weight of surfactant, 4.34% by weight of Carbopol (about 0.05-10% by weight as being suitable for the claimed yield stress according to the instant specification page 12, line 16-20), and water would have the same yield stress. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant’s own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. Please refer to MPEP 2112.V:
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, second column, first full paragraph).
Dowell et al. do not specify the same amount of surfactant in the instant claim 9 (12% or about 3-40% vs the claimed about 3-9%).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
The claimed range of surfactant is about 3-9% by weight and the range of surfactant taught in the prior art is 12% or about 3-40% by weight and therefor, overlaps with and very close to the claimed range that one skilled in the art would have expected them to have the same properties. Furthermore, about 3-20% is claimed in the instant claim 8, thus, the criticality of the claimed about 3-9% in the instant claim 9 over 12% taught by Dowell et al. in example 67 is not established.
Dowell et al. do not specify the exact same step of adding Carbopol and sulfur in example 67 (combining Carbopol and sulfur before adding the Carbopol and sulfur to the mixture of surfactant and water vs the claimed combining Carbopol, surfactant, and water before adding sulfur) in the instant claim 1. Dowell et al. also teach the remaining ingredients (including sulfur and Carbopol) to the resulting mixture individually, in any desired order.
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when order of mixing ingredients is the only difference between the claimed invention and that disclosed in the prior art.
Differences in order of mixing ingredients together will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such sequence of mixing is critical. See MPEP 2144.04 IV C: selection of any order of mixing ingredients is prima facie obvious.
Dowell et al. do not specify the same claimed parameters of agitation in the instant claim 1.
This deficiency is cured by Boles who teaches a process of producing homogenized fine particle suspension (abstract and column 9, line 32-41) using recirculation pump with a recirculation pump passes (turnovers) after addition of all feed being 5-30 (calculated to be 60-360 turnover/hour: (60 minutes/hour / 5 minutes) x 5 turnover = 60 and (60 minutes/hour / 5 minutes) x 30 turnover = 360) and agitation tip speed of 10-200 ft/s (3-60 m/s with 3 m/s encompasses the claimed about 2.7 m/s) (the table in column 13).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Dowell et al. and Boles to specify agitation parameters in the agitation taught by Dowell et al. being 60-360 turnover/hour and 3-60 m/s agitation tip speed (with 3 m/s encompasses the claimed about 2.7 m/s). An agitation for forming fine particle suspension with 60-360 turnover/hour and 3-60 m/s agitation tip speed was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Applicants argue that Dowell et al. in view of Boles fail to teach sulfur being added to the composition of step b) while maintaining the condition of step b) in order to make shelf stable compositions with discrete mix rate (tip speed) and a discrete recirculation rate (turnover) after balancing homogenization and stabilization
However, this argument is not deemed persuasive. The examiner established prima facie obviousness based on
Dowell et al.’s teaching of 12% or about 3-40% surfactant and the rationale of a prima facie case of obviousness exists where the claimed ranges (about 3-9%) and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties;
Dowell et al.’s teachings of combining Carbopol and sulfur before adding the Carbopol and sulfur to the mixture of surfactant and water in example 67 and rationale that a prima facie case of obviousness typically exists when order of mixing ingredients is the only difference between the claimed invention (the claimed combining Carbopol, surfactant, and water before adding sulfur) and that disclosed in the prior art; and
Dowell et al.’s teaching of stirred (agitation) throughout the mixing process till the water-insoluble hair treating compound to effectively disperse the water-insoluble hair treating compound throughout the composition and Boles’s teachings of agitation parameters 6of 0-360 turnover/hour and 3-60 m/s agitation tip speed and the rationale that the claimed agitation parameters having been used in the prior art and being recognized in the prior art as useful for the same purpose.
Applicant argues that the claimed order of mixing and the agitation parameters are the reasons for shelf-stable compositions. However, nothing has been shown to substantiate this while Dowell et al. teach the aqueous shampoo of suspension of a water-insoluble hair treating compound being unexpectedly stable. From MPEP 716.01(c) II: The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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