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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 12/02/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.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.
Claims 1-19 are pending and under examination.
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 of this title, 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 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 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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Carter et al. (US20140309154)
Determination of the scope and content of the prior art
(MPEP 2141.01)
Carter et al. teaches personal care composition (abstract). In working example, a shampoo composition comprises sodium laureth sulfate, Guar hydroxypropyltrimonium chloride, polyquaternium-10 at 0.1%, fragrance at 0.7% (page 18, Table 6). In one example, the water contact angle on hair is 67-80 (page 21, [0203]). The composition comprises antimicrobial active such as octopirox (piroctone olamine) and azoles (page 14, [0171]). In one embodiment, the azoles antimicrobial is present from 0.1% to about 3% (page 14, [0172]). In another embodiment, the composition comprises hair conditioning oil such as silicon oil (page 9, [0085-0091]). The composition comprises cationic polymer derived from cellulose, from 0.1% to about 3% (page 13, [0151, 0158]
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Carter et al. is that Carter et al. is not specific enough for anticipation.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
Regarding claims 1, 6-9, 11-14 and 19, Carter et al. teaches a hair care composition comprising sodium laureth sulfate (anionic surfactant), Guar hydroxypropyltrimonium chloride (cationic polymer), polyquaternium-10 (hydrophilic polymer) at 0.1%, fragrance (perfume) at 0.7% with water contact angle on hair from 67-80.
Regarding claims 2-5, those properties are regarded as inherent to the prior art composition. Since prior art teaches the same or substantially same composition, this same or substantially same composition is expected to have the same properties.
Regarding claim 10, since polyquaternium-10 is Quaternized hydroxyethyl cellulose (cationic cellulose), and Carter et al. teaches cationic cellulose from 0.1% to 3%, it is obvious to optimize and have polyquaternium-10 from 0.1% to 3%.
Regarding claim 15, Carter et al. teaches antimicrobial active azoles from 0.1% to about 3%.
Regarding claim 16, Carter et al. teaches antimicrobial active octopirox (piroctone olamine), since both piroctone olamine and azoles are recited as antimicrobial active, it is proper to rely on the amount of azoles to optimize the amount of piroctone olamine and have 0.1% to amount 3% and produce instant claimed invention with reasonable expectation of success.
Regarding claims 17-18, Carter et al. teaches silicon conditioning agent.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argue that there is no hydrophilic polymer in the example with contact angle in Carter et al.
In response to this argument: this is not persuasive. As discussed in the above 103 rejection, Carter et al. teaches hydrophilic polymer in one embodiment and water contact angle in one embodiment, and it is obvious to have hair acre composition comprising hydrophilic polymer with the contact angle. Furthermore, the water contact angle is also considered as inherency of prior art composition. Since prior art teaches the same or substantially same composition as applicant’s claimed composition, the same or substantially same prior art composition must have the same water contact property. MPEP 2112.01.II, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Therefore, the 103 rejection is still proper.
Applicants argue that there is no working example comprising polyquaternium-10 (hydrophilic polymer).
In response to this argument: this is not persuasive. It is well settled, however, that the teachings of a reference are not limited to the working examples. See in re Miiis and Pairner, 470 F.2d 649 (CCPA 1972) ("[A] reference is not limited to the disclosure of specific working examples."), In re Chapman and Cosby, 357 F.2d 418, (CCPA 1966) ("A reference can be used for all it realistically teaches, and is not limited to the disclosures in its specific illustrative examples."), and In re Widmer, Batzer and Nikles, 353 F2d 752 (CCPA 1965) ("Examples in a reference are merely that, exemplary of the broader disclosure, all of which is available for what it clearly teaches.").
Applicants argued that there is no teaching there is no disclosure of polyquaternium-10 would provide mechanism of action of reducing oil. All related arguments are incorporated herein by reference.
In response to this argument: this is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., polyquaternium-10 would provide mechanism of action of reducing oil) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thereofre, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 9655821 in view of Carter et al. (US20140309154). The reference patent teaches hair care composition (claim 26) comprising surfactant (claim 11), silicone conditioning agent (claim 13-14), perfume and antidandruff agent (claim 16) and cationic polymer (claim 12), in view of Carter et al. teaching cationic polymer polyquaternium-10 and the water contact angle, it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10806688 in view of Carter et al. (US20140309154). The reference patent teaches hair care composition comprising surfactant, silicone conditioning agent (claim 15-16), perfume and antidandruff agent (claim 18), in view of Carter et al. teaching cationic polymer polyquaternium-10 and the water contact angle, it is obvious to produce applicant’s claimed invention with reasonable expectation of success.
Response to Argument:
Applicants argue that TD would be considered after allowable subject matter is identified.
In response to this argument: this is not persuasive. Since no TD is filed, the double patenting rejections are maintained for record.
Conclusion
No claim is 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613