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
Amendment filed on 03/23/2026 is acknowledged.
Claims 1-5, 7-13, and 15-18 are amended. Claims 6 and 14 are cancelled.
Claims 1-5, 7-13 and 15-18 are pending and being examined on the merits herein.
Priority
This instant application 18541480, filed on 23/25/2023, claims domestic benefit of 63/433128, filed on 12/16/2022.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 12/23/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 03/23/2026.
Claim Interpretation
The terms “transparent” and “non-sticky” in claim 1 are interpreted as properties of the composition because they do not structurally contribute to the composition.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Rughani et al. (US20180280270, 10/04/2018, IDS of 02/25/2024), in view of Barg et al. (WO2007147445, 12/27/2007, translation relied upon below, in record of 12/23/2025) and Kroon et al. (WO2016178660, 10/11/2016, in record of 12/23/2025).
Rughani teaches a hair treatment composition comprising non-polymeric mono, di, or tricarboxylic acid, and/or salt thereof, surfactants and water (e.g., Abstract).
Regarding instant claim 1, Rughani exemplifies a sulfate-free shampoo composition comprising a) active ingredient piroctone olamine (as a substituted 2-pyridinol-N-oxide material), b) propylene glycol (as a glycol), c) decyl glucoside and/or trideceth-6 and/or PPG-5-deteth-20 (as nonionic surfactant), d) citric acid (as polyprotic acid), e) water, and pH modifier (Example 2, [0509]). The composition is free of ethyl alcohol or ethanol with chemical formula of CH3CH2OH.
Rughani teaches other suitable non-ionic surfactants in the composition ([0369-0396]), including sorbitol esters of C8-C24 fatty acids and alkoxylated derivatives thereof that can be selected from sorbitan palmitate, sorbitan trioleate and esters of fatty acids and alkoxylated sorbitan containing for example from 20 to 100 EO, such as for example polyethylene sorbitan trioleate (polysorbate 85) or the compounds marketed under the trade names Tween 20 or Tween 60 by Croda [0387]. Tween 80 is sorbitan oleate and fatty acid esters within the 20 to 100 EO.
Rughani indicates the composition is stable and does not exhibit phase separation and/or crystallization for a period of time [0545], and Rughani teaches the composition can be in variety of forms including liquid, and/or spray [0275], indicating these non-sticky forms are suitable.
Regarding instant claim 2, Rughani teaches that the nonionic surfactant may be a nonionic surfactant with an HLB of 18.0 or less, such as from 4.0 to 18.0, more preferably from 6.0 to 15.0 and furthermore preferably from 9.0 to 13.0 (e.g., [0395]), overlapping with non-ionic surfactant HLB value of 10-15 in instant claim 2.
Regarding instant claim 3, Rughani teaches many water-soluble solvents (e.g., [0076]-[0078]) and exemplifies water-soluble solvents in composition examples at different amounts, e.g., glycerin, propylene glycol, and/or isopropyl alcohol at 0.5% or 2.5% (Example 4, Conditioners, [0511]), glycerin and/or propylene glycol at 3.5% (Example 4-1 & 4-2, Conditioners, [0512]). Rughani indicates that the water-soluble solvent amounts many vary, but in some cases are about 0.01 to about 50 wt. %, based on the total weight of the composition. The total amount of the water-soluble solvents (separate from the water in the compositions), is about 0.01 to about 40 wt. %, about 0.01 to about 30 wt. %, about 0.01 to about 20 wt. %, about 0.01 to about 10 wt. %, about 0.01 to about 5 wt. %, 0.1 to about 40 wt.%, about 0.1 to about 30 wt.%, about 0.1 to about 20 wt.%, about 0.1 to about 10 wt.%, or about 0.1 to about 5 wt. % (e.g., [0079]), overlapping with the range of from about 1% to about 10% in instant claim.
Regarding instant claim 4, Rughani exemplifies in the sulfate-free shampoo composition as discussed above, the water-soluble carrier is propylene glycol (Example 2, [0509]).
Regarding instant claim 5, Rughani teaches many nonionic surfactants and their features ([0371]-[0396]), including ethoxylated fatty acid esters of sorbitan comprising from 2 to 30 mol of ethylene oxide, fatty acid esters of polyethylene glycol, polyethoxylated fatty acid mono or diesters of glycerol (C6-C24)aklylpolyglycodies, amine oxides such as N-(C10-C14)acrylaminopropyl-morpholine oxides [0371] (representing a long chain tertiary amine oxide in instant claim), esters of polyols with fatty acids such as polyethylene glycol esters of a C8-C24, preferably C12-C22, fatty acid or acids and alkoxylated derivatives thereof [0382], ethoxylated fatty esters [0383], glyceryl esters of C8-C24 alkoxylated fatty acids, polyethoxylated glyceryl stearate such as PEG-20 glyceryl stearate [0385] (as a species of polyethylene glycol glyceryl fatty esters in instant claim).
Regarding instant claims 7-9, Rughani teaches mono-carboxylic acids including AHA lactic acid, stearic acid, etc. [0036], di-carboxylic acids including oxalic acid, malic acid, tartaric acid [0037], and tricarboxylic acids citric acid [0038], maleic acid [0039], as known in the field, both di-carboxylic acids and tricarboxylic acids are polyprotic acids. Rughani exemplifies polyprotic acid as citric acid and monocarboxylic acid as lactic acid; and the amount of the monocarboxylic acid lactic acid (as AHA type) present at 0.1% in the composition (Example 4; [0511]), falling within the range from about 0.02% to about 0.2% of monocarboxylic acid in instant claim 7.
Regarding instant claims 10-12, Rughani exemplifies water-soluble cationic polymer guar hydroxypropyl-trimonium chloride and/or polyquaternium-10 present at 0.2% or 0.5% in Example 1 [0508], polyquaternium-10 in Example 2 [0509], polyquaternium-4 at 0.3% in Example 6 [0522], polyquaternium-10 present at 0.1% or 0.2% in Example 8 [0524], polyquaternium-37 0.2% in Example 4-2 [0513] and Example 7 [0523], etc., with disclosed amount range resulting in 0.1% to 0.5%, overlapping with the range from about 0.01% to about 0.5% in instant claim 10. Rughani teaches that these cationic polymers, e.g., polyquaternium-10, -4, and -37, are quaternized cellulose derivatives, along with cationic guar derivatives can be used in the composition (e.g., [0260]).
MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot 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, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."). Since the same compound, e.g., polyquaternium-10, is taught in Rughani, being water-soluble polymer having a natural origin backbone as instantly claimed is inherent property of the compound as taught in Rughani.
Regarding instant claim 13, Rughani teaches the compositions are used to treat keratinous substrates (e.g., [0543]) including but not limited to keratin fibers such as hair and/or scalp on the human head (e.g.,[0541]), and shows in examples a further scalp health active, e.g., taurine, in addition to citric acid, piroctone olamine (Example 2, Sulfate-free shampoo, [0509]).
Regarding instant claim 15, Rughani teaches the compositions, such as shampoos that can be free or essentially free of anionic surfactants (e.g., [0275]), and exemplifies anionic surfactant-free conditioning shampoos (e.g., Example 3, [0510]; [0151]).
Regarding instant claim 16, Rughani exemplifies formulations consisting 9 or fewer ingredients, including but not limited to, e.g., #1-#6 formulations in Example 1 [0508], #8-#9 in Example 3 [0510], #10-16 in Example 4 [0511], etc., not counting the optional ingredients.
Rughani does not teach polyoxyethylene(20) sorbitan monolaurate as the species of non-ionic surfactant in the composition and the composition has a pH from 3.5 to about 6.0 as indicated in instant claim 1.
Barg throughout the reference teaches method for producing keratin-binding effector molecules and products (e.g., Abstract). Suitable components for the composition include piroctone olamine (e.g., Pg. 52, page number at bottom of page), a glycol such as propylene glycol (e.g., Pg. 45), citric acid (e.g., Example 48, Pg. 110), water (e.g., Example 48, Care shampoo, Pg. 110,) Barg teaches polysorbates as surfactants can be used in the composition, such as polyoxyethylene (20) sorbitan monooleate (Tween 80) among various Tween species (Pg. 45 bottom -Pg. 46 top). MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). For this instance, being non-ionic surfactant is inherent property of polyoxyethylene (20) sorbitan monooleate (Tween 80), which is taught by Barg.
Kroon teaches personal care conditioning and/or styling composition for keratin substrates (e.g., Claim 1). Kroon teaches the composition includes personal care active ingredient selected from piroctone olamine (a substituted 2-pyridicol-N-oxide material), panthenol (a glycol), sterol esters, fatty acids (can be non-ionic surfactants), salicylic acid (a monocarboxylic acid), niacinamide (e.g., [0062]; Claim 6), Kroon teaches the composition pH is in the range of from about 3 to about 13 (e.g., Claim 10), preferably between about 4 to about 8 (e.g., [00113]), overlapping with the pH range from about 3.5 to about 6.0 in instant claim 1.
It would be prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate the components taught by Barg and Kroon into the composition of Rughani to arrive at current invention. Because Rughani indicates that polysorbates within EO 20-100 are suitable for the composition, while Barg teaches polyoxyethylene (20) sorbitan monooleate (Tween 80) is suitable among several other polysorbates for the composition, it would be convenient for an artisan to select Tween 80 in the composition and would have provided reasonable expectation of success selecting the proper compound based upon the combined teaching. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Similarly, because Rughani already teaches using a pH modifier in the formulations, suggesting that pH is adjustable, while Kroon teaches hair care composition comprising substantially the same ingredients as those in Rughani, it would have motivated artisans to optimize to desirable pH level as both prior art teaches using pH modifying agent in an effective amount to achieve the desired pH level and especially Kroon teaches the range. Moreover, because pH does not provide structural contributions to the composition, it is a property or intended feature of the composition, which prior art has already taught, the pH would be necessarily present or be capable of being achieved.
MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991). MPEP 2112.01.I states that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Since Rughani, Barg and Kroon combined teaches the hair care composition comprising all the components as in instant claims, further in light of claim interpretation, the composition being transparent and non-sticky are inherent properties of the composition, which would necessarily be present in the composition taught by Rughani, Barg and Kroon.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, component amounts, HLB values, and pH range overlap with those taught by Kroon. “It would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
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 1-5, 7-13 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-2, 10-11 and 13 of U.S. Patent No. 12083210 (10/10/2024, hereafter P’210), in view of Rughani et al. (US20180280270, 10/04/2018, IDS of 02/25/2024) and Barg et al. (WO2007147445, 12/27/2007, translation relied upon below, in record of 12/23/2025).
P’210 recites in claim 1 a translucent hair care composition comprising a substituted 2-pyridinol-N-oxide material (corresponding to instant claim 1 a), fatty alcohol (corresponding to nonionic surfactant in instant claim 1c), a monocarboxylic acid (corresponding to instant claim 1d), water (corresponding to instant claim 1e), a water-soluble polymer, wherein the water soluble polymer has a natural origin backbone selected from the group consisting of cellulose, starch, guar, and gellan (corresponding to instant claim 11) wherein the composition has a pH of about 3.5 to about 6.0 (overlapping with pH from about 3.5 to about 6.0 in instant claim 1). P’210 recites the composition comprising a nonionic surfactant in claim 13, corresponding to instant claim 1c).
P’210 claim 2 recites the monocarboxylic acid is selected from the group consisting of an AHA, BHA, PHA, and an aminoacid (corresponding to monocarboxylic acid species in instant claim 7). P’210 recites water-soluble polymer is polyquaternium-10 or cetyl hydroxyethylcellulose (Claim 10) (corresponding to instant claim 12). P’210 recites the composition comprising a fragrance (Claim 11). The composition is free of anionic surfactant, corresponding to instant claim 15.
P’210 does not recite the composition being non-sticky as recited in instant claim 1, the composition comprising a glycol or polyprotic acid as recited in instant claim 1 b), non-ionic surfactant has HLB value of 10-15 as recited in instant claim 2, glycol species and amount as recited in instant claims 3 and 4, non-ionic surfactant amount and species as recited in instant claims 1 and 5, monocarboxylic acid amount in instant claim 7, polyprotic acid species as recited in instant claims 8-9, water-soluble polymer amount as recited in instant claim 10, a scalp health active as recited in instant claim 13, consisting of 9 or fewer ingredients as recited in instant claim 16.
As discussed above and incorporated herein, in summary below, combined teachings of Rughani and Barg teaches propylene glycol (as a glycol), citric acid (as polyprotic acid), nonionic surfactant may be a nonionic surfactant with an HLB of 18.0 or less, such as from 4.0 to 18.0, more preferably from 6.0 to 15.0 and furthermore preferably from 9.0 to 13.0 (overlapping with non-ionic surfactant HLB value of 10-15 in instant claim 2), glycol species with various amounts in examples, e.g., glycerin, propylene glycol, and/or isopropyl alcohol at 0.5% or 2.5%, glycerin and/or propylene glycol at 3.5%, or in general various amount ranges from about 0.01 to about 40%, corresponding to instant claims 3 and 4, amine oxides such as N-(C10-C14)acrylaminopropyl-morpholine oxides representing a long chain tertiary amine oxide, ethoxylated fatty acid esters of sorbitan comprising from 2 to 30 mol of ethylene oxide, fatty acid esters of polyethylene glycol, polyethoxylated fatty acid mono or diesters of glycerol (C6-C24)aklylpolyglycodies, esters of polyols with fatty acids such as polyethylene glycol esters of a C8-C24, preferably C12-C22, fatty acid or acids and alkoxylated derivatives thereof, ethoxylated fatty esters,glyceryl esters of C8-C24 alkoxylated fatty acids, polyethoxylated glyceryl stearate such as PEG-20 glyceryl stearate as nonionic surfactants (corresponding to instant claim 5), polysorbates as surfactants such as polyoxyethylene (20) sorbitan monooleate Tween 80 (corresponding to instant claim 1), monocarboxylic acid lactic acid (as AHA type) present at 0.1% in the composition and citric acid, malic acid (corresponding to instant claims 7-9), water-soluble cationic polymer guar hydroxypropyl-trimonium chloride and/or polyquaternium-10 present at 0.1%, 0.2% or 0.5%, overlapping with amount ranges in instant claim 10, a further scalp health active, e.g., taurine (corresponding to instant claim 13), composition being stable for a period of time in variety of forms including liquid as a non-sticky form (corresponding to instant claim 1), the compositions being free or essentially free of anionic surfactants (corresponding to instant claim 15), and Rughani exemplifies formulations consisting 9 or fewer ingredients, including but not limited to, e.g., #1-#6 formulations in Example 1 [0508], #8-#9 in Example 3 [0510], #10-16 in Example 4 [0511], etc., not counting the optional ingredients, corresponding to instant claim 16. Combined teachings of Rughani and Barg exemplifies composition examples free of ethyl alcohol or ethanol with chemical formula of CH3CH2OH as discussed above.
It would have been obvious for a person with ordinary skills of art to incorporate teachings of Rughani and Barg into the composition recited in P’210 to arrive at current invention. Because Rughani and Barg provides complemental specific information of the components in composition P’210 for the same intended use, it would have motivated scientists to combine both compositions and select proper components for reasonable expectation of success. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, component amounts, HLB values, and pH range overlap with those recited by P’210 or taught by Rughani and Barg. “It would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered.
Art rejections
Applicant asserts that the art rejection of, e.g., claim 1, should withdraw, because original claim 6, polyoxyethylene sorbitan monolaurate, and non-sticky are specifically integrated into the amended claim 1, while previous rejections had not properly rejected these elements now present in amended claim 1.
The assertion is moot because new ground of rejections as presented above have updated the art rejections and addressed all elements in light of the claim amendments. Rughani, Barg, and Kroon combined teaching teaches all the components in amended claim 1.
Applicant asserts that there is no suggestion in Rughani or Kroon, or in their combination, the specific combination of the components in amended claim 1 within the claimed pH range and being ethanol-free and non-sticky, would yield the multi-functional anti-dandruff scalp benefits of the instant invention. Applicant asserts that the distinct purposes and broad disclosures of the references would not lead a person of ordinary skill in the art to combine Rughani or Kroon.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Rughani already points out general polysorbates are suitable non-ionic surfactants and pH modifier is suitable for the composition. Selecting such specific component and choose a pH range from relevant prior art references would be prima facie obvious for artisans in the field to do for reasonable expectations of success. As presented in office action above and copied below the most relevant paragraphs for reference:
It would be prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate the components taught by Barg and Kroon into the composition of Rughani to arrive at current invention. Because Rughani indicates that polysorbates within EO 20-100 are suitable for the composition, while Barg teaches polyoxyethylene (20) sorbitan monooleate (Tween 80) is suitable among several other polysorbates for the composition, it would be convenient for an artisan to select Tween 80 in the composition and would have provided reasonable expectation of success selecting the proper compound based upon the combined teaching. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Similarly, because Rughani already teaches using a pH modifier in the formulations, suggesting that pH is adjustable, while Kroon teaches hair care composition comprising substantially the same ingredients as those in Rughani, it would have motivated artisans to optimize to desirable pH level as both prior art teaches using pH modifying agent in an effective amount to achieve the desired pH level and especially Kroon teaches the range. Moreover, because pH does not provide structural contributions to the composition, it is a property or intended feature of the composition, which prior art has already taught, the pH would be necessarily present or be capable of being achieved.
Applicant asserts that the critical and unexpected nature of the claimed formulation being transparent, non-sticky, stable, within the desired pH range is not from routine optimization or inherent property, but from specific combination of ingredients including polyoxyethylene (20) sorbitan monolaurate within the defined pH range yielding unexpected synergistic effect, that could not have been predicted from the general teachings of Rughani or Kroon.
One cannot show nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Because "[T]he test for obviousness is what
the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). The assertion is based on individual teaching of Rughani or Kroon. Furthermore, current art rejection has updated to combined Rughani, Barg and Kroon teaching the instant formulation of amended claim 1.
In addition, because prior art of Rughani, Barg and Kroon teaches the instantly claimed formulation in claim 1, including same polyoxyethylene (20) sorbitan monolaurate and other components, within claimed pH range, critical or unexpected results present in instant specification from current formulation would be present or be additional advantage/latent properties even if they are not recognized in the prior art. Further, in light of claim interpretation as presented above, being transparent, non-sticky, and within such pH would necessarily be present or be capable of being achieved in prior art formulation. The most relevant paragraph from office action is copied below for reference:
MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991). MPEP 2112.01.I states that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Since Rughani, Barg and Kroon combined teaches the hair care composition comprising all the components as in instant claims, further in light of claim interpretation, the composition being transparent and non-sticky are inherent properties of the composition, which would necessarily be present in the composition taught by Rughani, Barg and Kroon.
D. Applicant argues that claims 17-18 compositions are specific ingredients using “consisting of” language, prior art presents broad options without guiding a person of skill in the art to the particular minimalist combination.
After thorough search of prior art, examiner finds this argument persuasive because these two claims are free of prior art, and therefore, the art rejections of claims 17-18 are withdrawn.
Non-statutory double-patenting rejection
Applicant requests the rejection be held in abeyance until such time as the current claims are in allowable form and the provisional double patenting rejection is the only remaining rejection.
A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP §714.02 and 37 CFR 1.111(b)). Thus, the double patenting rejection(s) of record has/have been maintained as no action regarding these rejections has been taken by Applicants at this time.
Allowable Subject Matter
Claims 17-18 are allowable, because they are free of prior art.
Conclusion
Claims 1-5, 7-13 and 15-16 are rejected.
Claims 17-18 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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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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