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 .
DETAILED ACTION
Claims 1-25 are pending.
Election/Restrictions
Applicant's election with traverse of the species of
a. a species of one or more fatty amphiphile - cetyl and stearyl alcohol,
b. a species of one or more surfactant - behentrimonium methosulfate,
c. a species of water soluble polymer - polyquaternium-37,
in the reply filed on 2/3/26 is acknowledged. The traversal is on the ground that the different groups of the present invention have not acquired a separate status in the art, notwithstanding possible different classification or subclassification in the art. This is not found persuasive because as described in the requirement, the species require employing different search strategies or search queries due to the breadth of the genus and resulting different chemical structure and classification. For example, species (c) as recited in claim 1 is any water-soluble polymer, which encompasses numerous classes and subclasses. Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-14 are withdrawn as not being directed to the elected species of water-soluble polymer.
Claims 1-11 and 15-25 are under consideration to the extent that the composition comprises the elected species.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 2/26/24, 4/19/24, 7/5/24, 8/14/24, 2/21/25, and 12/10/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claims 21 and 22 are objected to because of the following informalities:
Claim 21 includes an error and is suggested to be amended to, “wherein the clear scalp composition is clear, demonstrating
Claim 22 includes a grammatical error and is suggested to be amended to, “wherein the discrete particles are spreadable between fingers on a hand when sheared and [[is]] are stable”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 6, 7 and 18 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 pre-AIA the applicant regards as the invention.
Claim 6 recites the limitation “the scalp active” in line 1. There is insufficient antecedent basis for this limitation in the claim. In claim 1 "one or more of a scalp active" encompasses multiple scalp actives. It is unclear whether just one, more than one, or all of the scalp actives must meet the claim limitation.
Claim 7 recites the limitation “the scalp active” in line 1. There is insufficient antecedent basis for this limitation in the claim. In claim 1 "one or more of a scalp active" encompasses multiple scalp actives. It is unclear whether just one, more than one, or all of the scalp actives must meet the claim limitation.
Claim 18 recites that “the aqueous carrier is a surfactant selected from...”. The “aqueous carrier” by definition is understood to include water, but if the carrier “is” a surfactant then no water is present. Accordingly the metes and bounds of the claim are unclear because it is unclear what components are present in the aqueous carrier. An amendment such as “wherein the aqueous carrier [[is]]comprises a surfactant selected from...” may better reflect Applicant’s invention.
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.
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 1-11 and 15-25 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 2019/0365611; cited in IDS) in view of Yokogi et al. (US 2020/0113796; cited in IDS).
Brown et al. teach a clear cleansing composition comprising discrete particles which deliver benefits (e.g. paragraph 0001). Brown et al. teach the composition comprises:
from about 0.5% to about 30%, by weight, of a discrete particle comprising anhydrous particles and an aqueous phase (e.g. Claim 1), wherein the anhydrous particles comprise
one or more of a fatty amphiphile, including cetyl and stearyl alcohol (e.g. Claim 1; Examples);
and one or more of a surfactant including behentrimonium methosulfate (e.g. Claim 1; Examples); and
wherein the discrete particles have a size from about 200 microns to about 15,000 microns (e.g. Claim 1); and
an aqueous phase comprising a detersive surfactant and an aqueous carrier (e.g. Claim 1); wherein the clear scalp composition has a pH from about 3-9 or 4-8, which overlaps with the claimed ranges of 3.5-7 and 3.5-5 (e.g. paragraph 0047). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Brown et al. teach that the composition as a whole may comprise anti-dandruff agents including piroctone olamine (e.g. paragraph 0107 and 0114), but do not teach that the anhydrous particles comprise piroctone olamine. Brown et al. further teach the composition comprising a cationic polymer (e.g. paragraph 0046), but do not teach the elected species of polyqyaternium-37. These deficiencies are made up for by the teachings of Yokogi et al.
Yokogi et al. teach a personal care product comprising one or more solid discrete particles (e.g. abstract). Yokogi et al. teach that the one or more solid discrete particles comprise a surfactant, including methosulfate, and a high melting point fatty compound, including cetyl and stearyl alcohol (e.g. Claim 1; paragraphs 0100, 0108-0110) and further comprises an anti-dandruff agent (e.g. Claim 12). Yokogi et al. teach that by providing the composition within solid discrete particles they are providing a customized product having improved stability especially when containing incompatible components and/or while not causing negative interaction with personal care composition, package, and any other environmental factors (e.g. paragraphs 0015-0026). Yokogi et al. further teach the inclusion of a water-soluble polymer, which is preferably polyquaternium-37 (e.g. paragraph 0056 and 0059).
Regarding Claims 1-3, 6, 7, and 9-11, it would have been obvious to one of ordinary skill in the art at the time of filing to include the piroctone olamine of Brown et al. as part of the discrete particle as taught by Yokogi et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions are substantially similar and comprise anti-dandruff actives, and one of ordinary skill would have been motivated in order to provide the benefits of a customized product having improved stability as taught by Yokogi et al. In addition, it would have been obvious to one of ordinary skill in the art at the time of filing to select the polyquaternium-37 of Yokogi et al. for use with the compositions of Brown et al. One of ordinary skill in the art would have predicted success as both of the compositions are substantially similar and both comprise cationic polymers.
Regarding Claims 4 and 6, Brown et al. teach that the discrete particle of the cleansing composition has a size from about 500 microns to about 7000 microns, or 1000 microns to about 5000 microns (e.g. paragraph 0020).
Regarding Claim 8, Yokogi et al. teach that the benefit agent can be contained in the particles at a level by the weight of from about 0.1% to about 90%, more preferably from about 0.3% to about 60%, still more preferably from about 0.5% to about 40%, even more preferably from about 0.5% to about 30%, which overlaps with the claimed range (e.g. paragraph 0083). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claims 15 and 16, Brown et al. teach that the cationic polymer may be present at 0.05-5 wt% (e.g. paragraph 0046) and Yokogi et al. teach that the water-soluble polymer may be present at 0.005-10 wt% or preferably 0.05-5 wt% (e.g. paragraph 0050).
Regarding Claims 17 and 18, Brown et al. teach that the carrier comprises water, or a miscible mixture of water and organic solvent (e.g. paragraph 0104) and surfactants including anionic, zwitterionic, or amphoteric surfactants, or a combination thereof (e.g. paragraph 0066).
Claims 19 and 20 are directed to the process of forming the composition. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. In the instant case, the composition is taught by the combined teachings of Brown and Yokogi. In addition, Brown et al. teach that the anhydrous particles swell when added to an aqueous phase (e.g. paragraphs 0026 and 0044).
Regarding Claim 21, Brown is silent as to the haze value, but do teach that the compositions are clear having light transmittance from about 60%, about 70%, about 75%, about 80% to about 99%, about 95%, about 90% (e.g. paragraph 0024). One of ordinary skill in the art would expect the composition of Brown et al. to have a haze of less than 50% as claimed as it is described as clear and given the transmittance value. In addition, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant's haze differs, and if so to what extent, from the teachings of Brown et al. Therefore the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Regarding Claim 22, Brown is silent as to the spreadability of the particles but describe the composition as “suitable for application to human hair” meaning that the compositions or components thereof so described are suitable for use in contact with human hair and the scalp and skin without undue instability (e.g. paragraph 0017). Furthermore, “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 23, Brown et al. teach that “once incorporated into finished product, the discrete particle sufficiently swells or “hydrates”, therein allowing the particle to begin to blend with the cleansing continuous phase as the product is dispensed from the package by the consumer” (e.g. paragraph 0129).
Regarding Claims 24 and 25, Brown et al. are silent as to swollen size of the discrete particles. However, “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In addition, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant's swollen size differs, and if so to what extent, from the teachings of Brown et al. and Yokogi et al. Therefore the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
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 1-11 and 15-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/422,155 in view of Brown et al. (US 2019/0365611) and Yokogi et al. (US 2020/0113796).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims recite solid, discrete particles, comprising a discrete particle comprising anhydrous particles and an aqueous phase of the clear scalp composition, wherein the anhydrous particles comprise one or more of a fatty amphiphile selected from the group consisting of fatty alcohol, fatty ester, fatty acid, fatty amide and mixtures thereof; and one or more of a cationic surfactant; wherein the anhydrous particles comprise one or more of an active, including a scalp active; and wherein the discrete particles have overlapping sizes.
Copending ‘155 does not claim b) an aqueous phase comprising a water soluble polymer and an aqueous carrier; wherein the clear scalp composition has a pH from about 3.5 to about 7.0, or that the benefit agent is piroctone olamine. This is made up for by the teachings of Brown et al. and Yokogi et al.
Brown et al. teach a clear cleansing composition comprising discrete particles which deliver benefits (e.g. paragraph 0001). Brown et al. teach the composition comprises:
from about 0.5% to about 30%, by weight, of a discrete particle comprising anhydrous particles and an aqueous phase (e.g. Claim 1), wherein the anhydrous particles comprise
one or more of a fatty amphiphile, including cetyl and stearyl alcohol (e.g. Claim 1; Examples);
and one or more of a surfactant including behentrimonium methosulfate (e.g. Claim 1; Examples); and
wherein the discrete particles have a size from about 200 microns to about 15,000 microns (e.g. Claim 1); and
an aqueous phase comprising a detersive surfactant and an aqueous carrier (e.g. Claim 1); wherein the clear scalp composition has a pH from about 3-9 or 4-8, which overlaps with the claimed ranges of 3.5-7 and 3.5-5 (e.g. paragraph 0047). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Brown et al. teach that the composition as a whole may comprise anti-dandruff agents including piroctone olamine (e.g. paragraph 0107 and 0114),
Yokogi et al. teach a personal care product comprising one or more solid discrete particles (e.g. abstract). Yokogi et al. teach that the one or more solid discrete particles comprise a surfactant, including methosulfate, and a high melting point fatty compound, including cetyl and stearyl alcohol (e.g. Claim 1; paragraphs 0100, 0108-0110) and further comprises an anti-dandruff agent (e.g. Claim 12). Yokogi et al. further teach the inclusion of a water-soluble polymer, which is preferably polyquaternium-37 (e.g. paragraph 0056 and 0059).
It would have been obvious to one of ordinary skill in the art at the time of filing to include an aqueous phase and benefit agent as described in Brown et al. and Yokogi et al. with the particles of ‘155, because all of Brown, Yokogi and ‘155 disclose substantially similar particles and the method claims of ‘155 (13-17) describe addition to an aqueous phase.
Claims 1-6 are met by copending Claim 1.
Claims 7-11 and 15-25 are met by Brown and Yokogi as described above.
This is a provisional nonstatutory double patenting rejection.
Claims 1-11 and 15-25 are directed to an invention not patentably distinct from claim 1-13 of commonly assigned 18/422,155. 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 18/422,155, 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.
Claims 1-11 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,058,621 in view of Brown et al. (US 2019/0365611) and Yokogi et al. (US 2020/0113796).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims 1 recite:
A composition comprising a discrete particle comprising anhydrous particles and an aqueous phase of the clear scalp composition, wherein the anhydrous particles comprise one or more of a fatty amphiphile selected from the group consisting of fatty alcohol, fatty ester, fatty acid, fatty amide and mixtures thereof; and one or more of a surfactant selected from the group consisting of cationic or mixtures thereof; wherein the anhydrous particles comprise one or more of an active; and b) an aqueous phase comprising a water soluble polymer and an aqueous carrier.
Patent ‘621 does not claim that the benefit agent is piroctone olamine This is made up for by the teachings Brown and Yokogi et al.
Brown et al. teach a clear cleansing composition comprising discrete particles which deliver benefits (e.g. paragraph 0001). Brown et al. teach the composition comprises:
from about 0.5% to about 30%, by weight, of a discrete particle comprising anhydrous particles and an aqueous phase (e.g. Claim 1), wherein the anhydrous particles comprise
one or more of a fatty amphiphile, including cetyl and stearyl alcohol (e.g. Claim 1; Examples);
and one or more of a surfactant including behentrimonium methosulfate (e.g. Claim 1; Examples); and
wherein the discrete particles have a size from about 200 microns to about 15,000 microns (e.g. Claim 1); and
an aqueous phase comprising a detersive surfactant and an aqueous carrier (e.g. Claim 1); wherein the clear scalp composition has a pH from about 3-9 or 4-8, which overlaps with the claimed ranges of 3.5-7 and 3.5-5 (e.g. paragraph 0047). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Brown et al. teach that the composition as a whole may comprise anti-dandruff agents including piroctone olamine (e.g. paragraph 0107 and 0114).
Yokogi et al. teach a personal care product comprising one or more solid discrete particles (e.g. abstract). Yokogi et al. teach that the one or more solid discrete particles comprise a surfactant, including methosulfate, and a high melting point fatty compound, including cetyl and stearyl alcohol (e.g. Claim 1; paragraphs 0100, 0108-0110) and further comprises an anti-dandruff agent (e.g. Claim 12). Yokogi et al. further teach the inclusion of a water-soluble polymer, which is preferably polyquaternium-37 (e.g. paragraph 0056 and 0059).
It would have been obvious to one of ordinary skill in the art at the time of filing to include an aqueous phase and benefit agent as described in Brown et al. and Yokogi et al. with the particles of ‘621, because all of Brown, Yokogi and ‘621 disclose substantially similar particles and composition, and the benefits thereof. In addition, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 1-6 are met by patented Claim 1.
Claims 7-11 and 15-25 are met by Brown and Yokogi as described above.
This is a provisional nonstatutory double patenting rejection.
Claims 1-11 and 15-25 are directed to an invention not patentably distinct from claims 1-14 of commonly assigned 11,058,621. 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 11,058,621, 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
Claims 1-11 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,628,126 in view of Brown et al. (US 2019/0365611) and Yokogi et al. (US 2020/0113796).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims 1 recite:
A composition comprising a discrete particle comprising anhydrous particles and an aqueous phase of the clear scalp composition, wherein the anhydrous particles comprise one or more of a fatty amphiphile selected from the group consisting of fatty alcohol, fatty ester, fatty acid, fatty amide and mixtures thereof; and one or more of a surfactant selected from the group consisting of anionic, nonionic, zwitterionic, cationic or mixtures thereof; and b) an aqueous phase comprising a water soluble polymer and an aqueous carrier.
Patent ‘126 does not claim that the benefit agent is piroctone olamine and is within the particles. This is made up for by the teachings Brown and Yokogi et al.
Brown et al. teach a clear cleansing composition comprising discrete particles which deliver benefits (e.g. paragraph 0001). Brown et al. teach the composition comprises:
from about 0.5% to about 30%, by weight, of a discrete particle comprising anhydrous particles and an aqueous phase (e.g. Claim 1), wherein the anhydrous particles comprise
one or more of a fatty amphiphile, including cetyl and stearyl alcohol (e.g. Claim 1; Examples);
and one or more of a surfactant including behentrimonium methosulfate (e.g. Claim 1; Examples); and
wherein the discrete particles have a size from about 200 microns to about 15,000 microns (e.g. Claim 1); and
an aqueous phase comprising a detersive surfactant and an aqueous carrier (e.g. Claim 1); wherein the clear scalp composition has a pH from about 3-9 or 4-8, which overlaps with the claimed ranges of 3.5-7 and 3.5-5 (e.g. paragraph 0047). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Brown et al. teach that the composition as a whole may comprise anti-dandruff agents including piroctone olamine (e.g. paragraph 0107 and 0114).
Yokogi et al. teach a personal care product comprising one or more solid discrete particles (e.g. abstract). Yokogi et al. teach that the one or more solid discrete particles comprise a surfactant, including methosulfate, and a high melting point fatty compound, including cetyl and stearyl alcohol (e.g. Claim 1; paragraphs 0100, 0108-0110) and further comprises an anti-dandruff agent (e.g. Claim 12). Yokogi et al. further teach the inclusion of a water-soluble polymer, which is preferably polyquaternium-37 (e.g. paragraph 0056 and 0059).
It would have been obvious to one of ordinary skill in the art at the time of filing to include the benefit agent as described in Brown et al. and Yokogi et al. with the particles of ‘126, because all of Brown, Yokogi and ‘126 disclose substantially similar particles and composition, and the benefits thereof. In addition, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 1-6 are met by patented Claim 1.
Claims 7-11 and 15-25 are met by Brown and Yokogi as described above.
This is a provisional nonstatutory double patenting rejection.
Claims 1-11 and 15-25 are directed to an invention not patentably distinct from claims 1-6 of commonly assigned 11,628,126. 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 11,628,126, 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.
Claims 1-11 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,931,441 in view of Brown et al. (US 2019/0365611) and Yokogi et al. (US 2020/0113796).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims 1 recite:
A composition comprising a discrete particle comprising anhydrous particles and an aqueous phase of the clear scalp composition, wherein the anhydrous particles comprise one or more of a fatty amphiphile selected from the group consisting of fatty alcohol, fatty ester, fatty acid, fatty amide and mixtures thereof; and one or more of a surfactant selected from the group consisting of cationic or mixtures thereof; and a benefit agent including anti-dandruff agents; and b) an aqueous phase.
Patent ‘441 does not claim that the benefit agent is piroctone olamine or the inclusion of a water-soluble polymer. This is made up for by the teachings Brown and Yokogi et al.
Brown et al. teach a clear cleansing composition comprising discrete particles which deliver benefits (e.g. paragraph 0001). Brown et al. teach the composition comprises:
from about 0.5% to about 30%, by weight, of a discrete particle comprising anhydrous particles and an aqueous phase (e.g. Claim 1), wherein the anhydrous particles comprise
one or more of a fatty amphiphile, including cetyl and stearyl alcohol (e.g. Claim 1; Examples);
and one or more of a surfactant including behentrimonium methosulfate (e.g. Claim 1; Examples); and
wherein the discrete particles have a size from about 200 microns to about 15,000 microns (e.g. Claim 1); and
an aqueous phase comprising a detersive surfactant and an aqueous carrier (e.g. Claim 1); wherein the clear scalp composition has a pH from about 3-9 or 4-8, which overlaps with the claimed ranges of 3.5-7 and 3.5-5 (e.g. paragraph 0047). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Brown et al. teach that the composition as a whole may comprise anti-dandruff agents including piroctone olamine (e.g. paragraph 0107 and 0114).
Yokogi et al. teach a personal care product comprising one or more solid discrete particles (e.g. abstract). Yokogi et al. teach that the one or more solid discrete particles comprise a surfactant, including methosulfate, and a high melting point fatty compound, including cetyl and stearyl alcohol (e.g. Claim 1; paragraphs 0100, 0108-0110) and further comprises an anti-dandruff agent (e.g. Claim 12). Yokogi et al. further teach the inclusion of a water-soluble polymer, which is preferably polyquaternium-37 (e.g. paragraph 0056 and 0059).
It would have been obvious to one of ordinary skill in the art at the time of filing to include the benefit agent and water-soluble polymer as described in Brown et al. and Yokogi et al. with the particles of ‘441, because all of Brown, Yokogi and ‘441 disclose substantially similar particles and composition, and the benefits thereof. In addition, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 1-6 are met by patented Claim 1.
Claims 7-11 and 15-25 are met by Brown and Yokogi as described above.
This is a provisional nonstatutory double patenting rejection.
Claims 1-11 and 15-25 are directed to an invention not patentably distinct from claims 1-7 of commonly assigned 11,931,441. 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 11,931,441, 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 claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619