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 . 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.
Priority
The instant application is a 371 of PCT/JP2022/008915 filed on 03/02/2022 and claims foreign
priority to Japanese application no. JP2021-184640 filed on 11/12/2021 and Japanese application no.
JP2021-035865 filed on 03/05/2021. The certified copies of the foreign priority applications filed on
09/05/2023 are acknowledged.
Status of the Claims
The claim amendments and remarks filed on 04/08/2026 is acknowledged. Claims 1-2, 10-11, 13, and 17 are amended. Claims 3 is cancelled.
Accordingly, claims 1-2 and 4-17 are pending and being examined on the merits herein.
Withdrawn Rejections
The 35 USC 102 rejection over JP’356 for claims 1-17 is withdrawn because Applicant has added a new limitation requiring the mass ratio of the isomaltose and panose to be 1:3 to 1:10, which has changed the scope of the claims and requires additional search and consideration.
The following grounds of rejection are new as necessitated by Applicant’s amendments.
Claim Interpretation
The limitations recited in claims 4-9 and 11 are being interpreted as functional limitations for
the agent recited in claim 1 because these limitations recite a feature “by what it does rather than by
what it is”. See MPEP 2173.05 (g).
The “for enhancing a hair-setting ability” recited in claim 1 and the “for use in protecting hair
from a hair damage” recited in claim 10 are being interpreted as intended uses for the agent. See MPEP
2111.02 II.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 4-11 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Yoneyama et al. (US5550226A in PTO-892).
Yoneyama discloses a novel panose-rich saccharide powder that is advantageously used in food products, cosmetics, and pharmaceuticals (Abstract).
Yoneyama discloses that their panose-rich saccharide powder has properties such as gloss-imparting ability, moisture-retaining ability, and others(column 4 lines 48-58).
Yoneyama discloses the panose-rich saccharide powder can be incorporate into numerous products by any conventional methods such as mixing, dissolving, soaking, spreading, permeating, and others (column 6 lines 30-39).
Yoneyama demonstrates in Example 1 a preparation of a panose-rich solution, in which the sugar composition obtained was 21.4% glucose, 17.6% maltose, 9.9% isomaltose, 4.3% maltotriose, 29.8% panose, 1.7% isomaltotriose and 15.3% tetrasaccharides and higher molecular weight of saccharides.
This sugar composition disclosed in Yoneyama has a 1:3.01 ratio of isomaltose to pannose (9.9% to 29.8%) as well as an isomaltotriose.
Furthermore, the intended use “for enhancing a hair-setting ability” recited in instant claim 1 does not further limit the structure of the recited agent. MPEP 2111.02 section II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”. Additionally, the saccharide composition disclosed in Yoneyama would be capable of performing this intended use because Yoneyama discloses that the composition can be incorporated into cosmetic products.
Therefore, instant claims 1-2 are anticipated.
In regards to instant claim 4-11, these recited functional limitations of having a hair-arranging ability, improving a feel of hair, suppressing an occurrence of flaking, having a hair-treatment effect, and protecting hair from damage would be necessarily present and inherent to the saccharide compositions described above in Yoneyama because the compositions of Yoneyama described above contain the same isomalto-oligosaccharides (isomaltose and panose) in the same mass ratio (1:3 isomaltose to panose) as seen in Table 5 (paragraph 0059) and further disclosed in paragraphs 0056-0060 (pages 29-31) of the instant specification, which is disclosed as having these functions. Furthermore, the instant specification discloses that these isomaltooligosaccharide agents are the active compounds that performs this function (see paragraph 0025 page 9).
MPEP 2112 section I recite "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable”. Furthermore, MPEP 2112.01 section II recites “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.”
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2 and 4-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP2005089356A (in IDS filed 09/05/2025, an English translation is provided in PTO-892 and used as the basis for this rejection) in view of Yoneyama et al. (US5550226A in PTO-892).
JP’356 teaches cosmetic compositions comprising polyhydric alcohol and isomaltoligosaccharide (paragraph 0009).
JP’356 teaches that isomaltose, panose, isomaltotriose, isomaltotriose and the like can be used as isomaltoligosaccharide, and that these compounds can be used alone, but can also be used in combination of two or more, and can also be used in the state of a saccharide mixture containing other components (paragraph 0012).
JP’356 teaches that the content of isomaltoligosaccharide in the cosmetic composition is preferably 0.00001 to 10.0% by mass (paragraph 0017).
JP’356 teaches that the inclusion of isomaltoligosaccharides are effective for improving the stickiness and stiffness of hair caused by iso polyhydric alcohol (paragraph 0080). JP’356 further teaches that when used with additives derived from plant or animal-based ingredients for systemic or topical external preparations and cosmetics, their compositions protect skin and hair, improvement of skin and hair quality, prevention of rough skin and its improvement, hair growth, hair loss prevention, imparting gloss, cleansing effect, and other effects (paragraph 0034), which meet the functional limitations recited in instant claims 4-6, 8-9, and 11.
JP’356 also teaches that their composition can be applied to the scalp and hair and used as a hair treatment agent or hair styling agent (paragraph 0077), which meets the limitation of a hair-styling composition. Furthermore, the use of a hair styling agent is being interpreting as setting and fixing the hair as recited in instant claim 17.
JP’356 provides an exemplary formulation (Formulation example 8 on page 12) of an emollient cream comprising panose 3% by mass, isomaltose 2% by mass, and isomaltotriose 2% by mass. The isomaltose and panose mass ratio is 1:1.5, and the emollient cream meets the structural limitation of a leave-on type composition as recited in instant claim 15.
JP’356 provides another exemplary formulation (Prescription Example 15 on page 14) of a shampoo composition comprising panose 3% by mass and isomaltose 2% by mass. The isomaltose and panose mass ratio is 1:1.5, and the shampoo meets the structural limitation of a rinse off type composition as recited in instant claim 16.
JP’356, however, does not teach the claimed mass ratio of 1:3 to 1:10 isomaltose:panose.
The teachings of Yoneyama are as described above.
It would have been prima facie obvious before the effective filing date of the claimed invention to have substituted the isomaltoligosaccharides disclosed in the compositions of JP’356 with the isomaltoligosaccharides disclosed in Yoneyama such as their sugar composition that contains isomaltotriose as well as a 1:3.01 ratio of isomaltose to pannose (9.9% to 29.8%) to arrive at the claimed invention.
One of ordinary skill in the art would have substituted one known element (isomaltoligosaccharides of JP’356 for another (isomaltoligosaccharides of Yoneyama) to obtain predictable results and would have a reasonable expectation of success in doing so because both JP’356 and Yoneyama disclose incorporating their isomaltoligosaccharides into cosmetic products.
Furthermore, the intended use “for enhancing a hair-setting ability” recited in instant claim 1 does not further limit the structure of the recited agent. MPEP 2111.02 section II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”. Additionally, the composition as disclosed by the combined teachings of JP’356 and Yoneyama described above would be capable of performing this intended use because both JP’356 Yoneyama discloses that the composition can be incorporated into cosmetic products.
In regards to instant claims 4-11, these recited functional limitations of having a hair-arranging ability, improving a feel of hair, suppressing an occurrence of flaking, having a hair-treatment effect, and protecting hair from damage would be necessarily present and inherent to the composition as disclosed by the combined teachings of JP’356 and Yoneyama described above because this composition contains the same isomalto-oligosaccharides (isomaltose and panose) in the same mass ratio (1:3.01 isomaltose to panose) as seen in Table 5 (paragraph 0059) and further disclosed in paragraphs 0056-0060 (pages 29-31) of the instant specification, which is disclosed as having these functions. Furthermore, the instant specification discloses that these isomaltooligosaccharide agents are the active compounds that performs this function (see paragraph 0025 page 9). Lastly, JP’356 discloses that their compositions that include isomaltoligosaccharides perform several of the same functions as discussed above.
MPEP 2112 section I recite "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable”. Furthermore, MPEP 2112.01 section II recites “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.”
In regards to instant claims 12-15, it would have also been prima facie obvious before the effective filing date of the claimed invention to have prepared the composition as disclosed by the combined teachings of JP’356 and Yoneyama described above into a hair styling composition and into a gel, cream, or shampoo form as disclosed in JP’356 to arrive at the claimed invention.
One of ordinary skill in the art would have combined prior art elements according to known methods to yield predictable results and would have a reasonable expectation of success in doing so because JP’356 provides guidance of forming compositions that contain isomaltooligosaccharides into various hair products such as hair styling agents and additional guidance that these compositions can be in various forms such as gels, creams, shampoos, and others.
In regards to instant claim 16, it would have also been prima facie obvious before the effective filing date of the claimed invention to have applied the hair styling composition as disclosed by the combined teachings of JP’356 and Yoneyama described above to a subject to style their hair as disclosed by the JP’356 to arrive at the claimed invention.
One of ordinary skill in the art would have combined prior art elements according to known methods to yield predictable results and would have a reasonable expectation of success in doing so because JP’356 provides guidance that their compositions that contain isomaltooligosaccharides can be applied to the scalp and hair and used as a hair styling agent.
Furthermore, even though the combined teachings of JP’356 and Yoneyama described above do not explicitly teach the functional limitation “enhancing hair-setting ability”, this functional limitation would flow naturally from the combined teachings of JP’356 and Yoneyama described above because the combined teachings provide guidance of applying the same hair styling composition containing the same isomalto-oligosaccharides (isomaltose and panose) in the same mass ratio (1:3.01 isomaltose to panose) as seen in Table 5 (paragraph 0059) and further disclosed in paragraphs 0056-0060 (pages 29-31) of the instant specification, which was disclosed as having this functional limitation.
MPEP 2145 II recites “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter.m 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.").”
Response to Arguments
Applicant’s arguments filed on 04/08/2026 have been fully considered in so far as they apply to the rejections of the instant office action, but were not persuasive.
Applicant presents various arguments for the previous rejection over JP’356. However, the new rejection is based on the combination of JP’356 and Yoneyama, rendering Applicant’s arguments over JP’356 moot.
Furthermore, Applicant states that the presently claimed agent comprising isomaltose and panose at the mass ratio range of 1:3 to 1:10 advantageously achieves both good hair-setting ability as well as the good feeling of use in a hair-setting situation.
Applicant points to Experiment 2-3 and Table 5 (paragraphs 0056-0060 (pages 29-31), in which various test hair-setting compositions comprising isomaltose and panose in mass ratios ranging from 0:100 to 100:0 (isomaltose:panose) was given to panelists to apply to their hair and to evaluate its “film-forming texture”, “stickiness”, and “flaking after combing” on a 5 point scale (1 being very bad to 5 being very good).
Table 5 shows that only control composition (no isomaltose and panose) and the hair-setting compositions that had a mass ratio 25:75 (1:3) to 9:91 (~1:10) isomaltose:panose had no scores below average in the three evaluation parameters as well as the overall evaluation score (single circle and double circle indicating an average evaluation score of 3 or 4 or better), whereas all of the hair-setting compositions outside of this range (100:0 to 50:50 and 6:94 to 0:100 isomaltose:panose) had below average scores in the three evaluation parameters as well as the overall evaluation score (triangle and x symbol indicating an average evaluation score of 2 or 1 or worse).
Therefore, Applicant states the claimed agent has an advantageous technical effect that is non-obvious over the prior art.
In response to Applicant’s showing of a criticality of a claimed range (1:3 to 1:10 mass ratio of isomaltose:panose) to achieve an unexpected result, the showing of an unexpected result must be compared to the closest prior art as stated in MPEP 716.02(e).
The closest prior art is JP’356, and as described above, JP’356 provides exemplary cosmetic compositions comprising panose 3% by mass and isomaltose 2% by mass, which has a mass ratio of 1:1.5.
Applicant has demonstrated that a composition comprising 50:50 mass ratio (1:1 isomaltose:panose), which is outside of the claimed mass ratio range, did not achieve the described technical effects as shown in Table 5, whereas a composition comprising 25:75 mass ratio (1:3 isomaltose:panose), which is within the claimed mass ratio range, did achieve the described technical effects.
However, Applicant has not provided a composition comprising 1:1.5 mass ratio (isomaltose:panose) as disclosed in JP’356, making it difficult to ascertain whether or not this closer outside mass ratio composition would achieve the described technical effects. Therefore, Applicant’s showing of a criticality for a range is currently not sufficient because Applicant has not sufficiently demonstrated a criticality over this closer outside mass ratio disclosed in the prior art.
Furthermore, as stated in MPEP 716.02(d), the unexpected results must be commensurate in scope with the claimed invention.
Independent claim 1 only recites a mass ratio of the isomaltose and panose, but does not require specific amounts of these compounds. Applicant has only demonstrated compositions in Table 5, in which the total mass of the isomaltooligosaccharides was around 10% total mass of the composition (see Table 3 paragraph 0052). Additionally, the instant specification discloses that that less than 0.1% by mass of the isomaltooligosaccharide content in the composition may not be preferable since the effect of enhancing a hair-setting ability shown by the isomaltooligosaccharide may not be sufficient, and on the other hand, more than 30% by mass of the isomaltooligosaccharide in the composition may not be preferable since the feeling of use may become worse (paragraph 0030 page 12). Therefore, Applicant has not provided enough evidence that the alleged unexpected results would apply over the scope of the instant claims.
Conclusion
Claims 1-2 and 4-17 are rejected.
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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/D.H.C./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693
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