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.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/05/2023, 10/04/2023, and 03/12/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of the Claims
The preliminary claim amendments filed on 09/05/2023 is acknowledged. Claims 3-5, 7-8, 10-12, and 14-17 are amended.
Accordingly, claims 1-17 are pending and being examined on the merits herein.
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.
Claim(s) 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2005089356A (in IDS filed 09/05/2025, an English translation is provided in PTO-892 and used as the basis for this rejection).
JP’356 teaches isomaltoligosaccharide-containing cosmetic composition that is used to moisture the skin and hair (see Abstract). 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 (fourth paragraph on second page).
JP’356 teaches two different formulations that anticipate the instant claims.
The first formulation of JP’356 (Formulation example 8 on page 12) is an emollient cream comprising panose 3% by mass, isomaltose 2% by mass, and isomaltotriose 2% by mass. Here, the isomaltose and panose mass ratio is 1:1.5, which meets the limitation of instant claims 3. Furthermore, the emollient cream meets the limitation of a leave-on type composition as recited in instant claim 15.
The second formulation of JP’356 (Prescription Example 15 on page 14) is a shampoo composition comprising panose 3% by mass and isomaltose 2% by mass. Here, the isomaltose and panose mass ratio is 1:1.5, which meets the limitation of instant claims 3. Furthermore, the shampoo meets the limitation of a rinse off type composition as recited in instant claim 16.
JP’356 discloses a sensory evaluation test in which panelists (6 males and 24 females) applied 1.0 mL of their compositions comprising isomaltose, panose, and isomaltotriose to the face, back of hands, and hair to obtain a sensory evaluation score (see second paragraph page 8).
JP’356 teaches that their compositions can be used without the unpleasant stickiness and hair tingling effects caused by isomaltoligosaccharide (see Abstract). 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 (see sixth paragraph on third page), and can be applied to the scalp and hair and used as a hair treatment agent or hair styling agent (see second to last paragraph on page 7). Here, the functions described above meet the functional limitations recited in instant claims 4-6, 8-9, and 11. Additionally, the instant specification also discloses that the isomaltooligosaccharide agent is the active compound that performs these functions (see paragraph 0025 page 9). Therefore, the functional limitations recited in instant claims 4-6, 8-9, and 11 are also necessarily present and inherent to the compositions described above in JP’356 because the compositions of JP’356 described above contain the same isomalto-oligosaccharides (isomaltose and panose) in the same amounts.
Furthermore, the intended uses “for enhancing a hair-setting ability” recited in instant claim 1 and “for use in protecting hair from a hair damage” recited in instant claim 10 do 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 instant specification also discloses that the isomaltooligosaccharide agent is the active compound that performs these uses (see paragraph 0025 page 9), which indicates that the compositions of JP’356 comprising the same isomaltooligosaccharide agent would also perform these uses.
Therefore, instant claims 1-6 and 8-16 are anticipated.
In regards to instant claim 7, the recited functional limitation of suppressing an occurrence of flaking is necessarily present and inherent to the compositions described above in JP’356 because the compositions of JP’356 described above contain the same isomalto-oligosaccharides (isomaltose and panose) in the same amounts (1-10% by mass) as seen in the example compositions of Table 7 in the instant specification (paragraphs 0065-0066 pages 35-36) that has suppression in occurrence of flaking. Here, Table 7 shows that compositions comprising 1-10% by mass of isomalto-oligosaccharides had favorable film forming texture, stickiness, and flaking after combing. Furthermore, the instant specification discloses that the isomaltooligosaccharide agent is the active compound 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.”
In regards to instant claim 17, the recited method for enhancing a hair-setting ability would flow naturally from the teachings of JP’356 because JP’356 teaches the same active step of applying the same composition with the same amounts of active agents as described above to the hair and also teaches using their compositions as a hair styling agent.
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. 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.").”
Conclusion
No claim is found allowable.
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/D.H.C./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693