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 . Claims included in prosecution are claims 1 and 8-23.
Response to Restriction/Election Requirement
Applicant’s election of Invention I and Species Group III in the reply filed on 12/23/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2-7 and 24-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species/invention, there being no allowable generic or linking claim.
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.
1. Claims 8-9 and 11-23 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 8, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “0.01% to 40% by weight”, and the claim also recites “preferably from 0.1 to 30% by weight” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 9 and 11-23 are replete with instances of a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) such as the use of "preferably," “more preferentially,” “better still,” “even better still,” “even more preferentially,” “even more particularly,” and “preferentially”. Therefore, this also applies to claims 11-12, 15, 18 and 23, which recite “preferentially”, and claims 13-14, 16-17 and 19-22, which recite “preferably”.
As such, Applicant is advised to carefully review and address each instance in the indicated claims.
Claim 16 recites “different from the associative polymer(s) as defined in Claim 14 or 15”. The claim is indefinite because it is not clear what definition the claim is referring to. Additionally, where possible, claims are to be complete in themselves. Incorporation by reference is permitted only in exceptional circumstances where there is no practical way to define the invention in words. Incorporation by reference is a necessity doctrine, not for applicant’s convenience. See MPEP 2173.05(s). Therefore, the claim is additionally improper for reciting “as defined in Claim 14 or 15” since materials/definitions can be incorporated in words.
Claim 18 recites “the acrylic polymer(s)”. The phrase lack antecedent basis because the claim 17, from which claim 18 depends, recites “acrylic polymers” and “polymer(s)”. Therefore, the claim should read “the acrylic polymers” not “the acrylic polymer(s)”. Therefore the claims are indefinite.
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.
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.
1. Claim(s) 1, 9-11, and 14-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer).
Elsen-Wahrer discloses treatment compositions and processes related thereto for treating keratinous substrates, in particular for hair-care comprising a polycarbodiimide and carboxysilicone polymer (Abstract). The polycarbodiimide compound is present at a concentration of from about 0.5 to about 40.0% by weight, based on the total weight of the composition (satisfies claim 9) (¶ [0015]). The composition may include other suitable ingredients for hair treatment or hair repair. For example, known solvents and/or additives may be utilized in addition to the polycarbodiimide and carboxysilicone polymers to provide additional benefits to the composition (¶ [0047]). Suitable solvents for treatment of keratinous fibers. include organic solvents (¶ [0115]). Suitable organic solvents include ethanol (i.e., compound containing at least one hydroxyl function) (satisfies claim 10) (¶ [0117]). The organic solvent can be present in a total amount of about 98% or less (satisfies claim 11) (¶ [0127]). The composition may further include suitable additives for treatment of keratinous fibers (¶ [0129]). Suitable additives include polymeric rheology modifiers, thickening and/or viscosity modifying agents, pigments, solvents, and amino silicones (¶ [0130]). Suitable polymeric rheology modifiers include anionic polymers, for example associative polymers (satisfies claim 14) (¶ [0189]). Other additives include latex polymers, which can be carboxyl functional acrylate latex polymers (i.e., compound different from the associative polymer, containing at least one carboxylic acid group) (satisfies claim 16) (¶ [0207]). The latex polymer may exist as dispersed polymer particles in an aqueous dispersion medium (satisfies claim 17) (¶ [0211]). The carboxyl functional acrylate latex polymers may result from the homopolymerization or copolymerization of (meth)acrylic monomers (satisfies claim 18) (¶ [0217]). The composition according to the invention comprises one or more amino silicone compounds (satisfies claim 22) (¶ [0317]). The additives are generally present in an amount ranging up to about 95% by weight including all ranges and subranges there between (¶ [0413]). The carboxysilicone polymer may be present in a concentration of from about 0.25% to about 20% (Ref. claim 9).
The prior art is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been obvious, however, to have made a composition comprising a polycarbodiimide along with suitable additives such as pigments (i.e., coloring agent) and solvents such as ethanol (i.e., compound containing at least one hydroxyl function), as instantly claimed, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143(I)(A).
Regarding the amount of polycarbodiimide recited in instant claim 9, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, the polycarbodiimide compound is present at a concentration of from about 0.5 to about 40.0% by weight. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Elsen-Wahrer, the range disclosed by Elsen-Wahrer meets the instantly recited limitations.
Regarding the amount of compound containing at least one hydroxyl function recited in instant claim 11, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, additives are generally present in an amount ranging up to about 95% by weight. Accordingly, because the range recited in the instant claims lies inside the range disclosed by Elsen-Wahrer, the range disclosed by Elsen-Wahrer meets the instantly recited limitations.
Regarding the amounts recited in instant claims 15, 19-21, and 23, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, additives are generally present in an amount ranging up to about 95% by weight. Accordingly, because the range recited in the instant claims lies inside the range disclosed by Elsen-Wahrer, the range disclosed by Elsen-Wahrer meets the instantly recited limitations.
2. Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer) in view of Dorr et al. (WO 2018184993, Oct. 11, 2018) (hereinafter Dorr).
The teachings of Elsen-Wahrer are discussed above.
Elsen-Wahrer differs from the instant claims insofar as not explicitly disclosing wherein the composition comprises non-carboxylic anionic thickener such as those bearing a sulfonic group(s).
However, Dorr discloses a cosmetic composition for hair, containing at least one compound containing at least three carbodiimide groups (Abstract). The cosmetic compositions preferably comprise thickeners (Description, Pg. 6). Particularly advantageous thickeners include 2-acrylamido-2-methylpropanesulfonic acid (Description, Pg. 7).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. As discussed above, Elsen-Wahrer discloses wherein the composition may comprise additives such as thickening agents. Accordingly, it would have been prima facie obvious for one of ordinary skill in the art to have formulated the composition of Elsen-Wahrer to comprise 2-acrylamido-2-methylpropanesulfonic acid, since it is a known thickener for use in compositions comprising carbodiimides as taught by Dorr.
Regarding the amounts recited in instant claim 13 , in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, additives are generally present in an amount ranging up to about 95% by weight. Accordingly, because the range recited in the instant claims lies inside the range disclosed by Elsen-Wahrer, the range disclosed by Elsen-Wahrer meets the instantly recited limitations.
Allowable Subject Matter
Claim 8 is free of prior art. The closest prior art appears to be Elsen-Wahrer as discussed above; however, Elsen-Wahrer does not disclose the (poly)carbodiimide compound of formula (XII) as claimed in claim 8.
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.
1. Claims 1 and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 18/549,858 in view of Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer).
The pending claims differ from the copending claims insofar as reciting at least one compound containing at least one hydroxyl function.
However, Elsen-Wahrer discloses treatment compositions and processes related thereto for treating keratinous substrates, in particular for hair-care comprising a polycarbodiimide and carboxysilicone polymer (Abstract). The composition may include other suitable ingredients for hair treatment or hair repair. For example, known solvents and/or additives may be utilized in addition to the polycarbodiimide and carboxysilicone polymers to provide additional benefits to the composition (¶ [0047]). Suitable solvents for treatment of keratinous fibers. include organic solvents (¶ [0115]). Suitable organic solvents include ethanol (i.e., compound containing at least one hydroxyl function) (¶ [0117]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated ethanol into the pending claims since it is a known and effective additive for use in hair care compositions comprising polycarbodiimide as taught by Elsen-Wahrer.
This is a provisional nonstatutory double patenting rejection.
2. Claims 1 and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25, 28-32, 34, 35, 38-40, and 42-45 of copending Application No. 17/778,353 in view of Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer).
The pending claims differ from the copending claims insofar as reciting at least one compound containing at least one hydroxyl function and at least one associative polymer.
However, Elsen-Wahrer discloses treatment compositions and processes related thereto for treating keratinous substrates, in particular for hair-care comprising a polycarbodiimide and carboxysilicone polymer (Abstract). The composition may include other suitable ingredients for hair treatment or hair repair. For example, known solvents and/or additives may be utilized in addition to the polycarbodiimide and carboxysilicone polymers to provide additional benefits to the composition (¶ [0047]). Suitable solvents for treatment of keratinous fibers. include organic solvents (¶ [0115]). Suitable organic solvents include ethanol (i.e., compound containing at least one hydroxyl function) (¶ [0117]). Suitable additives include polymeric rheology modifiers (¶ [0130]). Suitable polymeric rheology modifiers include anionic polymers, for example associative polymers (¶ [0189]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated an associative polymer and ethanol into the pending claims since they are known and effective solvents/additives for use in hair care compositions comprising polycarbodiimide as taught by Elsen-Wahrer.
This is a provisional nonstatutory double patenting rejection.
3. Claims 1 and 8-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-22 of copending Application No. 18/549,692 in view of Elsen-Wahrer et al. (US 2017/0189314, Jul. 6, 2017) (hereinafter Elsen-Wahrer).
The pending claims differ from the copending claims insofar as reciting at least one compound containing at least one hydroxyl function.
However, Elsen-Wahrer discloses treatment compositions and processes related thereto for treating keratinous substrates, in particular for hair-care comprising a polycarbodiimide and carboxysilicone polymer (Abstract). The composition may include other suitable ingredients for hair treatment or hair repair. For example, known solvents and/or additives may be utilized in addition to the polycarbodiimide and carboxysilicone polymers to provide additional benefits to the composition (¶ [0047]). Suitable solvents for treatment of keratinous fibers. include organic solvents (¶ [0115]). Suitable organic solvents include ethanol (i.e., compound containing at least one hydroxyl function) (¶ [0117]).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated ethanol into the pending claims since it is a known and effective additive for use in hair care compositions comprising polycarbodiimide as taught by Elsen-Wahrer.
This is a provisional nonstatutory double patenting rejection.
4. Claims 1 and 8-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-22 of U.S. Patent No. 18/549,555 in view of Dorr et al. (WO 2018184993, Oct. 11, 2018) (hereinafter Dorr).
The pending claims differ from the patented claims insofar as reciting at least one non-carboxylic anionic thickener.
However, Dorr discloses a cosmetic composition for hair, containing at least one compound containing at least three carbodiimide groups (Abstract). The cosmetic compositions preferably comprise thickeners (Description, Pg. 6). Particularly advantageous thickeners include 2-acrylamido-2-methylpropanesulfonic acid (Description, Pg. 7).
Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated a non-carboxylic anionic thickener such as 2-acrylamido-2-methylpropanesulfonic acid into the pending claims since it is a known and effective thickener for use in hair care compositions comprising polycarbodiimide as taught by Elsen-Wahrer.
Conclusion
Claims 1 and 8-23 are rejected.
Claims 2-7 and 24-28 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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