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 .
Applicant’s arguments, filed 22 April 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 26 is objected to because of the following informalities: “a” in line 2 should be recited as --- the at least one ---. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19-32 and 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (US 2012/0201774 A1, 08/09/2012) (hereinafter Schweinsberg).
Schweinsberg discloses cosmetic products for keratin fibers containing, in a cosmetic carrier in the form of a dispersed system, at least one modified starch (abs); at least one polymeric thickening agents including sclerotium gum and hydroxypropyl starch phosphate ([0290]) in amounts of 0.5-20 wt. % ([0292]); and care-providing substances such as cationic surfactants, including amidoamine types ([0270]).
Schweinsberg discloses a hair cosmetic comprising a mixture of: sclerotium gum (i.e. claimed microbial polysaccharide of claim 31) and hydroxypropyl starch phosphate (i.e. claimed modified starch of claim 32) ([0290]) and a cationic surfactant as a care-providing substance ([0270}) in a cosmetic carrier (abs). Schweinsberg does not disclose wherein the hair cosmetic must comprise silicones or quaternary ammoniums. Together these would provide a hair cosmetic composition as instantly claimed.
The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination 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 claim 19 reciting in the preamble wherein the composition is a rinse-out conditioning hair cosmetic composition, this is merely a recitation of the intended use of the composition. Since the product of the prior art comprises substantially the same active ingredients as the claimed invention (i.e. a mixture of microbial polysaccharide, modified starch, and cationic surfactant), the composition of the prior art would be usable as a rinse-out conditioning composition, whether the prior art recognizes such use or not. See MPEP § 2111.02. Moreover, Schweinsberg further discloses that in a particular embodiment, the cosmetic product is removable from keratinic fibers by washing ([0287]). Thus it would have been obvious to one of ordinary skill in the art that the product of Schweinsberg is suitable as a rinse-out composition. Finally, in any case, since Schweinsberg discloses cosmetic products for keratin fibers, rinsing out such products from keratin fibers (e.g., via hair washing) would have been obvious.
Regarding claims 19 and 27 reciting various amounts of the at least one modified starch, the claimed amounts (i.e. 1-5% wt., or 2-4.5% wt., respectively) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. 0.5-20% wt.). 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).
Regarding claim 20, Schweinsberg discloses wherein the carrier includes a water-containing cosmetic carrier (i.e. aqueous) ([0015]). Schweinsberg does not explicitly disclose an amount of water. However, it would have taken no more than the relative skill of one of ordinary skill in the art to have arrived at the claimed amount of water (i.e. at least 60% by weight) through routine experimentation based on the amount of carrier desired. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP § 2144.05(II)(A).
Regarding claim 21, Schweinsberg does not wherein the hair cosmetic must comprise additional fatty substances.
Regarding claim 22, Schweinsberg does not explicitly disclose a claimed dynamic viscosity range. However, since the cosmetic product of Schweinsberg comprises substantially the same active ingredients (i.e. sclerotium gum as a microbial polysaccharide; hydroxypropyl starch phosphate as a modified starch; and a cationic surfactant, in a cosmetic carrier) in about the same amounts, one of ordinary skill in the art would reasonably conclude the cosmetic product of Schweinsberg to reasonably possess the same properties as the claimed invention, such as a dynamic viscosity, measured at 22° C. by rotary viscometer at a shear rate of 17.7 s-1, of between 1,200 and 4,000 Pa·s.
Regarding claim 23, Schweinsberg does not disclose wherein the hair cosmetic must comprise anionic or nonionic surfactants.
Regarding claim 24, Schweinsberg further discloses wherein the cosmetic carrier contains active substances ([0015]).
Regarding claims 25 and 26, Schweinsberg further discloses wherein the cosmetic carrier further comprises glycerol ([0171]).
Regarding claims 28-29 reciting various amounts of the at least one microbial polysaccharide, the claimed amounts (i.e. 0.1-0.5% wt., or 2-4.5% wt., respectively) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. 0.5-20% wt.). 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).
Regarding claim 30, Schweinsberg does not explicitly disclose an amount of cationic surfactant. However, since cationic surfactants are care-providing substances, it would have taken no more than the relative skill of one of ordinary skill in the art to have arrived at the claimed amount of cationic surfactant (i.e. 1-4% wt.) through routine experimentation based on the level of care desired. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05(II)(A).
Regarding claim 34, Schweinsberg does not disclose wherein the hair cosmetic must comprise silanes.
Regarding claim 35, Schweinsberg further discloses an embodiment wherein the cosmetic product comprises an additional oil phase in an amount of 0.05 wt.% to 25 wt. % ([0214]). As such, the claimed amount (i.e. lower than or equal to 1% by weight) of fatty substances would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. 0.05-25% wt.). 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).
Regarding claims 36-37, Schweinsberg further discloses wherein the product is applied to hair after the hair strands were washed with a detergent solution (i.e. shampoo) ([0362]).
Response to Arguments
Applicant mainly asserts Schweinsberg fails to teach any compositions suitable as a rinse-out conditioning composition and none of the Schweinsberg compositions address or contemplate any important properties for rinse-out conditioning compositions, such as hair detangling, scalp care and easy rinsing properties.
The Examiner does not find the Applicant’s assertion to be persuasive. The recitation in the preamble wherein the composition is a “rinse-out conditioning hair cosmetic composition” is merely a recitation of the intended use of the composition. Since the composition of the prior art comprises substantially the same active ingredients as the claimed invention (i.e. a mixture of microbial polysaccharide, modified starch, and cationic surfactant), the composition of the prior art would be usable as a rinse-out conditioning composition, whether the prior art recognizes such use or not. Moreover, as discussed in the rejection above, Schweinsberg discloses an embodiment wherein the cosmetic product is removable from the hair by washing ([0287]). Thus Schweinsberg discloses or at least suggests wherein the cosmetic product is suitable as a rinse-out composition and Applicant’s assertion is unpersuasive.
Applicant further asserts that Schweinsberg teaches away from the claimed combination because it discloses that cationic surfactants negatively affect the stability of the hair styling composition and are, therefore, preferably omitted, at ¶ 0270. Therefore, a person of ordinary skill in the art seeking a stable, rinse-out conditioning composition would not have been motivated by Schweinsberg to include a cationic surfactant. Similarly, Applicant asserts that Schweinsberg does not provide any teaching, suggestion or motivation to exclude quaternary ammoniums since it teaches them as a care substance.
The Examiner does not find the Applicant’s argument to be persuasive. Schweinsberg does not teach away from the claimed combination because disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123(II). In this instant case, ¶ 0270 of Schweinsberg discusses the selection of cationic surfactants as a care-providing substance. Thus Schweinsberg does not teach wherein the cosmetic product cannot contain a cationic surfactant. Similarly, Schweinsberg does not disclose wherein quaternary ammoniums are a required substance in the cosmetic product. Thus Schweinsberg discloses wherein the product may be produced without quaternary ammoniums. As such, Applicant’s assertions are unpersuasive.
Applicant also mainly asserts the claimed compositions are directed to rinse-out conditioning and therefore must provide a very different balance of properties, including conditioning benefit, ease of distribution, and easy rinsability. Thus, the claimed composition is not merely an arbitrary selection of ingredients from Schweinsberg, but a combination directed to a different functional objective that Schweinsberg neither contemplates or suggests. Therefore one of ordinary skill in the art would not have been motivated to select the specific combination as instantly claimed.
The Examiner does not find the Applicant’s assertion to be persuasive. Because Schweinsberg discloses a product wherein elements of the instant claims may be included, one of ordinary skill in the art would have had a reasonable expectation of success in incorporating these elements. As supported by MPEP § 2144.06(I), combining known ingredients for their known functions is generally obvious. Moreover, it is further noted that the features upon which applicant relies (i.e., conditioning benefit, ease of distribution, and easy rinsability) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See MPEP § 2111.01. Finally, it is also noted that the instant claims are directed to a composition. Where the components of the composition are taught by the prior art, as long as the component is present in the composition made obvious, there is a reasonable expectation that the functional recitations regarding such a composition are also met, given that the function of compositions is a product of the composition’s structure. In other words, the component need not be included for the same purpose as Applicant’s reasoning. As such, Applicant’s assertion is unpersuasive.
Applicant asserts that the claimed range of 1 and 5% by weight of a modified starch or starches is critical, and that the claimed combination achieves the unexpected result of a composition suitable for use as a rinse-out conditioning composition, without silicones and quaternary ammoniums, having the properties of conditioning, distribution over hair, and rinsability. Applicant asserts the replacement of silicones and quaternary ammoniums, without loss of performance, would not have been expected.
The Examiner does not find the Applicant’s argument to be persuasive. Applicant’s assertions are, without factual support, opinion with conclusory statements. Conclusory statements, unsupported by objective factual evidence, were not found to be of substantial evidentiary value. See MPEP § 716.01(c). Applicant has not provided any showings comparing the claimed ranges with amounts outside of the claimed ranges and showing that the claimed ranges result in superior properties not seen with amounts outside of the claimed ranges. Thus, Applicant has not provided objective support that the claimed ranges are critical and the assertion is unpersuasive.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (US 2012/0201774 A1, 08/09/2012) (hereinafter Schweinsberg) in view of Rughani et al. (US 2018/0280267 A1, 10/04/2018) (hereinafter Rughani).
The disclosure of Schweinsberg has been discussed in detail above, and differs from the instant claim insofar as not explicitly disclosing wherein the cationic surfactant of the amidoamine type comprises behenamidopropyl dimethylamine.
However, Rughani discloses one or more hair treatment compositions comprising cationic surfactants ([0138]) including behenamidopropyldimethylamine ([0145]).
Schweinsberg discloses a cosmetic product for treating hair comprising a cationic surfactant. Accordingly, it would have been obvious to one of ordinary skill in the art to have included behenamidopropyldimethylamine in the product of Schweinsberg, since it is a known and effective cationic surfactant suitable for hair treatment products as taught by Rughani.
Response to Arguments
Applicant does not present specific arguments with regard to Schweinsberg and Rughani.
Since the Examiner has discussed Schweinsberg above, this rejection is maintained.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sun et al. (US 2018/0344619 A1, 12/06/2018), directed to compositions comprising an organic compound B) and thickeners.
Bendejacq et al. (US 2012/0021025 A1, 1/26/2016), directed to aqueous compositions as hair treatment comprising cationic surfactant and rheology modifiers.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SAHANA 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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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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