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
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 17 Jul 2026 has been entered.
Claims 1-20 remain pending in the application.
Claims 1-12 are amended.
Claims 13-20 are new.
Claims 11 and 12 are withdrawn from further consideration by the examiner, pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention / species.
Claims 1-10 and 13-20 are under consideration to the extent of the elected species, i.e., that the foaming surfactant is cocamidopropyl betaine, the fatty alcohol is cetearyl alcohol, the solubilizer is PEG-40 hydrogenated castor oil, and the cationic surfactant is cetrimonium chloride.
Objections Withdrawn
Objections to the Claims
The claim objections set forth in the Non-Final Office Action mailed 24 Mar 2026 are hereby withdrawn in light of applicant’s amendments of the claims.
Rejections Withdrawn
Rejections Pursuant to 35 USC § 103
The rejection of claims 9 and 10 under 35 U.S.C. 103 as being unpatentable over Mustafa et al. (US 2019/0008751, published 10 Jan 2019) is withdrawn in light of applicant' s amendment of the claims requiring additional components, and in favor of the new grounds of rejection set forth below.
The rejection of claims 5 and 8 under 35 U.S.C. 103 as being unpatentable over Mustafa et al. (US 2019/0008751, published 10 Jan 2019) in view of Paul et al. (CA 2,268,467, published 04/08/1999) and Tae (KR 20100104257A, published 29 Sep 2010) is withdrawn in light of applicant' s amendment of the claims requiring additional components, and in favor of the new grounds of rejection set forth below.
Rejections Maintained – in modified form
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.
The rejection below is updated to address new claims 14-18.
Claims 1-4, 6, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Mustafa et al. (US 2019/0008751, published 10 Jan 2019) as applied to claims 9 and 10 above and in view of Paul et al. (CA 2,268,467, published 04/08/1999) and Tae (KR 20100104257A, published 29 Sep 2010).
Mustafa teaches aerosol dry shampoo mousse compositions for hair ([0002], title). Mustafa teaches that mousse refers to an aerosolized creamy foam ([0014]), rendering obvious the form of a dry shampoo spray foam product. Mustafa teaches that it is desirable for dry shampoo products to have a satisfactory capacity to absorb oil, without a heavy feel or a tendency to form clumps of particles ([0004]). Mustafa teaches the compositions comprise a propellant ([0010]) in amounts such as from about 4 to about 15 wt% ([0013]), rendering obvious the claimed propellant. Mustafa teaches the propellant may be a combination of isobutane and propane ([0011]) and the propane is from about 20-40 wt% ([0012]), which thus renders obvious the isobutane from 60-80 wt% in the combination, thereby rendering obvious claims 15 and 16. Mustafa teaches that the compositions comprise sebum-absorbing powder that is a starch, such as tapioca and rice starch, which absorbs the oily, waxy substance called sebum ([0015], [0016]), rendering obvious the inclusion of an oil absorbent and the rice/tapioca starch of claim 14. Mustafa teaches the sebum absorbing powder may be from about 10% to about 50 wt% ([0019]), rendering obvious the amount of oil absorbent of claim 1. Further, the limitation of “about” 10% is understood to allow for percentages less than 10% and the claimed amount of “about 9 wt%” in claim 10 is understood to allow for amounts greater than 9%. Thus, “about 10%” is understood to render obvious “about 9%” as claimed. Mustafa taches the compositions may include about 30 to about 70% water ([0053]), rendering obvious the claimed water. Mustafa teaches the composition may include up to about 45 wt% of one or more volatile alcohols, such as methanol and ethanol ([0055]), rendering obvious the claimed alcohol and claim 17. Mustafa teaches that the compositions may include optional ingredients such as cetearyl alcohol (the elected fatty alcohol), perfumes (rendering obvious a fragrance) ([0060]), and cetrimonium chloride (the elected cationic surfactant) ([0061]). Mustafa teaches optional ingredients are from about 0.01% to about 10% ([0063]), rendering obvious the amount of fatty alcohol, fragrance and cationic surfactant. Mustafa teaches the inclusion of surfactants such as cocamidopropyl betaine ([0044]) from about 0.1 to about 10wt% ([0045]), rendering obvious the elected species foaming surfactant and claim 18.
The aerosol dry shampoo mousse compositions and the components for the compositions described above render obvious the dry shampoo spray foam composition. Mustafa further teaches that the composition is dispensed with an aerosol dispensing system that is not unduly limited and may generally be described as having a container that includes an outlet and is capable of being pressurized, a valve system and an actuator ([0077]).
Mustafa does not teach the valve body orifice size, the vapor tap orifice size and the stem orifice size of the aerosol container. These deficiencies are made up for in the teachings of Paul and Tae.
Paul teaches low volatile organic compound aerosol hair cosmetic compositions comprising starches (abstract). Paul teaches components for the compositions including starch, propellants, water and solvents (page 4 lines 10-13) such as lower alcohols (page 14 lines 20-22). Paul teaches an aerosol container for dispensing the compositions with a 0.013” vapor tap and a 0.013” stem orifice. These sizes render obvious the orifice sizes for the vapor tap orifice and stem orifice of the instant claims.
Tae teaches shampoo for cleaning hair and that can be easily cleaned without rinsing with water (page 1 lines 13-15) and that is an aerosol formulation (page 3 lines 13). Tae teaches the aerosol valve system for delivery has a body orifice diameter of 0.8-1.5 mm (i.e. 0.031” – 0.059”).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have used the aerosol dry shampoo mousse of Mustafa with an aerosol container having a 0.013” vapor tap and a 0.013” stem orifice and a body orifice of 0.8-1.5 mm (i.e. 0.031” – 0.059”). The aerosol compositions of Mustafa are to be dispensed from aerosol dispensing systems that have a valve system, as known from Mustafa. Aerosol hair compositions are additionally known from Paul and Tae and it is known from their teachings that such systems may have a 0.013” vapor tap and a 0.013” stem orifice and a body orifice of 0.8-1.5 mm (i.e. 0.031” – 0.059”). Paul teaches hair compositions with similar components as those of Mustafa, namely a starch, propellants, water and solvents and Tae similarly teaches shampoo that is used without rinsing, providing further connection to the composition type and use of the aerosols of Mustafa. Mustafa does not limit the aerosol dispensing system. As the dimensions described are known orifice sizes for hair related aerosols, one of ordinary skill would have a reasonable expectation of success in dispensing the aerosol composition from an aerosol can with such orifice dimensions.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Response to Arguments
Applicant's arguments filed 17 Jul 2026 have been fully considered but they are not persuasive. Applicant states that Mustafa does not disclose working formulations corresponding to the presently claimed compositions (page 8 of remarks) and that the claimed formulations represent purposeful selections instead of routine or arbitrary selections from broad prior art disclosures (page 9 of remarks). The examiner does not find this persuasive as the rejection was made under 35 U.S.C. 103 which requires that “a patent for a claimed invention may not be obtained… if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been prima facie 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.” “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at ___, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. At, 82 USPQ2d at 1396. While Mustafa may not provide a specific embodiment of the instantly claimed invention, the examiner maintains that the invention as claimed is nonetheless made obvious by the teachings of Mustafa as each of the cited components are known to be suitable for shampoo compositions of Mustafa and it would be obvious to use the components according to their known purpose in the compositions of Mustafa. The examiner notes that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Thus, the selection of the known components as suggested by Mustafa would have been prima facie obvious. The applicant has not pointed to data or a provided a sufficient reason why the combination of claimed components is unexpected sufficiently to overcome the prima facie case of obviousness.
Applicant argues that Mustafa describes broad ranges for numerous formulation variables and does not identify any particular combination as preferred (page 8 of remarks). The examiner again notes that it is not necessary for the Mustafa to embody the components in an invention for the combination of components to be rendered obvious. The examiner further notes that overlapping ranges are understood to render obvious claimed ranges. 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). The applicant argues that Mustafa teaches the sebum absorbing powder from about 10-50% whereas the claimed amount of oil absorbent is from about 8-9% (page 9 of remarks). As noted in the rejection, the claimed amount of “about 9%” is understood to allow for values above strictly 9% and the about 10% of Mustafa includes values below strictly 10%, and thus the about 10% is understood to render obvious about 9%. The examiner additionally notes that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. In the instant case, about 9% and about 10% oil absorbent are expected to have the same absorbent properties.
Applicant argus that Mustafa does not provide teaching that the claimed combination would provide the spray characteristics described in the present application (page 9 of remarks). This is not persuasive as it is not necessary for the art to describe each of the benefits that the applicant may determine for a particular combination in order for the combination itself to be obvious. Applicant is reminded that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). In KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court cautioned that, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103." Id. at 419.
Applicant argues that the references provide no reason to combine the claimed formulation with the claimed valve parameters (page 10 of remarks). The examiner disagrees and notes that Mustafa renders obvious aerosol compositions and use of an aerosol dispensing system and the particular valve parameters claimed are known from Paul and Tae, rendering such parameters as obvious as they are known valve parameters for use in hair related applications. Applicant argues that the claimed combination of valve geometry and formulation characteristics provides a spray foam that may be applied directly to the hair, distributed evenly, and delivered as a thin foam film and points to tables 2-4 for evidence that the propellant and alcohol concentration and valve component dimensions influence spray performance (page 10 of remarks). The examiner again notes that the selection of the individual components, including the valve parameters is prima facie obvious over the applied prior art, even if the art does not describe the same testing and performance results as determined by the applicant. The applicant has not argued for or pointed to anything that would be considered unexpected to overcome the prima facie case of obviousness.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mustafa et al. (US 2019/0008751, published 10 Jan 2019) in view of Paul et al. (CA 2,268,467, published 04/08/1999) and Tae (KR 20100104257A, published 29 Sep 2010) as applied to claims 1-4, 6 and 14-18 above and further in view of Marcon (US 3,967,760, published 06 Jul 1976).
The teachings of Mustafa, Paul and Tae are described supra.
Mustafa, Paul and Tae do not teach a slide lock. This deficiency is made up for in the teachings of Marcon.
Marcon teaches an actuator cap assembly for an aerosol dispenser having a slide surface formed thereon (abstract). Marcon teaches that button actuators are easy to press but may be operated accidentally and Marcon teaches a locking means to reduce the risk of accidental operation of the aerosol, such as by a child (col 1 lines 7-16). Marcon teaches an actuator cap assembly for an aerosol can comprising a body formed with a slide that can be moved between a first position and second position whereby operation of the valve is not possible when the carriage is in the second position (col 1 lines 17-29).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have incorporated a slide mechanism for the aerosol can as a means of locking and preventing accidental spray. Slide mechanisms for locking the can are known from Macron, providing a reasonable expectation of success for incorporating such a mechanism and it would be desirable to one of ordinary skill to have a sliding mechanism for locking the spray so as to avoid accidental spray, such as by a child.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
New Grounds of Rejections
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.
Claims 5, 8-10, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mustafa et al. (US 2019/0008751, published 10 Jan 2019) in view of Paul et al. (CA 2,268,467, published 04/08/1999) and Tae (KR 20100104257A, published 29 Sep 2010) as applied to claims 1-4, 6, and 14-18 above and further in view of Richardson (US 2020/0390666, published 17 Dec 2020) and Goren et al. (US 2016/0220465, published 04 Aug 2016).
The teachings of Mustafa, Paul, and Tae are described supra.
Mustafa further teaches that the compositions may comprise an anti-caking agent and surfactant ([0014], [0047]). Tae further teaches including pH adjusters (page 1 line 23, page 4 line 1).
Mustafa, Paul, and Tae do not teach a pH adjuster such as lactic acid or the solubilizer PEG-40 hydrogenated castor oil. These deficiencies are made up for in the teachings of Richardson and Goren.
Richardson teaches a rinse free shampoo composition (title) that comprises PEG-40 hydrogenated castor oil which functions as an anti-caking agent, surfactant, solubilizer, emulsifier, emollient and/or cleansing agent and it present in an amount of about 0.01 to about 1 weight percent ([0058]).
Goren teaches an aerosol composition comprising a dry shampoo and a propellant ([0006]). Goren teaches adjusting the pH to allow for dissolution of all composition components ([0030]). Goren teaches an acid at an apparent pH between 5.0 and 7.0 and Goren teaches suitable acids for adjusting pH include lactic acid ([0025], [0037], claim 8).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have included PEG-40 hydrogentated castor oil at about 0.01 to 1 wt% and lactic acid in the shampoo composition. The addition of optional ingredients and specifically anticaking agents and surfactants are known from Mustafa and PEG-40 hydrogenated castor oil is known from Richardson as an anti-caking agent and surfactant suitable for use with rinse free shampoo compositions in amounts from 0.01 to 1 wt%. Similarly, it is known from Tae to include ph adjusters in hair compositions and adjusting the pH of shampoo compositions with acids such as lactic acid is known from Goren. The inclusion of PEG-40 hydrogenated castor oil and lactic acid thus merely represent the inclusion of additional ingredients according to their known use and one would have a reasonable expectation of success as they are known to be suitable for shampoo related compositions. Regarding the amount of pH adjuster lactic acid, it would have been obvious to determine the optimal amount to include by a process of routine experimentation. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Optional ingredients are included in the compositions of Mustafa from about 0.01 to about 10% and Goren indicates that the apparent pH of the solution is from 5-7. It would be obvious to one of ordinary skill would adjust the amount of lactic acid included such that the pH of the shampoo composition is at an optimal value such as between 5-7.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mustafa et al. (US 2019/0008751, published 10 Jan 2019) in view of Paul et al. (CA 2,268,467, published 04/08/1999) and Tae (KR 20100104257A, published 29 Sep 2010) as applied to claims 1-4, 6, and 14-18 above and further in view of Spitzer et al. (US 4,116,370, published 26 Sep 1978)
The teachigns of Mustafa, Paul, and Tae are described supra.
Mustafa, Paul, and Tae do not teach the absence of a vapor trap. This deficiency is made up for in the teachings of Spitzer.
Spitzer teaches that conventional vapor taps pose a fire hazard when aerosol containers are tipped from the upright position to the horizontal or inverted position (col 3 lines 12-15).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have the container wherein the vapor tap is absent. Mustafa does not require vapor taps and vapor taps are known to pose a fire hazard when aerosol containers are tipped from the upright position to the horizontal or inverted position, and thus it would be obvious to one of ordinary skill to not include a vapor tap for the increased risk as a fire hazard.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Conclusion
No claims are allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
