FINAL 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 .
Status of the Claims
This action is in response to papers filed 04/27/2026 in which claims 2 and 9-12 were canceled; and claim 1 was amended. All the amendments have been thoroughly reviewed and entered.
Claims 1, 3-8 and 13-24 are under examination.
Modified Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-8 and 13-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 introduces new matter as the claim recite the limitation: “a sulfate-free anionic surfactant selected from the group consisting of sarcosinates, sulfosuccinates, and isethionates or mixtures thereof.” There is no support in the specification for this limitation.
Applicant asserted that:
“[s]upport for this amendment is found in the specification at page 12, lines 6-7 disclosing sodium lauryl sarcosinate, sodium lauroyl sarcosinate, lauryl sarcosine, cocoyl sarcosine, ammonium cocoyl sulfate; page 13, lines 9-16 disclosing anionic alkyl and alkyl ether sulfosuccinates and/or dialkyl and dialkyl ether sulfosuccinates and mixtures thereof. The dialkyl and dialkyl ether sulfosuccinates may be a C6- 15 linear or branched dialkyl or dialkyl ether sulfosuccinate. The alkyl moieties may be symmetrical (i.e., the same alkyl moieties) or asymmetrical (i.e., different alkyl moieties). Nonlimiting examples include: disodium lauryl sulfosuccinate, disodium laureth sulfosuccinate, sodium bistridecyl sulfosuccinate, sodium dioctyl sulfosuccinate, sodium dihexyl sulfosuccinate, sodium dicyclohexyl sulfosuccinate, sodium diamyl sulfosuccinate, sodium diisobutyl sulfosuccinate, linear bis(tridecyl) sulfosuccinate and mixtures thereof. This disclosure includes alkyl chain of less than C12: sodium dioctyl sulfosuccinate, sodium dihexyl sulfosuccinate and one that's short and branched: sodium diisobutyl sulfosuccinate and sodium diamyl sulfosuccinate. The dialkyl and dialkyl ether sulfosuccinates may be a C6-15 linear or branched dialkyl or dialkyl ether sulfosuccinate which provides support for a branched alkyl chain which is sulfate free. Additionally, the specification describes "the reaction products of fatty acids esterified with isethionic acid and neutralized with sodium hydroxide" (page 12, lines 8-9) and specifically "sodium cocoyl isethionate" (page 12, line 28) as suitable anionic surfactants, which are sulfate- free.” (Remarks filed 04/27/2026, page 5).
However, after a thorough review of said page 12, lines 6-9 and 28, page 13, lines 9-16, as well as, throughout the specification, there appeared to be no support the entire genus/subgenus of sarcosinates, sulfosuccinates, and isethionates as sulfate-free anionic surfactant. It is noted that page 12, lines 6-9 of the specification only recites the species of sodium lauryl sarcosinate, sodium lauroyl sarcosinate, and lauryl sarcosine, cocoyl sarcosine. The disclosure of 4 species of sodium lauryl sarcosinate, sodium lauroyl sarcosinate, and lauryl sarcosine, cocoyl sarcosine is not support for the entire genus/subgenus of sarcosinate anionic surfactants. This is because the genus/subgenus of sarcosinate anionic surfactants also include but not limited to sodium oleoyl sarcosinate and sodium cocoyl sarcosinate, which are not disclosed or supported in Applicant’s specification.
It is noted that page 12, lines 8-9 does not describe “the reaction products of fatty acids esterified with isethionic acid and neutralized with sodium hydroxide” as alleged by Applicant. Rather, page 12, lines 8-9 of the specification disclose “sodium cocoyl sulfate, sodium lauroyl sulfate, potassium cocoyl sulfate, potassium lauryl sulfate, triethanolamine lauryl sulfate, triethanolamine lauryl sulfate, monoethanolamine cocoyl sulfate,” which has no pertinence sulfate-free anionic surfactants, much less the genus/subgenus of sarcosinates, sulfosuccinates, and isethionates.
It is noted that page 12, line 28 does not describe/disclose “sodium cocoyl isethionate.” Rather, page 12, line 28 of the specification discloses “2-pentyl-1-octanol, 2-pentyl-1-heptanol, and those sold under the tradenames LIAL® (Sasol), ISALCHEM® (Sasol),” which has no pertinence sulfate-free anionic surfactants, much less the genus/subgenus of sarcosinates, sulfosuccinates, and isethionates. It is further noted that, “sodium cocoyl isethionate” is actually disclosed on page 12, line 11 of the specification. However, it is noted that the disclosure of one species of “sodium cocoyl isethionate,” is not support for the claimed genus/subgenus of “isethionates,” as said claimed genus/subgenus of “isethionates,” include but not limited to sodium butyl isethionate, sodium caprylol isethionate, sodium lauroyl isethionate, sodium palmitoyl isethionate, and sodium cocoamidopropyl isethionate,” which are not disclosed or supported in Applicant’s specification.
While page 13, lines 9-16 of the specification discloses:
“anionic alkyl and alkyl ether sulfosuccinates and/or dialkyl and dialkyl ether sulfosuccinates and mixtures thereof. The dialkyl and dialkyl ether sulfosuccinates may be a C6-15 linear or branched dialkyl or dialkyl ether sulfosuccinate. The alkyl moieties may be symmetrical (i.e., the same alkyl moieties) or asymmetrical (i.e., different alkyl moieties). Nonlimiting examples include: disodium lauryl sulfosuccinate, disodium laureth sulfosuccinate, sodium bistridecyl sulfosuccinate, sodium dioctyl sulfosuccinate, sodium dihexyl sulfosuccinate, sodium dicyclohexyl sulfosuccinate, sodium diamyl sulfosuccinate, sodium diisobutyl sulfosuccinate, linear bis(tridecyl) sulfosuccinate and mixtures thereof,” this is not support for the genus/subgenus of “sulfosuccinates,” which also include but not limited to, amide chains sulfosuccinate such as sodium cocamidopropyl sulfosuccinate, which is not disclosed or supported in Applicant’s specification.
Thus, the specification does not provide support for the broad breath of the genus/subgenus of sarcosinates, sulfosuccinates, and isethionates. As such, Applicant does not have possession of the broadly claimed “a sulfate-free anionic surfactant selected from the group consisting of sarcosinates, sulfosuccinates, and isethionates or mixtures thereof.”
Claims 3-8 and 13-24 are also rejected as they depend directly or indirectly from claim 1, thereby also containing the new matter material.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 1 as amended at the time of filing of the instant application.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Claim 1, as currently amended, addresses the written description rejection by clearly identifying supported classes of sulfate-free anionic surfactants. The specification explicitly discloses sulfosuccinate surfactants as being sulfate-free, particularly in the context of branched alkyl chains or alkyl chains less than C-12. The specification explicitly discloses sarcosinates, specifically sodium lauryl sarcosinate, sodium lauroyl sarcosinate, lauryl sarcosine, cocoyl sarcosine, ammonium cocoyl sulfate. Additionally, the specification describes "the reaction products of fatty acids esterified with isethionic acid and neutralized with sodium hydroxide" (page 12, lines 8-9) and specifically "sodium cocoyl isethionate" (page 12, line 28) as suitable anionic surfactants, which are known to be sulfate-free. By limiting the sulfate-free anionic surfactant to these explicitly disclosed classes, Applicant demonstrates possession of the claimed invention at the time of filing, thereby overcoming the rejection under 35 U.S.C. § 112(a).” (Remarks, page 7).
In response, the Examiner disagree. Applicant does not have possession of the broadly claimed “a sulfate-free anionic surfactant selected from the group consisting of sarcosinates, sulfosuccinates, and isethionates or mixtures thereof,” for the reasons discussed in the modified 112(a) new matter rejection on pages 3-6 of this office action, said pages being incorporated herein in its entirety.
As a result, it is maintained that the disclosure does not reasonably convey that the inventor had possession of the subject matter of claim 1 as amended at the time of filing of the instant application.
Maintained Rejections
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-8 and 13-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11291616.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘616 significantly overlap with the subject matter of the instant claims, i.e., a composition comprising (a) from about 14% to about 40% of one or more surfactants wherein one or more of the surfactants is an anionic surfactant or combinations of anionic surfactants; and from about 0.1% to about 10% of one or more surfactant soluble agents, wherein when the composition is diluted to about 1% surfactant concentration, it has a ratio of surfactant diffusion coefficient to soluble agent diffusion coefficient of greater than 1.2.
While the claims from the instant application define the surfactant soluble agents as having a ClogP greater than 3.0, it is however, noted that the instant specification further defines the surfactant soluble agents as encompassing anti-dandruff agents such as piroctone olamine, and azoles such as climbazole (instant specification, pages 6-8), which are the same surfactant soluble agents as recited in claims 6-9 of the Patent ‘616.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over U.S. Patent No. 11291616.
Claims 1, 3-8 and 13-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-22 of copending Application No. 17/694,270.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application '270 significantly overlap with the subject matter of the instant claims, i.e., a composition comprising (a) from about 14% to about 40% of one or more surfactants wherein one or more of the surfactants is an anionic surfactant or combinations of anionic surfactants; and from about 0.1% to about 10% of one or more surfactant soluble agents, wherein when the composition is diluted to about 1% surfactant concentration, it has a ratio of surfactant diffusion coefficient to soluble agent diffusion coefficient of greater than 1.2.
While the claims from the instant application define the surfactant soluble agents as having a ClogP greater than 3.0, it is however, noted that the instant specification further defines the surfactant soluble agents as encompassing anti-dandruff agents such as piroctone olamine, and azoles such as climbazole (instant specification, pages 6-8), which are the same surfactant soluble agents as recited in claims 6-9 of the copending application ‘270.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over copending Application No.: 17/694,270.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Applicant argues by requesting the double patenting rejections be held in abeyance until the current claims are in allowable form and the double patenting rejection is the only remaining rejection. (Remarks, page 8)
In response, it is noted that Applicant's request to hold the double patenting rejection in abeyance is not a proper response because a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP § 37 CFR 1.111(b) and 714.02).
Accordingly, the double patenting rejections are maintained for reasons of record and pending the filing of a terminal disclaimer.
New Rejections
Necessitated by Applicant’s Claim Amendments
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1, 3-7, 13-16, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cetti et al (29 July 2009; US 2009/0029900 A1) in view of Soffin et al (9 November 2006; US 2006/0252662 A1; cited in IDS filed 08/27/2024).
Regarding claims 1 and 3-7, Cetti teaches a personal care composition comprising from about 2% to about 40% of a surfactant component, and from about 0.005% to about 10% of a partitioned perfume composition having a clogP of at least 3 ([0033]-[0040] and [0068]-[0072]). Cetti teaches sodium lauryl sarcosinate, sodium lauroyl sarcosinate, lauryl sarcosine, and cocoyl sarcosine can be selected as one of the preferred anionic surfactants ([0072]). Cetti provided examples of compositions containing 17% of anionic surfactants (8.5% of sodium trideceth-3 sulfate and 8.5% sodium lauryl sulfate) and 1% perfume formulation (Tables 1-6 and 12). Cetti also provided an example of a composition containing about 15% of anionic surfactants (9.5% sodium lauryl sulfate and 55.7 % sodium laureth sulfate) and 1% perfume formulation (Table 8).
However, Cetti does not teach wherein at least one of the surfactants has an alkyl chain of less than C-12 or branched alkyl chain of claim 1.
Regarding the at least one of the surfactants has an alkyl chain of less than C-12 or branched alkyl chain of claim 1, Soffin teaches a personal care composition comprising a structured surfactant component comprising at least one branched anionic surfactant, wherein the at least one branched surfactant include branched anionic primary sulfate such as 4-methyl undecyl sulfate, 5-methyl undecyl sulfate, 7-methyl undecyl sulfate, 8-methyl undecyl sulfate, 7-methyl dodecyl sulfate, 8-methyl-dodecyl sulfate, 9-methyl dodecyl sulfate, 4.5-dimethyl decyl sulfate, 6,9-dimethyl decyl sulfate, 6,9-dimethyl undecyl sulfate, 5-methyl-8-ethyl undecyl sulfate, 9-methyl undecyl sulfate, 5,6,8-trimethyl decyl sulfate, 2-methyl dodecyl sulfate, and 2-methyl undecyl sulfate (Abstract; [0010], [0011], [0027], [0033], [0037], [0041], [0042], [0044] and [0046]). Soffin teaches sodium lauryl sarcosinate, sodium lauroyl sarcosinate, lauryl sarcosine, and cocoyl sarcosine can be selected as one of the preferred anionic surfactants ([0033]).
It would have been obvious to one of ordinary skill in the art to include a branched anionic primary sulfate such as 4-methyl undecyl sulfate, 5-methyl undecyl sulfate, 7-methyl undecyl sulfate, 8-methyl undecyl sulfate, 7-methyl dodecyl sulfate, 8-methyl-dodecyl sulfate, 9-methyl dodecyl sulfate, 4.5-dimethyl decyl sulfate, 6,9-dimethyl decyl sulfate, 6,9-dimethyl undecyl sulfate, 5-methyl-8-ethyl undecyl sulfate, 9-methyl undecyl sulfate, 5,6,8-trimethyl decyl sulfate, 2-methyl dodecyl sulfate, or 2-methyl undecyl sulfate as one of the anionic surfactants in the personal care composition of Cetti, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because as discussed above, Soffin provided the guidance to do so by teaching that branched anionic surfactants such as 4-methyl undecyl sulfate, 5-methyl undecyl sulfate, 7-methyl undecyl sulfate, 8-methyl undecyl sulfate, 7-methyl dodecyl sulfate, 8-methyl-dodecyl sulfate, 9-methyl dodecyl sulfate, 4.5-dimethyl decyl sulfate, 6,9-dimethyl decyl sulfate, 6,9-dimethyl undecyl sulfate, 5-methyl-8-ethyl undecyl sulfate, 9-methyl undecyl sulfate, 5,6,8-trimethyl decyl sulfate, 2-methyl dodecyl sulfate, and 2-methyl undecyl sulfate are suitable anionic surfactants that can be included as part of the surfactant component of the personal care composition Cetti. Thus, [t]he 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). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.
It would also have been obvious to one of ordinary skill in the art before the effective filing date of Applicant's invention to utilize the teachings from Cetti in view of Soffin to produce applicant’s claimed invention with a reasonable expectation that the compositions of the prior art would function similarly to exhibit the diffusion coefficient ratios (equal to or greater than about 1.4/1.5) of the instant claims although the prior art is silent to these characteristics because as discussed above, Cetti in view of Soffin teaches the same structures of anionic surfactants and surfactant soluble agents, as well as, overlapping concentration ranges of the surfactants and surfactant soluble agents. Furthermore, Cetti also teaches that the surfactants as manufactured in the final product are typically diluted ([0022]). Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when 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 similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). As such, it would have been customary for an ordinary artisan provided the guidance from Cetti to determine the optimal concentrations of surfactants and surfactants soluble agents to achieve the desired diffusion coefficient ratio. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of concentrations of surfactants and surfactants soluble agents would have been obvious before the effective filing date of applicant's invention.
It is also noted that "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 13, Cetti teaches the surfactant component further contains amphoteric surfactants, nonionic surfactant, zwitterionic surfactants, or mixtures thereof, wherein the amount of the surfactant component in the composition is from 2% to about 40% ([0068]-[0076]). Cetti also provide examples of compositions containing sodium lauroamphoacetate (an amphoteric surfactant) in an amount of 5% (Tables 1-6, 8 and 12).
Regarding claim 14, Cetti teaches the composition further contains cationic polymers ([0086]).
Regarding claims 15 and 16, Cetti teaches the composition further contains conditioning agent such as polysiloxanes ([0082] and [0086]).
Regarding claim 24, Cetti teaches the composition is extrudable or dispensable from a single chamber package and is topically applied to the skin or hair ([0015]). Thus, application to the hair would involve some form of applicator such as hand or pouring/spraying the composition onto the hair or skin.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cetti et al (29 July 2009; US 2009/0029900 A1) in view of Soffin et al (9 November 2006; US 2006/0252662 A1), as applied to claims 1 and 6 above, and further in view of Frantz et al (25 September 2003/0180246 A1).
The personal care composition of claims 1 and 6 is discussed above.
However, Cetti and Soffin do not teach the hair health active of claim 8. Regarding claim 8, Frantz teaches a personal care composition comprising anionic surfactants such as sodium alkyl sulfates and sodium alkyl ether sulfates, amino acids such as histidine, and isostearyl isostearate ([0016]-[0019], [0086] and [0091]). Frantz teaches the composition further contains perfumes ([0117]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention to add histidine and/or isostearyl isostearate in the composition of Cetti and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Frantz teaches that the addition of histidine and/or isostearyl isostearate provides conditioning benefit to the composition when applied to skin or hair ([0086] and [0091]). One of ordinary skill in the art would have reasonable expectation of success of adding histidine and/or isostearyl isostearate in the composition of Cetti because Frantz and Cetti are commonly drawn to a personal care composition for application to the skin or hair comprising anionic surfactants such as sodium alkyl sulfates and sodium alkyl ether sulfates, and perfumes. Thus, “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claims 17-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cetti et al (29 July 2009; US 2009/0029900 A1) in view of Soffin et al (9 November 2006; US 2006/0252662 A1), as applied to claim 1 above, and further in view of Kitko et al (18 June 2009/ US 2009/0155383 A1).
The personal care composition of claim 1 is discussed above.
However, Cetti and Soffin do not teach the scalp health agent of claims 17-19; the composition is dispense as an aerosol foam of claims 20 and 21; the propellant or blowing agent of claim 22; and the dispensed in a pumped foam of claim 23.
Regarding claims 17-23, Kitko teaches a personal care composition comprising anionic surfactants such as undecyl sulfate, sodium lauryl sulfate and sodium laureth sulfate, perfumes, active agents such as zinc pyrithione and selenium sulfide, and menthol ([0014], [0037]-[0042], [0073], [0095], [0098], [0100], [0114], [0129], [0131] and [0141]). Kitko teaches the composition is in the form of a foam and is dispensed from a pump foamer/pump dispenser that can include gas such as propellant to impart mechanism to form the foam ([0016], [0020], [0021], [0138], [0142] and [0145]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of applicant's invention, provided the guidance from Kitko, to add active hair care agents such as zinc pyrithione, selenium sulfide or menthol, as well as, formulating the composition of Cetti to be in the form of a foam dispensed from an aerosol pump dispenser, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Kitko and Cetti are commonly drawn to a personal care composition for application to the skin or hair comprising anionic surfactants such as sodium alkyl sulfates and sodium alkyl ether sulfates, and perfumes. Thus, “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claim is 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 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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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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