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 .
Receipt is acknowledged for preliminary amendments filed 02/10/2024 and 03/06/2024 and IDS filed 11/28/2025, 10/14/2024, 09/16/2024 and 09/13/2024.
On 02/10/2024, claims 1 and 3-20 are amended.
On 03/06/2024, claims 1-18 are amended.
Claims 1-20 are pending.
Priority
This application is a 371 of PCT/US22/40009 filed 08/10/2022 and which claims benefit of 63/231,717 filed 08/10/2021.
Information Disclosure Statement
The IDS filed 11/28/2025, 10/14/2024, 09/16/2024 and 09/13/2024 have been considered by the examiner.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song et al., (US 20200405587 A1).
Song discloses hair care composition in the form of shampoo (see the whole document with emphasis on paragraphs [0162], [0005], [0007], [0254]); the composition is a homogeneous, smooth and creamy (paragraph [0021]); the composition comprises one or more surfactants that are non-ionic surfactant and alkyl polyglucoside such as decyl glucoside/alkyl glucoside are identified as the non-ionic surfactant (paragraphs [0145], [0147]), and the nonionic alkyl glucoside or decyl glucoside is present from about 0 to about 25% or from about 0.1 to about 15% (paragraphs [0145]-[0150]) overlapping the claimed range of greater than 15% to less than 45%; filtered water/filtered deionized water (paragraph [0357]), optional ingredients present at from about 1 wt% to about 25 wt% or from about 3 wt% to about 20 wt% or from about 5 wt% to about 15 wt% plasticizer (paragraph [0236]) glycerin, propylene glycol, polyethylene glycol, polyesters, dimethicone copolyols (paragraphs [0236]-[0241]) with polyethylene glycol meeting the co-solvent; other suitable plasticizers are citric acid, salicylic acid (paragraph [0242]); humectants, moisturizers, conditioning agents, antimicrobial agents are other optional ingredients (paragraphs [0247], [0248]). The composition also contains chelants/chelating agent (paragraph [0068], [0069]) and EDTA have been used in the examples (see Tables 1-4), 0.46% in Example A and 0.50 in Example B, which reads on up to about 1%. A pH adjusting agent is present in the composition (paragraph [0271]) with the presence of citric acid and salicylic acid meeting the limitation of the pH adjusting agents. Polyquaternium, which meets the limitation of antimicrobial agent is used in examples A and B at 0.60%, 0.49% in example C and 0.51 in Example D.
Thus for claims 1-4, 11, 16 and 17, the composition of Song comprising nonionic surfactant alkyl glucoside/decyl glucoside at less than or equal to 25% and meeting the limitation of alkyl glucoside of claims 1 and 16 and 17and solubilizing and clarifying agent of claims 11 and 16, filtered water, chelating agent EDTA at 0.5%, citric acid or salicylic acid pH adjusting agent, glycerin/humectant at 1 wt% or 3 wt%, polyethylene glycol meeting the limitation of co-solvent at 5-15 wt%, and antimicrobial agent at up to about 1% teaches the composition of claims 1-4 and 11.
Song does not teach the exact amounts for the components of the composition. For example, the disclosed amount of the alkyl glucoside at from about 0 to about 25% or from about 0.1 to about 15% overlap the claimed range of greater than 15% and less than 45 % or greater than about 20% to up to 35 wt%. However, before the effective date of the invention, the ordinary skilled artisan, guided by the teachings of Song would use the components of the composition of Song in amounts that would lead to a composition that would be predictable as an effective hair and scalp shampoo. The optimization of the composition of Song falls within the findings in Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382, where it was determined that “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”
It has been settled that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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), In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
The claims are directed to compositions. “For treatment against one or more parasitic insects …skin” is the intended use pf the composition. In the instant case the body of the claims define the invention the intended use defines the property inherent in the composition of Song.
For claim 5, the composition of Song is capable of cleaning and conditioning one or more of hair, the intended use of the composition.
For claim 6, the EDTA of Song meets the limitation of the claim.
Claims 7 and 9 are composition claims. Applying the composition of Song to hair or skin would produce effect inherent to the composition of Song. Thus, for claim 7, the composition of Song is capable of the recited intended use which is inherent to the composition of Song.
For claim 8, the polyethylene glycol of Song meets the requirement of the claim.
For claim 10, the citric acid and salicylic acid of Song meet the pH balancing agents of the claim and the artisan would add amounts of the acid that would produce the desired pH.
For claim 12, the composition further contains sodium methyl cocoyl taurate (paragraph [0142]), the requirement of the claim is met.
For claim 13, EDTA of Song meets the claim.
For claim 14, providing the composition to one or more of hair is the process of using the composition of claim 1. The shampoo composition of Song is capable of being applied to one or more of hair and skin.
For claim 15, Song teaches filtered water which in Table 3 is QSd.
Claim 18 is the intended use of the composition of claims 16 and 17 and the composition of Song is capable of the intended use.
For claim 19, the composition of Song further comprises optional ingredients such as perfumes or fragrances or emollients and perfume broadly reads on essential oil.
Therefore, Song renders claims 1-19 prima facie obvious.
Claim(s) 16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song et al., (US 20200405587 A1) in view of Chisholm et al., (US 20120317733 A1).
Song has been described above to render claim 16 prima facie obvious.
Claim 20 depends on claim 16.
Song teaches its composition to comprise enzyme (paragraphs [0069], [0247]). In paragraph [0208], Song teaches that cationically modified starch may be incorporated into the composition in the form of hydrolyzed starch by acid, enzyme or alkaline degradation and oxidized starch from peroxide or peracid, hypochlorite, alkaline or any other oxidizing agent.
Song differs from claim 20 by not teaching any of the enzymes of claim 20. However, Chisholm teaches treating hair with peracetic acid and catalase followed by treating with protease (paragraphs [0004], [0005]). Therefore, before the effective date of the invention, the artisan guided by the teachings of Song and Chisholm would use the specific enzyme of catalase and/or protease to predictably treat hair.
Thus song in combination with Chisholm renders claim 20 prima facie obvious.
Other Matters: Claim 6 has used “HEDTA” and “TEA-EDTA” without an initial designation of what “HEDTA” is and “TEA” is. It is suggested that HEDTA and TEA be initially defined and the “HEDTA” is and “TEA” could then be placed in parenthesis for further use without further defining what the abbreviations stand for
No claim is allowed.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613