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
This Office action is based on the 18/695700 application originally filed March 26, 2024.
Amended claims 1, 3, 10-18, 20, 22-25, 29, 45 and 47-51, filed March 26, 2024, are pending and have been fully considered. Claims 2, 4-9, 19, 21, 26-28, 30-49 and 46 have been cancelled.
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.
Claims 1, 3, 10-18, 20, 22-25, 29, 45 and 47-51 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.
Claim 1 is unclear to the compound listed due to the claim fails to define the R and R’ substituents making claim 1 indefinite.
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Claim 1 should be further clarified and/or amended to further define the substituents. To further compact prosecution, it is interpreted the produced compound of the reaction is a polyurethane.
Regarding claim 51, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 13, 14 and 50 contain the trademark/trade name(s) Hydrolite-5 Green, Glucam and Citropol F. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982), and MPEP 2173.05(u). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a “pentylene glycol”, “PPG-20 Methyl Glucose Ether” and “polycitronellol acetate” and, accordingly, the identification/description is indefinite.
Examiner has taken the position that one or both are present in composition.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khoshdel (US 2002/0176837).
Regarding Claim 1
Khoshdel discloses in the abstract, carbamate group modified polyurethanes and a process for preparing carbamate group modified polyurethanes comprising reacting a polyurethane polymer with an alkylating or an acylating agent. The cosmetic or personal care compositions comprising (i) a styling polymer comprising a carbamate group modified polyurethane and (ii) a cosmetically acceptable diluent or carrier.
Khoshdel discloses in paragraph 0029, involves carbamate group modified polyurethanes comprising units having the formula:
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Khoshdel further discloses in paragraph 0030, wherein Z is hydrogen, an alkyl, fully or partially fluorinated alkyl or acyl group, provided that not all of the Z groups in the polyurethane are hydrogen.
Khoshdel discloses in paragraph 0036, the carbamate group modified polyurethanes comprise repeating units having the formula:
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Khoshdel discloses in paragraph 0037, wherein R, R′, R″, and Z are as defined above and R′″ is a repeating unit for polymer R″″, provided that not all of the Z groups in the polyurethane are hydrogen, and n and m are positive integers. Preferably, n has a value of from 2 to 100,000, more preferably from 5 to 50,000 and/or m has a value of from 1 to 10,000.
Khoshdel discloses in paragraph 0051, the carbamate group modified polyurethane may be used for the cosmetic treatment of hair, preferably as a hair styling polymer.
Khoshdel discloses in paragraph 0098, the diluents and carriers used in the compositions may include a wide range of components conventionally used in hair care compositions. The carriers can contain a solvent to dissolve or disperse the particular composition being used, with water, the C 1-C6 alcohols, the C1-C6 alkyl acetates and mixtures thereof being preferred. The carriers can also contain a wide variety of additional materials such as acetone, hydrocarbons (such as isobutane, hexane and decene), halogenated hydrocarbons (such as Freons) and volatile silicones such as cyclomethicone. Khoshdel discloses in paragraph 0099, when the hair care composition is a hair spray, tonic, gel, or mousse the preferred solvents include water, ethanol, volatile silicone derivatives, and mixtures thereof. The solvents used in such mixtures may be miscible or immiscible with each other. Mousses and aerosol hair sprays can also utilize any of the conventional propellants to deliver the material as a foam (in the case of a mousse) or as a fine, uniform spray (in the case of an aerosol hair spray). Examples of suitable propellants include materials such as trichlorofluoromethane, dichlorodifluoromethane, difluoroethane, dimethylether, propane, n-butane or isobutane. A tonic or hair spray product having a low viscosity may also utilize an emulsifying agent. Examples of suitable emulsifying agents include nonionic, cationic, anionic surfactants, or mixtures thereof. If such an emulsifying agent is used, it is preferably present at a level of from about 0.01% to about 7.5% by weight based on total weight of the composition. The level of propellant can be adjusted as desired but is generally from about 3% to about 30% by weight based on total weight for mousse compositions and from about 15% to about 50% by weight based on total weight for aerosol hair spray compositions.
The claimed invention is anticipated by the reference because the reference teaches a composition which comprises all of the claimed components. In the alternative, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary.
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.
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.
Claim(s) 1, 3, 10-18, 22-25, 45 and 49-50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al. (US 2018/0180391) hereinafter “Holland” in view of Foucault (WO 2020/074395 A1) hereinafter cited under English Translation.
Regarding Claims 1, 3, 10-18, 24, 25, 45 and 49-50
Holland discloses in the abstract, a composition having improved or enhanced fidelity and/or longevity of the fragrance profile, comprising fragrance materials in a diamond construction and at least one substantially non-odorous fragrance modulator. The methods of use of the compositions for perfuming suitable substrates, including hard surfaces and body parts, particularly skin and hair.
Holland discloses in paragraph 0011, a composition comprising a diamond construction fragrance formulation (see FIG. 1b) and at least one substantially non-odorous fragrance modulator for delivering enhanced intensity of the perceived fragrance profile over time, preferably the components attributable from the moderate and high volatile fragrance materials. In particular, a composition comprising: (i) a fragrance component present in an amount of from about 0.04 wt % to about 30 wt %, relative to the total weight of the composition; (ii) at least one substantially non-odorous fragrance modulator present in the amount of from about 0.1 wt % to about 20 wt %, relative to the total weight of the composition; (iii) a volatile solvent present in an amount of from about 50 wt % to about 80 wt %, relative to the total weight of the composition; and (iv) optionally water. The fragrance component comprises: (a) at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr (0.000133 kPa) at 25°C present in an amount of from about 10 wt % to about 30 wt %, relative to the total weight of the fragrance component; (b) at least one moderate volatile fragrance material having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25°C present in an amount of from about 40 wt % to about 80 wt %, relative to the total weight of the fragrance component; and (c) at least one high volatile fragrance material having a vapor pressure greater than 0.1 Torr (0.0133 kPa) at 25°C present in an amount of from about 1 wt % to about 30 wt %, relative to the total weight of the fragrance component.
Holland discloses in paragraph 0094, the composition consists essentially of the recited ingredients but may contain small amounts (not more than about 10 wt %, preferably no more than 5 wt %, or preferably no more than 2 wt % thereof, relative to the total weight of the composition) of other ingredients that do not impact on the fragrance profile, particularly the evaporation rate and release of the fragrance materials. For example, a fine fragrance composition may comprise stabilizing or anti-oxidant agents, UV filters or quenchers, or colouring agents, commonly used in perfumery. There are a number of other examples of additional ingredients that are suitable for inclusion in the compositions, particularly in compositions for cosmetic use. These include, but are not limited to, alcohol denaturants such as denatonium benzoate; UV stabilizers such as benzophenone-2; antioxidants such as tocopheryl acetate; preservatives such as phenoxyethanol, benzyl alcohol, methyl paraben, and propyl paraben; dyes; pH adjusting agents such as lactic acid, citric acid, sodium citrate, succinic acid, phosphoric acid, sodium hydroxide, and sodium carbonate; deodorants and anti-microbials such as famesol and zinc phenolsulphonate; humectants such as glycerine; oils; skin conditioning agents such as allantoin; cooling agents such as trimethyl isopropyl butanamide and menthol; silicones; solvents such as hexylene glycol; hair-hold polymers such as those described in PCT Publication No. WO94/08557 (Procter & Gamble); salts in general, such as potassium acetate and sodium chloride and mixtures thereof.
Holland further discloses in paragraphs 0126-0127 and Table 2, (ii) Moderate Volatile Fragrance Materials; preferable examples of moderate volatile fragrance materials having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25°C are provided in Table 2 Moderate Volatile Fragrance Materials. Preferably, the moderate volatile fragrance material is selected from at least 1 material, or at least 2 materials, or at least 3 materials, or at least 5 materials, or at least 7 moderate volatile fragrance materials as disclosed in Table 2. Holland discloses in Table 2 L-Citronellol and Citronellol.
Holland further discloses in paragraph 0071, at least one substantially non-odorous fragrance modulator as described herein below. Preferable examples of the substantially non-odorous fragrance modulators.
Holland discloses in paragraphs 0138-209 and Table 4, compositions comprise at least one substantially non-odorous modulator selected from the group: a) Methyl Glucoside Polyol; Ethyl Glucoside Polyol; Propyl Glucoside Polyol; and their mixtures; (b) Isocetyl Alcohol; (c) PPG-3 Myristyl Ether; Neopentyl Glycol Diethylhexanoate; and their mixtures; (d) Sucrose Laurate, Sucrose Dilaurate, Sucrose Myristate, Sucrose Palmitate, Sucrose Stearate, Sucrose Distearate, Sucrose Tristearate, and mixtures thereof; (e) Trimethylcyclohexane derivatives; (f) L-menthoxy ether derivatives; (g) Tetra-hydronaphthalene derivatives; (h) Hyaluronic acid disaccharide sodium salt, sodium hyaluronate and their mixtures; (i) Ether derivatives; (j) Diethylene Glycol Ether; (k) Hydroquinone Glycoside derivatives; (l) Propylene Glycol Propyl Ether; Dicetyl Ether; Polyglycerin-4 Ethers; Isoceteth-5; Isoceteth-7, Isoceteth-10; Isoceteth-12; Isoceteth-15; Isoceteth-20; Isoceteth-25; Isoceteth-30; Disodium Lauroamphodipropionate; Hexaethylene glycol monododecyl ether; and their mixtures; (m) Neopentyl Glycol Diisononanoate; Cetearyl Ethylhexanoate; and their mixtures; (n) Glyceryl Ether derivatives; (o) Panthenol Ethyl Ether, DL-Panthenol and their mixtures; (p) Aliphatic Dibasic Acid Diester derivatives; (q) Aliphatic Ether derivatives; (r) N-hexadecyl n-nonanoate, Noctadecyl n-nonanoate and their mixtures; (s) Tricyclodecane Amide derivatives; and (t) mixtures thereof.
Holland discloses in paragraph 0080, the solution to the problem of extending the longevity of the fragrance profile of compositions, particularly fine fragrance and cosmetic compositions, preferably fine fragrance compositions, which commonly contain high levels of a volatile solvent. Preferably, the composition according to the present invention, further comprising a volatile solvent present in the amount of from about 50 wt % to about 80 wt %, or preferably from about 55 wt % to about 75 wt %, relative to the total weight of the composition, and wherein the solvent is a branch or unbranched C1 to C10 alkyl, akenyl or alkynyl group having at least one alcohol moiety, preferably ethanol, or isopropanol, or other alcohols (e.g., methanol, propanol, isopropanol, butanol, and mixtures thereof) commonly found in commercial fine fragrance products.
Holland further discloses in paragraph 0082, water may be present in any of the compositions, and more specifically, it shall not exceed about 40 wt %, preferably about 20 wt % or less, or more preferably about 10 wt % or less, relative to the total weight of the composition. Alternatively, water may be present in an amount of from about 10 wt % or about 20 wt % to about 40 wt %, relative to the total weight of the composition. When the composition is a cosmetic composition the level of water should not be so high that the product becomes cloudy thus negatively impacting the product aesthetics. It is understood that the amount of water present in the composition may be from the water present in the volatile solvent (e.g., ethanol) used in the composition, as the case may be.
Holland discloses in paragraph 0050, as used herein, the term “composition” includes a fine fragrance composition intended for application to a body surface, such as for example, skin or hair, i.e., to impart a pleasant odor thereto, or cover a malodour thereof. They are generally in the form of perfume concentrates, perfumes, eau de parfums, eau de toilettes, aftershaves, or colognes. The fine fragrance compositions may be an ethanol-based composition. The term “composition” may also include a cosmetic composition, which comprises a fragrance material for the purposes of delivering a pleasant smell to drive consumer acceptance of the cosmetic composition. The term “composition” may also include body splashes or body sprays. The term “composition” may also include cleaning compositions, such as fabric care composition or home care compositions, including air care compositions (e.g., air fresheners), for use on clothing or other substrates such as hard surfaces (e.g., dishes, floors, countertops). Additional non-limiting examples of “composition” may also include facial or body powder, deodorant, foundation, body/facial oil, mousse, creams (e.g., cold creams), waxes, sunscreens and blocks, bath and shower gels, lip balms, self-tanning compositions, masks and patches.
Holland discloses the fragrance composition is intended for skin or hair includes the addition of polymers in the amount of 0.001 wt% to 40 wt% (see paragraphs 0084-0085 of Holland) but fails to disclose the addition of polyurethane-64.
However, it is known in the art to add polymers, including polyurethane-64, to a skin care product, as taught by Foucault.
Foucault discloses on page 2, a cosmetic composition for the care and radiance of the skin as well as a process for the manufacture thereof. Foucault discloses on page 3, by dye is meant, a colored substance soluble in water and / or in an oil providing a coloration visible to the naked eye.
Foucault discloses on pages 9 and 10, depending on the hydrophilic or lipophilic nature of the composition, a respectively hydrophilic or lipophilic film-forming agent will be used. Examples of suitable hydrophilic film-forming agents are acrylate copolymers, polyurethanes. Examples of acrylate copolymers are vinyl acrylate / crotonate copolymers, acrylate copolymers, acrylate / ethylhexylacrylate copolymers, acrylate / styrene copolymers, polytrimethylsiloxymethacrylate acrylate copolymers, polyacrylate- 14, vinyl / dimethiconylacrylate / polycarbamyl polyglycol ester copolymers, acrylate / ethylhexyl acrylate copolymers, acrylate / dimethylaminoethylmetacrylate copolymers, ammonium acrylate copolymers. Examples of polyurethane are polyurethane-34, polyurethane-35, polyurethane-64, polyurethane-21, the copolymer of polyurethane-1 / acrylate. The preferred hydrophilic film-forming agent is a mixture of acrylate / ethylhexyl acrylate copolymer and of acrylate / dimethylaminoethylmethacrylate copolymer sold under the name "Syntran PC 5778" by the company INTERPOLYMER.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add polymers, including polyurethane-64, to a skin care product, as taught by both Foucault and Holland. The motivation to do so is to add known polymers to a cosmetic product, hair or skin product, in order to aid in capsulation or filming in the cosmetic compositions.
Holland discloses in paragraphs 0022-0023, the fragrance materials comprises PPG-20 Methyl Glucose Ether (i.e., Glucam™ P-20) substantially non-odorous fragrance modulator.
Regarding Claims 22 and 23
Holland further discloses in paragraph 0094, the composition consists essentially of the recited ingredients but may contain small amounts (not more than about 10 wt %, preferably no more than 5 wt %, or preferably no more than 2 wt % thereof, relative to the total weight of the composition) of other ingredients that do not impact on the fragrance profile, particularly the evaporation rate and release of the fragrance materials. For example, a fine fragrance composition may comprise stabilizing or anti-oxidant agents, UV filters or quenchers, or colouring agents, commonly used in perfumery. There are a number of other examples of additional ingredients that are suitable for inclusion in the present compositions, particularly in compositions for cosmetic use. These include, but are not limited to, alcohol denaturants such as denatonium benzoate; UV stabilizers such as benzophenone-2; antioxidants such as tocopheryl acetate; preservatives such as phenoxyethanol, benzyl alcohol, methyl paraben, and propyl paraben; dyes; pH adjusting agents such as lactic acid, citric acid, sodium citrate, succinic acid, phosphoric acid, sodium hydroxide, and sodium carbonate; deodorants and anti-microbials such as famesol and zinc phenolsulphonate; humectants such as glycerine; oils; skin conditioning agents such as allantoin; cooling agents such as trimethyl isopropyl butanamide and menthol; silicones; solvents such as hexylene glycol; hair-hold polymers; salts in general, such as potassium acetate and sodium chloride and mixtures thereof.
Holland discloses applying pH adjusting agents but fails to disclose the claimed pH range of the composition.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the composition of Holland with pH adjusting agents through routine experimentation, in order to have provided for a pH of the claimed fragrance composition is in a range of from about 4 to about 8. The applicant is reminded that 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al. (US 2018/0180391) hereinafter “Holland” in view of Foucault (WO 2020/074395 A1) hereinafter cited under English Translation and further in view of Pagnoux et al. (US 2005/0175573) hereinafter “Pagnoux”.
Regarding Claim 29
Holland modified by Foucault discloses the presently claimed invention in independent claims 1 and 10 but fails to further teach the claimed smart gel polymer chains of claim 29 of the present invention.
However, it is known in the art to add polymer chains of terpolymers to a cosmetic composition, as taught by Pagnoux.
Pagnoux discloses in the abstract and paragraphs 0029-0030, polymers which comprise polymer chains of terpolymer type which are constituted by poly(ethylene oxide) (PEO) and poly(propylene oxide) (PPO) of PEO-PPO-PEO form, which are modified at their termini by groups which can essentially be other chains of PEO-PPO-PEO, acid segments, amine groups or PEOs, these chains being linked to the terpolymer chains via chemical bridges which are constituted by urethane bridges, urea bridges, allophanate bridges and biuret bridges, and which comprise more than 80% by weight of said PEO-PPO-PEO.
Pagnoux discloses in paragraph 0021, thermosensitive polymers which enable obtaining gels which are thermoreversible at temperatures which are approximately equal to the body temperatures, in order to form effective cosmetic and pharmaceutical compositions.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the polymer chains of terpolymers of Pagnoux to the cosmetic composition of Holland. The motivation to do so is to use thermosensitive polymers, which enable obtaining gels which are thermoreversible at temperatures which are approximately equal to the body temperatures, in order to form effective cosmetic and pharmaceutical compositions.
Allowable Subject Matter
Claims 20, 47, 48 and 51 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The applied prior art fails to disclose a fragrance composition comprising the molar ratios of claims 20, 47, 48 and 51 of the presently claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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