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
Status of Claims
Claims 1-19 are pending.
Election/Restrictions
Applicants’ election of Group I and the following species: tartaric acid as a species of organic acid, propylene glycol as a species of compounds with at least one hydroxyl-group, arginine as a species of amino acid, and Copaiba Officinalis (Balsam Copaiba) resin as a species of vegetal resins, in the reply filed on 3/11/2026 is acknowledged. The election was made without traverse.
While searching for the elected species of organic acid (tartaric acid), the other species such as citric acid and lactic acid are found, thus the examination will be extended to include those species as well as tartaric acid. Also, while searching for the elected species of compounds with at least one hydroxyl-group (propylene glycol), the other species such as butylene glycol and diethylene glycol are found, thus the examination will be extended to include those species as well as propylene glycol.
Accordingly, claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Claims 1-17 are under examination in the instant office action.
Claim Rejections - 35 USC § 112 (b)
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 9, 10, 11, and 13 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 pre-AIA the applicant regards as the invention.
Regarding claims 9, 10, and 13, the phrase "preferably” in lines 2 and 3 renders the claims indefinite because it is unclear whether the limitation following the phrase is part of the claimed invention. See MPEP § 2173.05(d).
For examination purpose, the feature introduced by "preferably” is not considered as part of the claimed invention.
Also, claim 11 recites “oil resin or resin form” in parentheses. It is unclear whether the limitation within the parentheses is part of the claimed invention or not.
For examination purpose, it is treated as if it recites “the vegetal resin includes Copaiba Officinalis (Balsam Copaiba) oil resin or resin form”.
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 5-6, 8, 11-12, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel, “Leave in Conditioner” (XP055968445, Record ID 1108695, May 2009, cited in the IDS filed on 3/28/2024; hereafter, “Mintel 2009”).
Mintel 2009 discloses a leave-in conditioner (hair care composition) comprising citric acid (organic acid, α-hydroxy acid), propylene glycol (polyol), arginine (amino acid), Copaifera officinalis resin, vegetal oil such as Bertholletia Excelsa seed oil and Simmondsis Chinensis seed oil and water (aqua) (p1, product description and p2, Ingredients).
The composition further comprises cosmetically acceptable ingredients such as preserving agent, perfumes, vegetal extracts, organic solvents and/or mixture thereof (p2, Ingredients).
Claims 1-3, 5-6, 8, 11-12, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintel, “Treating Mask” (XP055968852Record ID 8669529, April, 2021, cited in the IDS filed on 3/28/2024; hereafter, “Mintel 2021”).
Mintel 2021 discloses a hair care composition comprising lactic acid (organic acid), butylene glycol (polyol), arginine (amino acid), Copaifera officinalis resin, vegetal oil such as Ricinus Communis seed oil and Passiflora edulis seed oil and water (aqua) (p1, product description and p2, Ingredients). The composition further comprises cosmetically acceptable ingredients such as preserving agent, vegetal extract, organic solvents and/or mixture thereof (p2, Ingredients).
As to claim 16, Mintel discloses that the pH of the composition is 3.8 (p1, product description).
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 of this title, 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.
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 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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2008024628 (prior art of record) in view of WO 2019113656 (hereafter, GUIMARAES). A copy of JP-2008024628 and its English translation were previously provided.
JP-2008024628 teaches a hair care composition having hair styling effect and conditioning effect, which comprises a sterol derivative and polyhydric alcohols such as propylene glycol, ethylene glycol, diethylene glycol, triethylene glycol, polyethylene glycol, pentylene glycol, hexylene glycol, glycerine, and dipropylene glycol (at least one compound with at least one hydroxy-group) (abstract and claim 1). JP-2008024628 teaches that these polyhydric alcohols or lower alkyl esters thereof are preferably in the range of usually 0.001 to 40% by weight (particularly 0.01 to 30% by weight) in the hair cosmetic composition (abstract, p6, para 3-4).
JP-2008024628 teaches that the composition further comprises various amino acid such as arginine (p7, para 2) and α-hydroxy acids such as tartaric acid, glycolic acid, citric acid, malic acid, and lactic acid (p13, para 3).
JP-2008024628 discloses that the composition may further comprise a semi-viscous copaiba-balsam (vegetal resin) (p9, line 5 from the bottom).
Also, JP-2008024628 disclose that the composition also comprises at least one vegetable oil as a moisturizer, wherein the vegetable oil includes coconut oil (p15, last para-p16, para 1).
In addition, JP-2008024628 discloses that the composition further comprises water, pH adjuster, preservatives, plant extracts, fragrance and vitamins (p6, last para, p7, last para, and p17, (43)).
JP-2008024628 specifically discloses a hair care composition comprising 3% glycolic acid (organic acid), 0.5% diethylene glycol (compound with at least one hydroxy-group, polyol), 0.3% arginine (amino acid), Anise extract and water (Example 22). The concentrations of the organic acid, polyol, and amino acid fall within the claimed ranges.
The specific combination of features claimed is disclosed within the broad genera of JP-2008024628, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). Where, as here, the reference does not provide any motivation to select this specific combination of variables, anticipation cannot be found.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, 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 selected various combinations of components from the disclosure of JP-2008024628 for preparing hair care compositions to arrive at compositions “yielding no more than one would expect from such an arrangement”. As stated above, JP-2008024628 already discloses specific example of a hair care composition comprising at least one organic acid, at least one compound with at least one hydroxy-group such as polyol, amino acid such as arginine, and water and teaches and suggests that the composition can further comprise copaiba-balsam oil resin and vegetal oil such as coconut oil. While it does not disclose a specific example comprising copaiba-balsam resin and vegetal oil, JP-2008024628 explicitly teaches and suggest the addition of copaiba-balsam oil resin and vegetal oil such as coconut oil as moisturizers. Also, vegetal oils such as balsam oil and coconut oil were known to be used for softening and moisturizing hairs since it forms a hydrophobic film on the hair fiber as evidenced by GUIMARAES (abstract, p5, lines 23-29, p6, lines 20-31 and [0047] and claim 5). Thus, one of ordinary skill in the art would have been further motivated to add copaiba-balsam oil resin and vegetal oils to the hair care composition of JP-2008024628 since such combination has been taught and suggested by prior art.
As to claims 10, 13 and 17, JP-2008024628 does not specifically disclose the concentration of Copaiba Officinalis resin and vegetal oil. However, GUIMARAES further teaches that the vegetal oil may be present at a concentration from about 0.8% to about 5%, preferably from about 1% to about 3% and more preferably from between about 1.0% to about 2% by weight, relative to the total weight of the hair care composition (p7, line 32-p7, line 2). The range falls within those claimed. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As to claim 16, JP-2008024628 does not specifically disclose pH of the composition. However, US 2021/0069095 teaches that the pH of the hair care composition is preferably of about 4.5 and may range from about 3.5 to about 4.5 ([0023]), which falls within the claimed range. Based on the pH range disclosed in US 2021/0069095, it would have been obvious to one of ordinary skill in the art to optimize pH of the hair care composition of JP-2008024628 for making it suitable for hair treatment.
In addition, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426. “[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); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“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.”)
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, it is concluded that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
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 the claimed invention, as evidenced by the reference, especially in the absence of evidence to the contrary.
Double Patenting Rejections
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 § 2146 et seq. 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 1-17 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 and 21-22 of co-pending application 19/101644.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of ‘644 application are also drawn to a hair cosmetic composition comprising: a) at least organic acid selected from the same organic acid including tartaric acid ; (b) a non-aqueous solvent comprising at least one compound with at least one hydroxyl-group such as polyol (e.g., propylene glycol); (c) at least one amino acid such as arginine; (d) at least one fatty compound selected from vegetal oils such as coconut oil, vegetal resins such as Copaiba Officinalis (Balsam Copaiba) resin, vegetal waxes, and mixtures thereof; (e) water; and (f) at least one surfactant selected from cationic surfactants, nonionic surfactants, and mixtures thereof. Also, the amounts of the ingredients fall within or overlap those claims.
As such, the instant claims are anticipated or would have been obvious over the claimed of the co-pending application.
Conclusion
No claims are allowed.
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/BONG-SOOK BAEK/Primary Examiner, Art Unit 1611