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
The amendment filed on June 24, 2026 is acknowledged. Claims 18-19 have been withdrawn and new claim 20 is added. Claims 1-17 and 20 are under examination in the instant office action.
Applicants' arguments and declaration under 37 CFR 1.132, filed on June 24, 2026, have been fully considered but they are not deemed to be persuasive. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied in view of the amendments. They constitute the complete set presently being applied to the instant application. Responses are limited to Applicants' arguments relevant to either reiterated or newly applied 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 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 and 20 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). The range of the at least one compound overlaps the range recited in the claims 1 as amended.
JP-2008024628 teaches that the composition further comprises various amino acids 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), 0.5 % Anise extract and water (Example 22). The concentrations of the organic acid, polyol, and amino acid fall within those recited in claim 1 as amended and claims 4, 7, and 9-10.
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 suggests 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 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.
Response to Applicant’s arguments
Applicant argued that the formulation of example 22 does not contain a vegetal resin as required by the present invention. Applicant further argued that Satoshi mentions a large and diverse listing of possible optional ingredients and nothing in Satosh would have led or motivated a person of ordinary skill in the art have selected a vegetal resin, let alone copaina-balsam oil resin from the listing of possible additives in Satoshi and have a reasonable expectation of achieving the surprising results obtainable according to the present invention.
In response, JP-2008024628 explicitly discloses semi-viscous copaiba-balsam (vegetal resin) as one of additional plant-based ingredients along with anise extract disclosed in the example 22 (see p9, line 5 from the bottom). 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 (see 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 motivated to add copaiba-balsam oil resin to the hair care composition of JP-2008024628 since such combination has been taught and suggested by prior art. In addition, the selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07: 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). In addition, the Examiner respectfully submits that the above rejection is based on a combination of references, not on Satoshi taken in a vacuum. As such, Applicants' arguments pertaining to Satoshi are not persuasive. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant also argued that while the hair composition of Satosh is for hair styling, conditioning effects, and preventing damaged hair form becoming brittle, dry or broken the instant composition is for providing significant curl definition. In response, it is noted that the features upon which applicant relies (i.e., providing significant curl definition) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also, it should be noted that the instant claims are drawn to a hair care composition, not a method of providing significant curl definition. Such intended result would not change structural features of the claimed composition and thus does not make a patentable distinction over the prior art. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) “would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.” 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness, however the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) (“The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.”). In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) discussed in MPEP § 2144 are also pertinent to this issue. In this case, the prior art teaches and suggests the composition comprising the same ingredients as claimed and thus such intended results would flow naturally from following the suggestion of the prior art.
As to the specific concentrations of the ingredients recited in the claims, the prior art references in combination teach and suggest the ranges which fall within or overlap those claimed as stated above. 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). 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); 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.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). See MPEP 2144.05 IIA. Applicant did not provide any evidence showing the criticality of the claimed ranges.
As to the alleged unexpected results, the examiner notes that it is applicant's burden to demonstrate unexpected results over the prior art. See MPEP 716.02, also 716.02 (a) - (g). Furthermore, the unexpected results should be demonstrated with evidence that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Moreover, evidence as to any unexpected benefits must be "clear and convincing" In re Lohr, 137 USPQ 548 (CCPA 1963), and be of a scope reasonably commensurate with the scope of the subject matter claimed, In re Linder, 173 USPQ 356 (CCPA 1972).
In the instant case, the alleged unexpected result of the claimed composition is not commensurate in scope with the claims. The claim 1 as amended is drawn to a genus of compositions comprising any organic acids, any compounds with at least one hydroxyl-group (compounds with any structure and size as long as they have at least one hydroxyl-group), any amino acids, and any vegetal resins, of which combinations can encompass more than millions. However, the declaration only discloses the effects of a specific composition comprising alcohol, tartaric acid, and arginine and Copaifera officinalis (BALSAM COPAIBA) RESIN in specific amounts on curl definition compared with a comparative composition comprising the same ingredients without Copaifera officinalis (BALSAM COPAIBA) RESIN. However, there is no evidence supporting that the alleged results can be extrapolated to other compositions comprising different organic acids, compounds with at least one hydroxyl-group, amino acids, and vegetal resinss encompassed by the claim. Also, it is not evident that the difference in curl definition shown in the declaration is in fact unexpected and unobvious and of both statistical and practical significance because the difference in the curl definition score ranging from 0 to 10 is only 0.7 and there is no analysis for statistical significance. Thus, the alleged unexpected results are insufficient to overcome the rejection under 35 USC 103 for reason of record and the reasons stated above.
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 and 20 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.
Response to Applicant’s arguments
Applicant argued that the double patenting rejection made on the later filed application, 19/101644 should be withdrawn because the present application is in condition for allowance.
In response, since the present application is still not in condition for allowance, this is not the only or sole rejection remaining, the claims of the above co-pending rejection remain pending, and Applicants have not presented a terminal disclaimer, the rejection is properly maintained in this Office Action and future Office Actions until withdrawn. The Courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the applications became a patent by permitting the examiner to make a “provisional” rejection on the ground of double patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue. See MPEP 804. Therefore, the provisional double patenting rejection is timely and appropriate.
Conclusion
No claims are allowed.
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.
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/BONG-SOOK BAEK/Primary Examiner, Art Unit 1611
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