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 .
Claims 1-13 and 16-21 are pending examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/17/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the examiner.
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.
Claim 6 is 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 6 recites “azole based anti-fungal agents” as a species of antidandruff agent which is indefinite. The metes and bounds of the term “azole based anti-fungal agents” is cannot be deciphered. It is unclear if the term is limited to specific azole compounds or include derivatives and/or residues produce from azole compounds.
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 § 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 9, 10, 12, 13 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,688,025 (herein ‘025) in view of Birtwistle et al. (EP 0674898; published October 4, 1995). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘025 claims compositions comprising 5-30% anionic cleansing surfactants, 0.1-10% emulsified silicone with mean diameter of 4 micrometers or less and 0.1-0.5% a combination of cationic polymers comprising guar hydroxypropyltrimonium chlorides whereas the present claims also include cationic cellulose wherein the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
It is for this reason that Birtwistle is joined.
Birtwistle teach is shampoo formulations comprising 11.4% sodium lauryl ether sulphate (3EO), 11% cocoamidopropyl betaine, 3% dimethicone silicone and 0.3% polyquaternium 10 which encompasses the ratio of iii) to ii) of 10:1 (Example 1, page 4, line 30 through page 5, line 10).
Both ‘025 and Birtwistle are drawn to cleansing compositions comprising anionic surfactants and silicone. Therefore, it would have been prima facie obvious to combine the teachings of ‘025 and Birtwistle to include cationic celluloses because Birtwistle teach combining cationic cellulose with anionic surfactants and silicones aid in forming clear shampoo compositions and additionally one of ordinary skill would have been motivated to optimize to the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
Claims 1-5, 8-13 and 16-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/867,064 (herein ‘064) in view of Murray (EP 1058530; published December 13, 2000). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘064 claims cleansing compositions comprising 17-20% anionic surfactants selected from sodium laureth sulfate, 4-8% cosurfactant selected from alkyl amidopropyl betaines and 0.05-2% sensory modifying agent selected from silicon and cationic polymer, or mixtures selected from cationic cellulose, guar hydroxypropyltrimethylammonium chloride, dimethicone, dimethiconol and amodimethiocone whereas the claims require silicone has a mean particle size from 150-450 nm wherein the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
It is for this reason that Murray is joined.
Murray teach shampoo compositions comprising particles of silicone which condition the hair and leave it softer and more manageable [0001]. The shampoo comprises anionic surfactants and/or amphoteric surfactants, amino functionalized silicone and emulsified particles of non-amino functionalized silicon having a particle size of less than 2 microns (2000 nm) [0012]. Reducing the particles size to a range of 0.01-1 micron improves overall conditioning performance [0031].
Both ‘064 and Murray are drawn to cleansing compositions comprising anionic surfactants, cationic cellulose and silicone. Therefore, it would have been prima facie obvious to combine the teachings of ‘064 and Murray to include silicon with a mean particle size from 150-450 nm because Murray teach reducing particles sizes of silicon to 10-1000 nm to improve conditioning performance and additionally one of ordinary skill would have been motivated to optimize to the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 9-13, 16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 6,194,363 (herein ‘363) in view of Murray (EP 1058530; published December 13, 2000). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘363 claims shampoo compositions comprising anionic and amphoteric surfactants, dimethiconol with a particles size of less than 2 microns and addtionally cationic cellulose, or cationic guar derivatives whereas the claims require silicone has a mean particle size from 150-450 nm wherein the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
It is for this reason that Murray is joined.
Murray teach shampoo compositions comprising particles of silicone which condition the hair and leave it softer and more manageable [0001]. The shampoo comprises anionic surfactants and/or amphoteric surfactants, amino functionalized silicone and emulsified particles of non-amino functionalized silicon having a particle size of less than 2 microns (2000 nm) [0012]. Reducing the particles size to a range of 0.01-1 micron improves overall conditioning performance [0031].
Both ‘363 and Murray are drawn to cleansing compositions comprising anionic surfactants, cationic cellulose and silicone. Therefore, it would have been prima facie obvious to combine the teachings of ‘363 and Murray to include silicon with a mean particle size from 150-450 nm because Murray teach reducing particles sizes of silicon to 10-1000 nm to improve conditioning performance and to optimize to the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
Claims 1-5, 9-13, 16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 6,350,441 (herein ‘441) in view of Murray (EP 1058530; published December 13, 2000). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘441 claims shampoo compositions comprising anionic and amphoteric surfactants, silicones and additionally cationic cellulose, or cationic guar derivatives whereas the claims require silicone has a mean particle size from 150-450 nm wherein the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
It is for this reason that Murray is joined.
Murray teach shampoo compositions comprising particles of silicone which condition the hair and leave it softer and more manageable [0001]. The shampoo comprises anionic surfactants and/or amphoteric surfactants, amino functionalized silicone and emulsified particles of non-amino functionalized silicon having a particle size of less than 2 microns (2000 nm) [0012]. Reducing the particles size to a range of 0.01-1 micron improves overall conditioning performance [0031].
Both ‘441 and Murray are drawn to cleansing compositions comprising anionic surfactants, cationic cellulose and silicone. Therefore, it would have been prima facie obvious to combine the teachings of ‘441 and Murray to include silicon with a mean particle size from 150-450 nm because Murray teach reducing particles sizes of silicon to 10-1000 nm to improve conditioning performance and to optimize to the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
Claims 1-5 and 9-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 6,706,258 (herein ‘258). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘258 claims shampoo compositions comprising anionic and amphoteric surfactants, silicones having particle size of 0.15-30 microns (150-30000 nm) and additionally cationic cellulose, or cationic guar derivatives whereas the claims require silicone has a mean particle size from 150-450 nm.
Therefore, it would have been prima facie obvious to combine the teachings of ‘258 to optimize to the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
Claims 1-5 and 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 7,163,675 (herein ‘675). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘675 claims shampoo compositions comprising anionic surfactant selected from sodium lauryl ether sulphate (3 EO), silicones having particle size of less than 2 microns (2000 nm) and additionally cationic cellulose, or cationic guar derivatives whereas the claims require silicone has a mean particle size from 150-450 nm.
Therefore, it would have been prima facie obvious to combine the teachings of ‘675 to optimize to the ratio of silicone to cationic cellulose to from 4.3:1 to 10:1.
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.
Claim(s) 1-5, 8-13 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Birtwistle et al. (EP 0674898; published October 4, 1995) in view of Murray (EP 1058530; published December 13, 2000).
Applicant claims a hair care composition comprising
a cleansing surfactant comprising an anionic surfactant,
a cationic cellulose and
a silicone compound having a mean particle size from 150-450nm, wherein the ratio of iii) to ii) is from 4.3:1 to 10:1.
Applicant also claims a method of treating hair and scalp comprising applying the composition to the hair or scalp and optionally rinsing with water.
With respect to claims 1-5, 8-12 and 17-21, Birtwistle teach a conditioning shampoo composition for hair and/or skin comprising 0.01-10% a stable microemulsion of a high viscosity silicone with a particles size of less than 0.15 microns, 0.01-10% a deposition polymer and 2-35% a surfactant (abstract; page 2, lines 36-40). Preferred silicones include siloxane gums and amino functionalized silicones (page 2, lines 45-56). The microemulsion of silicone is stabilized by one or more emulsifiers selected from anionic, cationic and amphoteric surfactants wherein anionic surfactant is preferably sodium lauryl ether sulfate 3EO and amphoteric surfactants are selected from alkyl amidopropyl betaine, preferably cocoamidopropyl betaine (page 3, lines 13-45). The cationic cellulose polyquaternium 10 is preferably the deposition polymer (page 4, lines 1-4). The shampoo can also include guar gum derivatives such as guar hydroxypropyltrimonium chloride (page 4, lines 5-14). The compositions may also include antidandruff agents (page 4, line 26). A preferred formulation comprises 11.4% sodium lauryl ether sulphate (3EO), 11% cocoamidopropyl betaine, 3% dimethicone silicone and 0.3% polyquaternium 10 which encompasses the ratio of iii) to ii) of 10:1 (Example 1, page 4, line 30 through page 5, line 10).
With respect to claim 21 the ratio of anionic surfactant and amphoteric surfactant in the example is about 1:1, however Birtwistle teach that the total amount of surfactant in the compositions range from about 2 to about 35% by weight the composition. So assuming the amount of sodium lauryl ether sulphate remains at 11.4% one of ordinary skill in the art would have been motivated to decrease the amount of amphoteric surfactant as needed to a ratio where the anionic to amphoteric ratio is 2:1 to 10:1 with routine optimization since the additional surfactant is optional.
With respect to claim 13 Birtwistle teach applying the composition to hair and scalp in the form of a clear mild shampoo (page 3, lines 52-55). The composition is applied to hair, left on for an appropriate amount of time and then rinsed off with water (page 4, lines 21-22).
With respect to claim 1, Birtwistle teach the silicone is emulsified with a required particle size of 0.15 microns (150 nm) or less but does not teach the silicone compound has a mean particle size from 150 to 450 nm.
With respect to claims 3 and 16, Birtwistle teach silicones but does not specify dimethiconol or amodimethicone. It is for this reason that Murray is joined.
Murray teach shampoo compositions comprising particles of silicone which condition the hair and leave it softer and more manageable [0001]. The shampoo comprises anionic surfactants and/or amphoteric surfactants, amino functionalized silicone and emulsified particles of non-amino functionalized silicon having a particle size of less than 2 microns (2000 nm) [0012]. The amino functionalized silicone include amodimethicone [0020]. The amino functional silicones are optimized by reducing the particle size to improve conditioning performance in the range of less than 20, most preferably 0.01-1 microns (10-1000 nm) for emulsions and less than 0.15 microns (150) form microemulsions [0026]. Reducing the particles size to a range of 0.01-1 micron improves overall conditioning performance [0031]. The silicones used are preferably selected from DC X2-1787 which is dimethiconol gum having an average particle size of 0.5 microns (500 nm) and DC X2-1391 which is dimethiconol gum with a particle size of 0.045 (45 nm) [0036]. The formulation include 0.001-5% cationic deposition polymers selected from cationic celluloses and guar gum derivatives, particularly Polyquaternium 10 and guar hydroxypropyltrimonium chloride [0049-55].
Both Birtwistle and Murray are drawn to shampoo formulations comprising silicones, cleansing surfactants and cationic cellulose. Therefore, it would have been prima facie obvious to combine the teachings of Birtwistle and Murray to include silicone compounds having a mean particle size from 150 to 450 nm with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Birtwistle and Murray and include silicone compounds having a mean particle size from 150 to 450 nm before the time of filing because Murray teaches reducing the particle size of the silicone to a range of 10-1000 nm improves conditioning performance to leave hair softer and more manageable.
It would have been prima facie obvious to combine the teachings of Birtwistle and Murray to include dimethiconol with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Birtwistle and Murray to include dimethiconol because Murray teaches dimethiconol gum is preferred as a silicone and ranges in particle size from 45-500 microns.
Claim(s) 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Birtwistle et al. (EP 0674898; published October 4, 1995) in view of Murray (EP 1058530; published December 13, 2000) as applied to claims 1-5, 8-13 and 16-21 in further view of Chang et al. (US 2019/0328647; published October 31, 2019).
Applicant claims a hair care composition comprising
a cleansing surfactant comprising an anionic surfactant,
a cationic cellulose and
a silicone compound having a mean particle size from 150-450nm, wherein the ratio of iii) to ii) is from 4.3:1 to 10:1.
The teachings of Birtwistle et al. and Murray are addressed in the above 103 rejection.
While Birtwistle teach the formulations can comprise antidandruff agents Birtwistle and Murray do not specify the agents are selected from zinc pyrithione, piroctone olamine, azole based anti-fungal agents or selenium sulfide. It is for this reason that Chang et al. is joined.
Chang et al. teach hair care compositions comprising surfactants, cationic polymers and antidandruff agents (abstract). The antidandruff agent is selected from azoles such as ketoconazole; octopirox (piroctone olamine; kerolytic agents (which inherently encompass zinc pyrithione and selenium sulfide) and mixtures thereof in the range of 0.01-10% of the composition [0025-0027]. The surfactants comprise an anionic surfactant or a combination of anionic surfactants selected from sodium laureth sulfate and amphoteric surfactants selected from cocoamidpropyl betaine [0029-32; 0045]. The formulations also include conditioning agent selected from silicone emulsions of polysiloxanes with a particle size of 10nm to 10 microns, preferably from 25-550 nm [0179-0183]. Preferred formulations include 0.4% polyquaternium 10 (cationic cellulose), 1% piroctone olamine and 14% sodium laureth sulfate [0219].
Birtwistle, Murray and Chang et al. are all drawn to shampoo formulations comprising silicones, cleansing surfactants and cationic cellulose. Therefore, it would have been prima facie obvious to combine the teachings of Birtwistle, Murray, Chang et al. to include piroctone olamine, azole based anti-fungal agents and ketolytic agents with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Birtwistle, Murray and Chang et al. to include piroctone olamine, ketoconazole and ketolytic agents in the composition because Chang et al. teaches piroctone olamine, ketoconazole and ketolytic agents are preferred antidandruff agents used in shampoo formulations.
Conclusion
No claims allowed.
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DANIELLE D. JOHNSON
Examiner
Art Unit 1617
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611