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 .
Summary
Claims 1-20 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application filed on April 19, 2024 is a 371 of PCT/JP2022/039465 filed October 24, 2022, which in turn claims priority to JP2022-119767, filed July 27, 2022 and JP2021-174048 filed on October 25, 2021.
Information Disclosure Statement
Receipt of the Information Disclosure Statements filed on June 7, 2024, June 11, 2024, June 3, 2025 and November 6, 2025 are acknowledged. The IDS filed July 7, 2024 is lined through because the references cited on it are identical to the IDS filed June 11, 2024. Signed copies of the documents are attached to this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 recites the same alternatives for component B as found in claim 1.
. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Horie et al. (US 20170007526 A1).
Horie et al. disclose a hair cosmetic comprising components (A) and (B) wherein component (A) is a cationic polymer and component (B) is an anionic polymer that can be polyacrylic acid having a weight-average molecular weight between 4,000 and 20,000, see claim 1. Their composition may also include amino-modified silicone corresponding to component (C) of the present application, see paragraphs [0069] – [0071]. Component (A) may be present in as little as 0.01% by mass (claim 1), component (B) may be present in as little as 0.01% by mass (claim 6) and component C may be present in as little as 0.1% (paragraph [0071]) so the total would be 0.12%, meeting the content limitation of instant claim 1.
Regarding claim 2, the content of component (A) is taught to be between 0.01% by mass or more up to 20% by mass or less including 0.5% by mass or more or 0.75% by mass and 10% by mass or less or 5% by mass or less or 3% by mass or less or 2.5% or 2% by mass or less (see paragraph [0043]) and the content of component (B) is taught to be between 0.01% by mass or more up to 20% by mass or less including 0.1% by mass or more or 0.3% by mass or more or 0.5% by mass or more and 10% by mass or less or 5% by mass or less or 3% by mass or less or 2% by mass or less or 1.5% by mass or less or 1.25% by mass or less, (see paragraph [0052]). These ranges of content clearly cover the claimed range in claim 2; it would have been obvious to one of ordinary skill in the art prior to the instant effective filing date to select any range within those taught with the expectation of achieving beneficial results.
Regarding claim 3, paragraph [0071] of Horie et al. teaches that the content of the silicones in the hair cosmetic (instant component C) is preferably 0.1% by mass or more and more preferably 0.5% by mass or more from the viewpoint of providing sufficient effects, and 20% by mass or less and more preferably 15% by mass or less. This range covers the limitations of claim 3.
Regarding claim 4, Horie et al. teach the desirable addition of a cationic surfactant in paragraph [0062].
Regarding claim 5, Horie et al. teach the desirable addition of a higher alcohol in paragraphs [0064] - [0066].
Regarding claim 6, Horie et al. teach that the composition may be in emulsion form in paragraph [0093].
Regarding claim 7, Horie et al. teaches as above, including, as component (A), dimethyl diallyl ammonium chloride homopolymer (paragraph [0027]), as component (B), sodium polyacrylate having weight average molecular weight of 5,000, 8,000, or 15,000 (see Table 1) and, as component (C), amino-modified silicone or aminopolyether-modified silicone (paragraph [0070]. Total content of A, B and C is discussed above.
Regarding claim 8, Horie et al. do not disclose anionic or amphoteric groups to be present on the cationic polymer, thus meeting this limitation.
Regarding claim 9, an amphoteric polymer by definition has a cationic group and an anionic group. Amphoteric polymers are disclosed in paragraph [0085]; these are similar to those in paragraph [0017]; thus meeting this limitation. Horie et al. is silent as to the pH of the amphoteric polymer but, since a compound and its properties are inseparable (In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963)) the amphoteric polymers in Horie et al would be expected to meet this limitation. In addition, the pH of the composition as a whole is discussed in paragraphs [0089] – [0092] and indicates that it is well within the ordinary level of skill in the art to adjust the pH of the whole completion, as well as the components thereof.
Regarding claim 10, paragraph [0026] of Horie et al. states that the charge density of the cationic polymer is preferably 5.2 meq/g or more, 5.5 meq/g or more, 5.8 meq/g or more, or 6.0 meq/g or more. This lies within the claimed range of 0.1 – 10 meq/g.
Regarding claim 11, claim 10 of Horie et al. recites a range of weight average molecular weight of the cationic polymer to be between 10,0000 and 3,000,000; overlapping the claimed range of 5,000 – 2,000,000.
Regarding claim 12, paragraph [0041] teaches polymers and copolymers of diallyl quaternary ammonium salts.
Regarding claim 13, Horie et al. is silent as to the charge density of the anionic polymer. However, similarly to the pH of the amphoteric polymer, since a compound and its properties are inseparable (In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963)) the anionic polymers in Horie et al would be expected to meet this limitation because they are taught to be effective for hair cosmetic compostions.
Regarding claim 14, paragraph [0046] teaches that the anionic polymer has a weight-average molecular weight of 5,000 or more, 6,000 or more, 7,000 or more, or 10,000 or more and 50,000 or less, or 30,000 or less, or 20,000 or less, or 18,000 or less; this includes the claimed range of 5,000 – 40,000.
Regarding claim 15, Table 1 teaches, as component (B), sodium polyacrylate having weight average molecular weight of 5,000, 8,000, or 15,000, thus meeting this limitation.
Regarding claim 16, paragraph [0070] teaches, as component (C), amino-modified silicone or aminopolyether-modified silicone that would be encompassed by the structure recited in the claim.
Regarding claim 17, amodimethicone is taught at paragraph [0211].
Regarding claim 18, the content of A is 0.01%, 0.055, 0.75% up to 20% or less, or 2% or less, see paragraph [0043].
Regarding claim 19, the content of component (B) is taught to be between 0.01% by mass or more up to 20% by mass or less including 0.1% by mass or more or 0.3% by mass or more or 0.5% by mass or more and 10% by mass or less or 5% by mass or less or 3% by mass or less or 2% by mass or less or 1.5% by mass or less or 1.25% by mass or less in paragraph [0052].
Regarding claim 20, the content of component (A) is taught to be between 0.01% by mass or more up to 20% by mass or less including 0.5% by mass or more or 0.75% by mass and 10% by mass or less or 5% by mass or less or 3% by mass or less or 2.5% or 2% by mass or less (see paragraph [0043]) and the content of component (B) is taught to be between 0.01% by mass or more up to 20% by mass or less including 0.1% by mass or more or 0.3% by mass or more or 0.5% by mass or more and 10% by mass or less or 5% by mass or less or 3% by mass or less or 2% by mass or less or 1.5% by mass or less or 1.25% by mass or less, (see paragraph [0052]) the content of the silicones in the hair cosmetic (instant component C) is preferably 0.1% by mass or more and more preferably 0.5% by mass or more from the viewpoint of providing sufficient effects, and 20% by mass or less and more preferably 15% by mass or less (see paragraph [0071]). These ranges of content clearly cover the claimed range in claim 20.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A. Wax whose telephone number is (571)272-0623. The examiner can normally be reached 8:00 AM -4:00 PM Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at (571) 272-1424. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Robert A Wax/Supervisory Patent Examiner
Art Unit 1615