DETAILED ACTION
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 .
Drawings
The drawings are objected to because they contain color yet no petition has been filed as discussed below; and the single figure is labeled as FIG. 1 (and described in the specification as FIG. 1) but a single view must not be numbered and labeled with the abbreviation “FIG.” per (u)(1). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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 2, 4-5, 7-12, and 16-22 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.
Regarding claims 2, 4-5, 7-12, and 16-21, the term "preferably" and/or “preferred” renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d). Claim 22 is rejected as depending upon claim 21 without remedying such deficiency.
Claim 9 contains the trademarks/trade names CA-2350, CTAC 30KC, and ARQUAD 18/50. 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(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). 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 trademarks/trade names are used to identify/describe cationic surfactants and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 22 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 22 encompasses a human organism because it is directed to conditioned hair treated according to claim 21, which according to the broadest reasonable interpretation may include hair naturally remaining as part of a human body since the claim language does not indicate that the hair is isolated or removed from a body, and also given that hair conditioning is typically performed on human hair naturally remaining as part of a human body.
Claim Rejections - 35 USC § 101 / 112
Claim 23 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, or alternatively, 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.
Claim 23 does/do not fall within at least one of the four categories of patent eligible subject matter, and is indefinite, because it is not a proper process claim as it fails to set forth any steps involved in the process. Thus, claim 23 is rejected as a “use” claim under alternative grounds based on 35 U.S.C. 101 and 112 per MPEP 2173.05(q).
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.
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) 1-12, 14, and 16-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2020/0206111 A1; published 02 July 2020).
Regarding claim 1, Lee et al. discloses hair care and conditioning compositions (title) wherein an example comprises 20 wt% propylene glycol (i.e., a polyol), 50-60 wt% other glycols (i.e., a total of 70-80 wt% polyols), 0.5-3 wt% cationic surfactants, 1-4 wt% fatty alcohols, less than or equal to 4 wt% water, and 5 wt% ethanol and/or isopropanol mono-alcohols having 2 and/or 3 carbon atoms), (Formulation Example F paragraph [0171] page 15), which reads on the claimed water-reduced conditioner composition comprising a) one or more polyols at a concentration range from about 50-95 wt%; b) one or more cationic surfactants at a concentration range from about 1-3 wt%; c) one or more fatty alcohols at a concentration range from about 0.5-10 wt%; d) water at a concentration range from about 3-10 wt%; and one or more monoalcohols having from 1 to 7 carbon atoms at a concentration range from 0 wt% to less than 5.0 wt%.
Further regarding claim 1, although Formulation Example F of Lee et al. discloses 0.5-3 wt% cationic surfactants whereas the claimed concentration range of cationic surfactants is about 1-3 wt%, such ranges overlap and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Further regarding claim 1, although Formulation Example F of Lee et al. discloses less than or equal to 4 wt% water whereas the claimed concentration range of water is about 3-10 wt%, such ranges overlap and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Further regarding claim 1, although Formulation Example F of Lee et al. discloses 5 wt% monoalcohols whereas the claimed concentration range of monoalcohols is from 0 wt% to less than 5.0 wt%, Lee et al. also discloses that the compositions include one or more monoalcohols having from 2 to 6 carbon atoms (paragraph [0033]) wherein the total amount of monoalcohols can be from about 5 to 30 wt% (paragraph [0034]). Thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow such suggestions of Lee et al. and to make the compositions of Lee et al. such as Formulation Example F with about 5 to 30 wt% of monoalcohols having from 2 to 6 carbon atoms, with a reasonable expectation of success. Such range of about 5-30 wt% overlaps the claimed range of from 0 wt% to less than 5.0 wt%, since about 5 wt% includes slightly less than 5 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 2, although Formulation Example F of Lee et al. discloses 5 wt% monoalcohols whereas the claimed concentration range of monoalcohols is from 0 wt% to 1.0 wt%, such amounts are so close that a prima facie case of obviousness exists per MPEP 2144.05(I)(“a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”)(“In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%)”). Moreover, Lee et al. also discloses that the compositions include one or more monoalcohols having from 2 to 6 carbon atoms (paragraph [0033]) wherein the total amount of monoalcohols can vary (paragraph [0034]). Thus, it also would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow such suggestions of Lee et al. and to optimize conditioning effects of the conditioner compositions of Lee et al. such as Formulation Example F by varying the amount/concentration of monoalcohols in such compositions through routine experimentation per MPEP 2144.05(II), with a reasonable expectation of success.
Regarding claim 3, Formulation Example F of Lee et al. discloses 20 wt% propylene glycol and 50-60 wt% of glycols wherein glycerin is listed as a possible glycol (Formulation Example F paragraph [0171] page 15), which corresponds to the claimed one or more polyols comprising (a1) at least one trihydric alcohol at a concentration of from about 10-65 wt% and (a2) at least one dihydric alcohol at a concentration of from about 25-75 wt%. It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow such suggestions of Lee et al. and to make the compositions of Lee et al. such as Formulation Example F with 50-60 wt% glycerin as the glycol, with a reasonable expectation of success. Therefore, the total polyols in Formulation Example F is 70-80 wt%, and propylene glycol (i.e., a dihydric alcohol) is 20/70-80 wt%, or about 25-29 wt% dihydric alcohol out of all polyols, which lies within the claimed range of about 25-75 wt%. And glycerin (i.e., a trihydric alcohol) is 50-60/70-80 wt%, or about 62.5-85.7 wt% trihydric alcohol out of all polyols, which overlaps the claimed range of about 10-65 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 4, the ratio of trihydric alcohol to dihydric alcohol of Formulation Example F of Lee et al. as discussed above with respect to claim 3 is 50-60 wt% to 20 wt%, or 2.5:1 to 3:1, which overlaps the claimed range of from about 0.4:1 to about 2.3:1, given that the term “about” is defined by applicant as plus or minus 10 percent of the recited number (instant specification paragraph [0012]), resulting in a claimed range of 0.36:1 to 2.53:1. A prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 5, the sum of the cationic surfactants and fatty alcohols to water of Formulation Example F of Lee et al. as discussed above with respect to claim 1 is 0.5-3 wt% cationic surfactants plus 1-4 wt% fatty alcohols which equals a total of 1.5-7 wt%, to less than or equal to 4 wt% water, which equals 1.5-7:less than or equal to 4, or at least 0.375:1, which overlaps the claimed range of about 0.1:1 to about 2:1, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 6, although Lee et al. does not explicitly disclose such claimed gel network being formed by the combination of the cationic surfactant(s), fatty alcohol(s), and water, the compositions of Lee et al. including Formulation Example F contain such combination of cationic surfactant(s), fatty alcohol(s), and water, and such compositions of Lee et al. are substantially identical to the claimed compositions and thus such gel network property is presumed to be inherent in such compositions of Lee et al. per MPEP 2112(V) and 2112.01(I) given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claim 7, Lee et al. discloses that the glycol in Formulation Example F can be glycerin (Formulation Example F paragraph [0171] page 15), which reads on the claimed polyol comprising glycerin.
Regarding claim 8, Lee et al. discloses that the glycol in Formulation Example F can be 50-60 wt% glycerin (Formulation Example F paragraph [0171] page 15), which reads on the claimed glycerin at about 10-65 wt%. Lee et al. also discloses that the propylene glycol (i.e., propanediol) in Formulation Example F can be 20 wt% (Formulation Example F paragraph [0171] page 15), which is so close to the claimed about 25-75 wt% of propanediol that a prima facie case of obviousness exists per MPEP 2144.05(I)(“a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”)(“In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%)”).
Regarding claim 9, Lee et al. discloses that the cationic surfactant in Formulation Example F includes cetrimonium chloride (i.e., a quaternary ammonium organic compound) (Formulation Example F paragraph [0171] page 15), which reads on the claimed cationic surfactant comprising a quaternary ammonium organic compound.
Regarding claim 10, Lee et al. discloses that the fatty alcohol in Formulation Example F includes myristyl alcohol (i.e., a C8-C30 alkyl or alkenyl mono alcohol) (Formulation Example F paragraph [0171] page 15), which reads on the claimed fatty alcohol being a C8-C30 alkyl or alkenyl mono alcohol.
Regarding claim 11, although Formulation Example F of Lee et al. does not include a vegetable oil as claimed, Lee et al. discloses that oils of plant origin such as sunflower oil may be used in the composition (paragraph [0164]), and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Lee et al. and to include sunflower oil in the compositions of Lee et al. such as in Formulation Example F, with a reasonable expectation of success.
Regarding claim 12, although Formulation Example F of Lee et al. does not include about 0.1-2 wt% vegetable oil as claimed, Lee et al. discloses that oils of plant origin such as sunflower oil may be used in the composition as liquid fatty esters (paragraph [0164]) and Formulation Example F of Lee et al. discloses 0.5-1 wt% fatty esters, and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Lee et al. and to substitute/use sunflower oil as the fatty esters in the compositions of Lee et al. such as in Formulation Example F, resulting in 0.5-1 wt% sunflower oil vegetable oil in Formulation Example F, with a reasonable expectation of success.
Regarding claim 14, Formulation Example F of Lee et al. includes no alkoxylated surfactants, which reads on the claimed conditioner composition being substantially free of alkoxylated surfactants.
Regarding claim 16, Formulation Example F of Lee et al. comprises 20 wt% propylene glycol (i.e., a polyol) and 50-60 wt% other glycols (Formulation Example F paragraph [0171] page 15), for a total of 70-80 wt% polyols, which reads on the claimed one or more polyols at a concentration range from about 60-95 wt%.
Regarding claim 17, Formulation Example F of Lee et al. comprises 0.5-3 wt% cationic surfactants (Formulation Example F paragraph [0171] page 15), which overlaps the claimed one or more cationic surfactants at a concentration range from about 1-2 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 18, Formulation Example F of Lee et al. comprises 1-4 wt% fatty alcohols (Formulation Example F paragraph [0171] page 15), which reads on the claimed one or more fatty alcohols at a concentration range from about 1-10 wt%.
Regarding claim 19, Formulation Example F of Lee et al. comprises 1-4 wt% fatty alcohols myristyl alcohol and cetyl alcohol (Formulation Example F paragraph [0171] page 15), which overlaps the claimed two or more fatty alcohols at a concentration range from about 2-6 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 20, Formulation Example F of Lee et al. comprises less than or equal to 4 wt% water (Formulation Example F paragraph [0171] page 15), which overlaps the claimed water at a concentration range from about 4-10 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 21, Lee et al. discloses that the compositions are applied to wet or damp hair and massaged into hair to ensure uniform coverage then rinsed with water (paragraph [0014]) wherein the composition can be massaged into hair for about 10 seconds (paragraph [0172]), which corresponds to the claimed method of conditioning hair comprising applying either an undiluted portion or a water diluted portion of a water-reduced conditioner composition of claim 1 to the hair, massaging and/or rubbing the portion throughout the hair either as an undiluted portion or as a portion diluted with water for at least about 10 seconds, and thereafter rinsing the hair with a portion of water. It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Lee et al. and to apply the conditioning compositions of Lee et al. such as Formulation Example F as discussed above to wet or damp hair and massage it into the hair for about 10 seconds to ensure uniform coverage and then to rinse the hair with water, with a reasonable expectation of success.
Regarding claim 22, the hair treated according to the method discussed above with respect to claim 21 is conditioned hair which reads on claim 22.
Regarding claim 23, Lee et al. discloses that the compositions can be applied to hair and not rinsed from the hair (paragraph [0014]), which corresponds to the claimed use of the water-reduced conditioner composition of claim 1 for saving rinse water. It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Lee et al. and to apply the conditioning compositions of Lee et al. such as Formulation Example F as discussed above to hair and not rinsed from the hair, with a reasonable expectation of success.
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. as applied to claims 1-12, 14, and 16-23 above, and further in view of Schulze et al. (WO 2006/000258 A1; published 05 January 2006; citations herein to English machine translation made 06 February 2026).
Lee et al. is relied upon as discussed above.
Lee et al. does not disclose an anti-dandruff agent as in claim 13.
Regarding claim 13, Schulze et al. discloses hair conditioners (title; abstract) wherein combination preparations have been developed to reduce the expense of the usual multi-stage process (page 2 third to last paragraph) wherein preparations additionally contain active substances (page 2 second to last paragraph) wherein anti-dandruff agents such as climbazole can be included as active ingredients (pages 25-26).
Further regarding claim 13, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lee et al. and Schulze et al. by adding the climbazole of Schulze et al. to the hair conditioning composition of Lee et al. as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to reduce the expense of the usual multi-stage process by making the hair conditioning composition a multi-stage composition that combines conditioner and anti-dandruff active substance as suggested by Schulze et al.
Lee et al. does not disclose a direct dye as in claim 15.
Regarding claim 15, Schulze et al. discloses hair conditioners (title; abstract) wherein combination preparations have been developed to reduce the expense of the usual multi-stage process (page 2 third to last paragraph) wherein preparations additionally contain active substances (page 2 second to last paragraph) wherein direct dyes such as azo dyes can be included (page 26 third to last paragraph).
Further regarding claim 15, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lee et al. and Schulze et al. by adding the azo dye direct dye of Schulze et al. to the hair conditioning composition of Lee et al. as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to reduce the expense of the usual multi-stage process by making the hair conditioning composition a multi-stage composition that combines conditioner and direct dye for hair as suggested by Schulze et al.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617