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 .
Priority
This application is a 371 of PCT/CN2021/134373 filed 11/30/2021.
Accordingly, claims 1-17 of this instant application are afforded the effective filing date of 11/30/2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/16/2024 and 10/02/2025 have been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14, 16 and 17, in the reply filed on 04/10/2026 is acknowledged.
The traversal is on the ground(s) that:
“Restriction is only proper if the claims of the restricted groups are independent or patentably distinct and there would be a serious burden placed on the Examiner if restriction is not required (MPEP §803). The burden is on the Examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction (MPEP §803). Moreover, when citing lack of unity of invention in a national stage application, the Examiner has the burden of explaining why each group lacks unity with each other group specifically describing special technical features in each group (MPEP § 1893.03(d)).” (Remarks filed 04/10/2026, pages 2-3).
This is not found persuasive because first, it is noted that, Applicant’s traversal pertaining to examination of all claims can be made without serious burden per MPEP §803, is not an applicable traversal for the Restriction requirement as it pertain to the claims of the instant application because such traversal is only applicable to Restriction on claims from application filed under 35 U.S.C. 111(a), in which the instant application is not. Rather, the instant application is a 371 National Stage application that follows PCT rules for restrictions. Applicant is noted that the Restriction requirement analysis differs between national stage applications submitted under 35 U.S.C. 371 versus a national application filed under 35 U.S.C. 111(a). Since the present application is a national stage applications submitted under 35 U.S.C. 371, the Restriction requirement analysis does not relate to undue search and examination burden, as such analysis of undue search and examination burden only pertains to Restriction practice for a national application filed under 35 U.S.C. 111(a). According to MPEP 823: “[t]he analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis).” See MPEP Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT).
Second, Groups I-II remain to lack unity of invention because the common technical feature among Groups I-II drawn to a composition for cleansing hair comprising a least one anionic surfactant, at least one alpha hydroxy acid, and at least one beta hydroxy acid, remains not a special technical feature as it does not make a contribution over the prior art in in view of Beerse et al (US 5,968,539; cited in ISR filed 05/16/2024). As discussed in the Restriction Requirement dated 02/12/2026, Beerse teaches a rinse-off antimicrobial cleansing composition in the form of a hair shampoo comprising anionic surfactants (ammonium lauryl sulfate and ammonium laureth-3 sulfate), Malic acid (an alpha hydroxy acid), and salicylic acid (a betta hydroxy acid) (Abstract; column 2, lines 54-63; columns 8-10, 13-14, and 28).
As such, the Examiner maintains the position that the restriction between the claims of Groups I and II due to lack unity of invention was indeed proper, as the technical feature of “a composition for cleansing hair comprising a least one anionic surfactant, at least one alpha hydroxy acid, and at least one beta hydroxy acid” was not a special technical feature under PCT rules due to the fact that the technical feature has been taught by Beerse.
The requirement is still deemed proper and is therefore made FINAL.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group/invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/10/2026.
Status of the Claims
Claims 1-17 are pending in this instant application, of which claim 15 is withdrawn at this time being drawn to a nonelected group/invention.
Claims 1-14, 16 and 17 are examined herein on the merits for patentability.
Claim Objections
Claim 3 is objected to because of the following informalities: the recitation of “selected from the group consisting of” followed by “and” and “or” is an improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the recitation of “the beta hydroxy acid is selected from salicylic acid and its derivative of the formula …” is an improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: for language clarity, please amend “one or an number of double bonds” to “one or more double bonds”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the multiple recitations of “selected from … and a combination thereof” are improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “the” is recited twice (one after the other) in line 1 of claim 17. Appropriate correction is required.
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 7 and 16 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 claim 7, the recitation of “these groups” in line 7 of claim 7 renders the claim indefinite because the metes and bounds of “these groups” are unclear. It is not clear what “these groups” is referencing to in claim 7. Are “these groups” referencing to cyclic saturated aliphatic group, aliphatic unsaturated group, or another different group(s)? Clarification by amendment in claim 7 is required.
Regarding claim 7, the recitation “may or may not be conjugated” in lines 6-7 of the claim is indefinite because the recitation of “may or may not be” is an optional language denoting that the “conjugated” “may or may not” be required, or the “conjugated” may or may not happened, or the “conjugated” may or may not be there. Thus, the metes and bounds of “may or may not be” is unclear and does not positively limit the claim. Clarification by amendment in claim 7 is required.
Regarding claim 16, the recitation of “the alkanolamine” in line 1 of claim 16 renders the claim indefinite because claim 16 is dependent from claim 9 and claim 9 is dependent from claim 1. Thus, it is unclear what “the alkanolamine” in claim 16 is referencing to because claim 9 is drawn to cationic polymer and claim 1 does not contain an alkanolamine. As such, there is lack of antecedent basis for “the alkanolamine” in claims 1 and 9. Clarification by amendment in claim 16 is required.
As a result, claims 7 and 16 do not clearly set forth the metes and bounds of patent protection desired.
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.
Claim(s) 1-4, 6-10, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beerse et al (US 5,968,539).
Regarding claim 1, Beerse teaches a rinse-off antimicrobial cleansing composition in the form of a hair shampoo comprising anionic surfactants (ammonium lauryl sulfate and ammonium laureth-3 sulfate), Malic acid (an alpha hydroxy acid), and salicylic acid (a beta hydroxy acid) (Abstract; column 2, lines 54-63; columns 8-10, 13-14, and 28).
Regarding claim 2, the cleansing composition of Beerse does not contain silicon (Abstract; column 2, lines 54-63; columns 8-10, 13-14, and 28). thereby is silicon free.
Regarding claim 3, as discussed above, Beerse teaches the cleansing composition contains anionic surfactants including ammonium lauryl sulfate and ammonium laureth-3 sulfate.
Regarding claim 4, Beerse teaches the ammonium lauryl sulfate and ammonium laureth-3 sulfate are present in the cleansing composition in an amount of 7 wt% and 9 wt%, respectively (total is 16 wt% of anionic surfactant) (column 28), thereby meeting the claimed range of from 5 wt.% to 50 wt.%. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)).
Regarding claim 6, Beerse teaches Malic acid (an alpha hydroxy acid) is present in the cleansing composition in an amount of 2 wt% (column 28), which reads on the claimed range of from 0.3 wt.% to 30 wt.%.
Regarding claim 7, as discussed above, Beerse teaches the cleansing composition contains salicylic acid.
Regarding claim 8, Beerse teaches salicylic acid is present in the cleansing composition in an amount of 2 wt% (column 28), which reads on the claimed range of from 0.3 wt.% to 10 wt.%.
Regarding claim 9, Beerse teaches the cleansing composition further contains a cationic polymer (column 28).
Regarding claim 10, Beerse teaches the cationic polymer include polyquaternium 10 and said polyquaternium 10 is present in the cleansing composition in an amount of 0.5 wt% (column 28), which reads on the claimed range of from 0.01 wt.% to 10 wt.%.
Regarding claim 13, Beerse teaches the pH of the cleansing composition is from about 3.5 to about 5.0 (column 14, lines 49-59).
As a result, the aforementioned teachings from Beerse are anticipatory to claims 1-4, 6-10, and 13 of the instant invention.
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, 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) 1-10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beerse et al (US 5,968,539), and further in view of Tokunaga et al (US 2006/0223728 A1).
The cleansing compositions of claims 1-10 and 13 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 5, Tokunaga teaches a hair cleansing composition comprising anionic surfactants, hydroxy acids including glycolic acid, lactic acid, malic acid, tartaric acid, citric acid, and salicylic acid (Abstract; [0005]-[0053]). Tokunaga teaches the suitable and preferred alpha hydroxy acids include lactic acid and malic acid ([0027]-[0028]).
It would have been obvious to one of ordinary skill in the art to incorporate lactic acid in place of the malic acid in the cleansing composition of Beerse, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Beerse and Tokunaga are commonly drawn to hair cleansing compositions, and Tokunaga provided the guidance to do so by teaching that aside from malic acid, lactic acid is also a suitable alpha hydroxy acid for use in a hair cleansing composition. Thus, [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in 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.).
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 1-4, 6-13, 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beerse et al (US 5,968,539), and further in view of Rughani et al (US 2018/0280269 A1).
The cleansing compositions of claims 1-4, 6-10, and 13 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claims 11, 12, 16 and 17, Rughani teaches a hair cleansing composition comprising anionic surfactants, hydroxy acids, and one or more alkanolamines selected from the group consisting of monoethanol amine, diethanolamine, triethanolamine, monoisopropanolamine, diisopropanolamine, N-dimethylamino-ethanolamine, 2-amino-2-methyl-1-propanol, triisopropanolamine, 2-amino-2-methyl-1,3-propanediol, 3-amino-1,2-propanediol, 3-dimethylamino-1,2-propanediol, tris(hydroxymethylamino) methane, and a mixture thereof ([0011]-[0111] and [0134]-[0280]). Rughani teaches the alkanolamine is present in the hair cleansing composition in an amount from about 0.1 to about 15 wt. % ([0136]).
It would have been obvious to one of ordinary skill in the art to include an alkanolamine selected from the group consisting of monoethanol amine, diethanolamine, triethanolamine, monoisopropanolamine, diisopropanolamine, N-dimethylamino-ethanolamine, 2-amino-2-methyl-1-propanol, triisopropanolamine, 2-amino-2-methyl-1,3-propanediol, 3-amino-1,2-propanediol, 3-dimethylamino-1,2-propanediol, tris(hydroxymethylamino) methane, and a mixture thereof, in the hair cleansing composition of Beerse, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Beerse and Rughani are commonly drawn to hair cleansing compositions, and Rughani provided the guidance to do so by teaching that alkanolamine selected from the group consisting of monoethanol amine, diethanolamine, triethanolamine, monoisopropanolamine, diisopropanolamine, N-dimethylamino-ethanolamine, 2-amino-2-methyl-1-propanol, triisopropanolamine, 2-amino-2-methyl-1,3-propanediol, 3-amino-1,2-propanediol, 3-dimethylamino-1,2-propanediol, tris(hydroxymethylamino) methane, and a mixture thereof, is a typical active ingredient added into hair cleansing compositions. Thus, "[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would also have been obvious to one of ordinary skill in the art to optimize the amount of alkanolamine included in the hair cleansing composition of Beerse to an amount ranging from 0.1 wt% to 5 wt%, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Rughani provided the guidance to do so by teaching that alkanolamine is included in the hair cleansing composition in an amount from about 0.1 to about 15 wt. %, which is a range that overlaps the claimed range of 0.1 wt% to 5 wt%. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of alkanolamine in the composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 1-4, 6-10, and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beerse et al (US 5,968,539), and further in view of Tokunaga et al (US 2006/0223728 A1) and Rughani et al (US 2018/0280269 A1).
The cleansing compositions of claims 1-4, 6-10, and 13 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 14, Beerse teaches a rinse-off antimicrobial cleansing composition in the form of a hair shampoo comprising anionic surfactants (ammonium lauryl sulfate and ammonium laureth-3 sulfate), Malic acid (an alpha hydroxy acid), and salicylic acid (a beta hydroxy acid) (Abstract; column 2, lines 54-63; columns 8-10, 13-14, and 28). Beerse teaches the cleansing composition contains anionic surfactants such as ammonium lauryl sulfate and ammonium laureth-3 sulfate, present in the cleansing composition in an amount of 7 wt% and 9 wt%, respectively (total is 16 wt% of anionic surfactant) (column 28). Beerse teaches the cleansing composition contains salicylic acid in an amount of 2 wt% (column 28). Beerse teaches the cleansing composition further contains cationic polymers (column 28). Beerse teaches the cleansing composition has a pH from about 3.5 to about 4.5 (column 14, lines 49-59).
With respect to the claimed lactic acid as recited in claim 14, Tokunaga teaches a hair cleansing composition comprising anionic surfactants, hydroxy acids including glycolic acid, lactic acid, malic acid, tartaric acid, citric acid, and salicylic acid (Abstract; [0005]-[0053]). Tokunaga teaches the suitable and preferred alpha hydroxy acids include lactic acid and malic acid ([0027]-[0028]). Tokunaga teaches the hydroxy acids are present in the cleansing composition in an amount from 0.05 to 10 wt.% ([0028]).
It would have been obvious to one of ordinary skill in the art to incorporate lactic acid in place of the malic acid in the cleansing composition of Beerse, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Beerse and Tokunaga are commonly drawn to hair cleansing compositions, and Tokunaga provided the guidance to do so by teaching that aside from malic acid, lactic acid is also a suitable alpha hydroxy acid for use in a hair cleansing composition. Thus, [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in 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.).
It would also have been obvious to one of ordinary skill in the art to optimize the amount of lactic acid in the cleansing composition to an amount from 2 wt.% to 8 wt.%, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Tokunaga teaches that the amount of lactic acid in the cleansing composition can be from 0.05 to 10 wt.%, which is a range that overlaps the claimed range of 2 wt.% to 8 wt.%. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of lactic acid in the composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
With respect to the claimed cationic polymer and alkanolamine as recited in claim 14, Rughani teaches a hair cleansing composition comprising anionic surfactants, hydroxy acids, and one or more alkanolamines selected from the group consisting of monoethanol amine, diethanolamine, triethanolamine, monoisopropanolamine, diisopropanolamine, N-dimethylamino-ethanolamine, 2-amino-2-methyl-1-propanol, triisopropanolamine, 2-amino-2-methyl-1,3-propanediol, 3-amino-1,2-propanediol, 3-dimethylamino-1,2-propanediol, tris(hydroxymethylamino) methane, and a mixture thereof ([0011]-[0111] and [0134]-[0280]). Rughani teaches the alkanolamine is present in the hair cleansing composition in an amount from about 0.1 to about 15 wt. % ([0136]). Rughani teaches the hair cleansing composition further contains a cationic polymer such as polyquaternium-10 and guar hydroxypropyltrimonium chloride ([0137]-[0145]). Rughani teaches the cationic polymer is present in the hair cleansing composition in an amount from about 0.1 to about 5 wt% ([0145]).
It would have been obvious to one of ordinary skill in the art to include an alkanolamine selected from the group consisting of monoethanol amine, diethanolamine and triethanolamine, in the hair cleansing composition of Beerse, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Beerse and Rughani are commonly drawn to hair cleansing compositions, and Rughani provided the guidance to do so by teaching that alkanolamine selected from the group consisting of monoethanol amine, diethanolamine and triethanolamine, is a typical active ingredient added into hair cleansing compositions. Thus, "[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would also have been obvious to one of ordinary skill in the art to optimize the amount of alkanolamine included in the hair cleansing composition of Beerse to an amount ranging from 1.5 wt% to 3 wt%, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Rughani provided the guidance to do so by teaching that alkanolamine is included in the hair cleansing composition in an amount from about 0.1 to about 15 wt. %, which is a range that overlaps the claimed range of 1.5 wt% to 3 wt%. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of alkanolamine in the composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
It would also have been obvious to one of ordinary skill in the art to incorporate guar hydroxypropyltrimonium chloride as the cationic polymer in the cleansing composition of Beerse, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Beerse and Rughani are commonly drawn to hair cleansing compositions, and Rughani provided the guidance to do so by teaching that aside from polyquaternium-10, guar hydroxypropyltrimonium chloride is also a suitable cationic polymer for use in a hair cleansing composition. Thus, [t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in 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.).
It would also have been obvious to one of ordinary skill in the art to optimize the amount of guar hydroxypropyltrimonium chloride in the cleansing composition to an amount from 0.1 wt% to 1 wt%, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Rughani teaches that guar hydroxypropyltrimonium chloride as a cationic polymer can be included in the cleansing composition in an amount from about 0.1 to about 5 wt%, which a range that overlaps the claimed range of 0.1 wt% to 1 wt%. Thus, as discussed above, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of guar hydroxypropyltrimonium chloride as a cationic polymer in the composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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 in art the before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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 1-14, 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18850891 (reference application) in view of Rughani et al (US 2018/0280269 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘891 significantly overlap with the subject matter of the instant claims i.e. compositions for cleansing the hair comprising alpha hydroxy acid, beta hydroxy acid, and anionic surfactant.
While the claims in copending application ‘891 also contains nonionic surfactant, cationic surfactant, and solvent, it would have been obvious to include nonionic surfactant, cationic surfactant, and solvent in the composition of the instant claims in view of the guidance from Rughani ([0011]-[0111] and [0134]-[0280]).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18850891 in view of Rughani.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14, 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18875484 (reference application) in view of Rughani et al (US 2018/0280269 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘484 significantly overlap with the subject matter of the instant claims i.e. compositions for cleansing the hair comprising alpha hydroxy acid, beta hydroxy acid, and anionic surfactant.
While the claims in copending application ‘484 also contains piroctone compound and alpha-olefin sulfonate, it would have been obvious to include piroctone compound and alpha-olefin sulfonate in the composition of the instant claims in view of the guidance from Rughani ([0011]-[0111], [0134]-[0280], and [0391]).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18875484 in view of Rughani.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14, 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19121168 (reference application) in view of Rughani et al (US 2018/0280269 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in copending application ‘168 significantly overlap with the subject matter of the instant claims i.e. compositions for cleansing the hair comprising alpha hydroxy acid, beta hydroxy acid, a sulfur-containing anionic surfactant, and an alkanolamine.
While the claims in copending application ‘168 also contains a betaine-derived amphoteric sultain surfactant, it would have been obvious to include a betaine-derived amphoteric sultain surfactant in the composition of the instant claims in view of the guidance from Rughani ([0011]-[0111], [0128], and [0134]-[0280]).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 19121168 in view of Rughani.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOAN THI-THUC PHAN whose telephone number is (571)270-3288. The examiner can normally be reached 8-5 EST 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, Brian Kwon can be reached at 571-272-0581. 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.
/DOAN T PHAN/ Primary Examiner, Art Unit 1613
Prosecution Insights