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 .
Claim Objections
Claim 1 is objected to because of the following informalities: immediately after “(a)” in line 3 there should be recited --- is ---, or --- : ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: immediately after “(b)” in line 6 there should be recited --- is ---, or --- : ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: immediately after “(c)” in the last line there should be recited --- is ---, or --- : ---. 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.
Claim 5 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 5 recites the limitation "one or more amphoteric surfactants" in the last line of the claim. There is insufficient antecedent basis for this limitation in the claim. claim 1, from which it depends, recites “an amphoteric surfactant.” To obviate this issue, it is suggested for claim 5 to recite --- the amphoteric surfactant ---.
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.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Preuilh et al. (US 2006/0233735 A1, 10/19/2006, IDS reference) (hereinafter Preuilh).
Regarding claims 1-4, 12 and 14-15, Preuilh discloses compositions for washing hair comprising at least an anionic surfactant; at least an amphoteric surfactant, and a pro-penetrating agent (abs). The pro-penetrating agent may be 0.1-25% by weight [0043]), and includes glycol ethers such as ethoxydiglycol and polyhydric alcohols such as propylene glycol ([0041]). The anionic surfactants include alkyl ether sulfates ([0030]), and may be used in proportions of between 0.05 and 50% by weight of composition ([0034]). The amphoteric surfactants include sulfobetaines ([0035]), and may be 0.01-30% by weight ([0039]). The pH may be adjusted with cosmetically acceptable basifying or acidifying agents ([0113]). Exemplary acidifying agents include lactic acid, in amounts sufficient to adjust the pH to desired value ([0128]).
Accordingly, Preuilh discloses compositions for washing hair comprising 0.1-25% wt. of pro-penetrating agents including ethoxydiglycol (i.e. instantly claimed diethylene glycol monoethyl ether of polyalkylene glycol ether of component (a)); 0.05-50% wt. of anionic surfactants including alkyl ether sulfates (i.e. instantly claimed component (b); and acidifying agents including lactic acid (i.e. instantly claimed hydroxycarboxylic acid of component (c)). Together these would provide compositions as instantly claimed. The prior art is not anticipatory insofar as this combination must be selected from various lists/locations in the reference. It would have been obvious, however, to make the combination since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claims 1 and 2 reciting amounts of component (a), the claimed amounts (0.1-18% and 0.5-15%, respectively) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. 0.1-25% weight). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05(A).
Regarding claims 1 and 3 reciting amounts of amounts of component (b), the claimed amounts (≥ 5% and 8-30%, respectively) would have been obvious to one of ordinary skill in the art since they overlap with the ranges of the prior art (i.e. 0.05-50% weight). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05(A).
Regarding claims 4, 14 and 15, as noted by para. [0032] of the instant Specification, lactic acid is an organic acid having 8 or less carbon atoms, and a hydroxycarboxylic acid.
Regarding claim 5, as discussed above, Preuilh discloses at least one anionic surfactant and at least one amphoteric surfactant.
Regarding claim 6, Preuilh further discloses wherein the composition comprises nonionic surfactants ([0114]).
Regarding claim 7, as discussed above, Preuilh discloses 0.1-25% wt. pro-penetrating agents including glycol ethers such as ethoxydiglycol (i.e. instantly claimed component (a)). Although Preuilh does not explicitly disclose an amount of acidifying agents including lactic acid, it would have been obvious to one of ordinary skill in the art to have selected an amount of ethoxydiglycol and an amount of lactic acid, such that the selected amounts would have equated to a ratio that overlaps with the claimed ratio, thus making it obvious. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP § 2144.05(II)(A).
Regarding claims 8-9 and 11, as discussed above, Preuilh discloses wherein the pro-penetrating agents include ethoxydiglycol (i.e. diethylene glycol monoethyl ether). Accordingly, Preuilh ethoxydiglycol meets the limitation of the formula (I) of claim 8 wherein R1 is H, R2 is C2 alkyl, and n=2.
Regarding claim 10 reciting a list of alkylene glycols, it is not necessary for Preuilh to disclose the recited alkylene glycols since the claim, as currently recited, does not require the component (a) to be an alkylene glycol. The claim recites wherein component (a) may be a polyalkylene glycol ether, which Preuilh discloses by disclosing wherein the composition comprises ethoxydiglycol (i.e. diethylene glycol monoethyl ether).
Regarding claim 13, as discussed above, Preuilh discloses wherein the composition comprises sulfobetaine.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Preuilh et al. (US 2006/0233735 A1, 10/19/2006, IDS reference) (hereinafter Preuilh) in view of Fukugaki et al. (JP 2003/095842 A, 04/03/2003, IDS reference) (hereinafter Fukugaki).
The disclosures of Preuilh is discussed above. While Preuilh is believed to support a finding of obviousness, purely arguendo, for the purposes of complete prosecution, and for the purposes of this ground of rejection only, claim 10 has been interpreted as though it requires the presence of an alkylene glycol.
As discussed above, Preuilh discloses wherein the pro-penetrating agents include polyhydric alcohols such as propylene glycol.
Preuilh differs from the instant claim insofar as not explicitly disclosing wherein the polyhydric alcohols include isoprene glycol.
However, Fukugaki discloses compositions suitable for washing hair ([0016]), comprising one or more of ionic surfactants ([0010]). The compositions may comprise other known components, blended in suitable ranges, including polyhydric alcohols such as propylene glycol and isoprene glycol ([0015]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have selected propylene glycol and isoprene glycol (i.e. instantly claimed 3-methyl-1,3-butanediol) as the pro-penetrating agents of Preuilh, since each is taught as a known and effective polyalcohol suitable for hair washing compositions as taught by Fukugaki. It 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. See MPEP § 2144.06(I).
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/713,834 in view of Preuilh et al. (US 2006/0233735 A1, 10/19/2006, IDS reference) (hereinafter Preuilh).
The copending claims differ from the pending claims insofar as not explicitly teaching all the features of the claimed invention, such as instantly claimed anionic surfactant or organic acid.
However, these feature are known in the art. As noted in the current rejections, the teachings of Preuilh render obvious claims 1-15.
Therefore, as claims 1-16 of copending Application No. 18/713,834 and Preuilh all disclose compositions comprising polyalkylene glycol ether and/or alkylene glycol that can be rinsed from the hair, it would have been prima facie obvious to one of ordinary skill in the art to have modified the copending application and to include the teachings of Preuilh as discussed in the rejections above, because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as instantly claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. "It 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." See MPEP 2144.06(I).
This is a provisional nonstatutory double patenting rejection.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sakurai et al. (US 2004/0266656 A1, 12/30/2004, IDS reference), directed to a shampoo composition comprising propylene glycol; POE ether sulfate; alkyl polyglucoside; sulfobetaines; and organic acids.
Xiang (CN 110787111 A, 02/14/2020, IDS reference), directed to a shampoo comprising propylene glycol, sodium laureth sulfate, betaine, and citric acid.
Smith (EP 0278505 B1, 06/17/1992, IDS reference), directed to a composition comprising sodium laureth sulfate, ethoxydiglycol, sodium lauryl sulfate, and citric acid.
Busby (US 2016/0287566 A1, 10/06/2016, IDS reference), directed to a composition comprising nonionic and amphoteric surfactants, propylene glycol, citric acid, and ethoxydiglycol.
Rughani et al. (US 2018/0280270 A1, 10/04/2018, IDS reference); and
Rughani et al. (US 2018/0280267 A1, 10/04/2018), directed to compositions for hair comprising a mono, di, or tricarboxylic acid including citric acid; one or more anionic surfactants including alkyl ether sulfates; amphoteric surfactants including sulfobetaines; and polyhydric alcohols including 3-methyl-1,3-butanediol and diethylene glycol monoethyl ether.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612