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 .
Status of the Claims
Claims 1-14 and 16-21 are pending and under current examination.
Specification
The abstract of the disclosure is objected to because it contains legal phraseology in the phrases “said metal” and “said metal oxide or metal salt”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 14, 18, and 20 are objected to because of the following informalities:
Claim 14 recites “the hair care composition as claimed claim 1”. This is a clear typographical error and should be amended to read “the hair care composition as claimed in claim 1”.
Claim 18 recites “wherein the anionic surfactant, is sodium…”. This is grammatically incorrect and should be amended to read “wherein the anionic surfactant is sodium…”.
Claim 20 recites “a weight ration”. This is a clear typographical error and should be amended to read “a weight ratio”.
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 1-14 and 16-21 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.
Claim 1 recites the limitation “a metal oxide or a metal salt wherein the metal is selected from calcium, barium and strontium”. This renders the claim indefinite because it is unclear if both the metal oxide and metal salts are limited to calcium, barium and strontium cations or if only the metal salt is limited to calcium, barium and strontium cations.
Claim 2 recites the limitation “calcium PCA”. There is no definition provided for the abbreviation “PCA” in the claims or specification. It is therefore impossible to discern the metes and bounds of the claim.
Claim 9 recites the limitation “cationic guar polymer in an amount of from 0.01 to 2%”. This renders the claim indefinite because it is not clear to which value the claim refers (i.e. weight or volume).
Claim 10 recites the limitation “piroctone compound in an amount of from 0.01 to 10%”. This renders the claim indefinite because it is not clear to which value the claim refers (i.e. weight or volume).
Claim 13 does not recite a claim upon which it depends. It is therefore impossible to discern the metes and bounds of the claim.
Claim 17 recites the limitation “a weight ratio of the metal oxide or the metal salt to the piroctone compound”. This language renders the claim indefinite because it suggests that there could be greater than one weight ratio of metal oxide or metal salt to piroctone compound, raising the question of whether the entire amount of each metal oxide, metal salt, or piroctone compound is included in calculating the ratio. Amending the claim to recite "the weight ratio" would obviate the rejection. This will not raise concerns over antecedent basis because the ratio of two substances in a composition is inherent to the composition.
Claim 19 does not properly recite “and” or “or” before the final element to constitute a proper Markush group. Please refer to MPEP 2173.05(h):
“When materials recited in a claim are so related as to constitute a proper Markush group, 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.”
Claim 19 recites the limitation “…wherein the alkyl group as from 8 to 12 carbon atoms”. This renders the claim indefinite because it is not clear if the limitation applies only to alkyl amidopropyl hydroxysultaines or if the limitation applies to every amphoteric surfactant embraced by the claim.
Claim 20 recites “a weight ratio of anionic surfactant to amphoteric surfactant”. This language renders the claim indefinite because it suggests that there could be greater than one weight ratio of metal oxide or metal salt to piroctone compound, raising the question of whether the entire amount of each metal oxide, metal salt, or piroctone compound is included in calculating the ratio. Amending the claim to recite "the weight ratio" would obviate the rejection. This will not raise concerns over antecedent basis because the ratio of two substances in a composition is inherent to the composition.
Claim 21 recites “ a total amount of anionic and amphoteric surfactant”. This language renders the claim indefinite because it suggests that there could be greater than weight percentage of anionic and amphoteric surfactant, raising the question of whether the entire amount of each surfactant is included in calculating the ratio. Amending the claim to recite "the total amount" would obviate the rejection. This will not raise concerns over antecedent basis because the amount of two substances in a composition is inherent to the composition.
Regarding claims 3, 4, 6-8, 11-12, 14, 16, and 18, claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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 5 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 5 recites “wherein the metal oxide is selected from magnesium oxide, calcium oxide…”. The independent claim 1, however, recites “a metal oxide or a metal salt wherein the metal is selected from calcium, barium and strontium”. The magnesium oxide recited by the dependent claim 5 is not embraced by the limitations of claim 1 and therefore fails to further limit the subject matter of the claim upon which it depends.
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.
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 1-2, 6-14, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Scheunemann (U.S. Patent Application No. 2020/0179254, publication date: 6/11/2020), as evidenced by Rhodia (Jaguar C-162 Product Data Sheet, available 2008) and Humblebee and Me (Sodium Laureth Sulfate, available 2/14/2019).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Scheunemann teaches a hair treatment agent that may comprise piroctone olamine [0177] and cationic guar derivatives [0120]. The composition may include from 0.01 to about 10 wt.% of a calcium metal salt [0047].
Regarding claim 2, Scheunemann teaches that the metal salt may include calcium cations and chloride and carbonate anions ([0042] and [0044]).
Regarding claim 6, Scheunemann teaches that the hair treatment agent may comprise piroctone olamine [0177].
Regarding claims 7 and 16, Scheunemann teaches that the cationic guar polymer may be cationic guar hydroxypropyltrimonium chloride with a molecular between 100,000 and 2,000,000 daltons. The cationic charge density is at least about 0.4 meq/g [0117]. Rhodia teaches that guar hydroxypropyltrimonium chloride has a substitution level between 0.1-0.14 (pg. 1 Typical Properties).
Regarding claim 8, Scheunemann teaches that the cationic guar polymer may be guar hydroxypropyltrimonium chloride [0117].
Regarding claim 9, Scheunemann teaches that the cationic polymer may be present from 0.01 to 3 wt.% [0119].
Regarding claim 10, Scheunemann teaches that the composition may contain 0.01 to about 10 wt.% of anti-dandruff agents, including piroctone olamine [0176 and 0177].
Regarding claim 11, Scheunemann teaches that the composition may include from 0.01 to about 10 wt.% of a calcium metal salt [0047].
Regarding claim 12, Scheunemann teaches that the composition may include at least one anionic surfactant [0087].
Regarding claim 13, Scheunemann teaches that the composition may be a hair shampoo [0029].
Regarding claim 14, the intended use of Scheunemann’s composition is for care of the hair, and therefore the examiner considers the steps of applying the composition to the hair followed by rinsing to have been prima facie obvious.
Regarding claim 17, Scheunemann teaches that the composition may include from 0.01 to about 10 wt.% of a calcium metal salt [0047] and 0.01 to about 10 wt.% of anti-dandruff agents, including piroctone olamine [0176 and 0177]. This translates to a weight ratio of metal salt to anti-dandruff agent of 1:1 to 1000:1.
Regarding claim 18, Scheunemann teaches that the composition may contain alkyl ether sulfates of general formula R-(OCH2-CH2)n-OSO3X, in which R is a straight-chain or branched, saturated or unsaturated alkyl group having about 8 to about 24 C atoms, n is the number 0 or from about 1 to about 12, and X is an alkali, alkaline-earth, ammonium or alkanolamine ion [0100]. An exemplary hair shampoo comprises sodium laureth sulfate [0190]. Humblebee and Me teaches that sodium laureth sulfate is sodium lauryl ether sulfate (pg. 2 What is it?).
Regarding claim 19, Scheunemann teaches that the composition may contain at least one amphoteric surfactant [0101], including betaines such as cocoalkyl dimethylammonium glycinate [0103].
Regarding claims 20 and 21, Scheunemann teaches that the composition may contain from 0.5 to 20 wt.% of anionic surfactant [0099] and 0.3 to 20 wt.% amphoteric surfactants [0102].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1-2, 6-13, and 16-21, Scheunemann doesn’t teach a single embodiment or example meeting all limitation of the invention of claims 1-2, 6-13, and 16-21.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Within the broader scope of Scheunemann all of the limitations of the invention of claims 1-2, 6-13, and 16-21 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Scheunemann and arrive at this conclusion because such was contemplated by Scheunemann.
The Examiner notes that the weight percentage of calcium metal salt, cationic guar, and piroctone compound present in the composition and molecular weight and degree of substitution of cationic guar embraced by Scheunemann overlaps with the weight percentages, molecular weight, and degree of substitution embraced by the instant claims. See MPEP 2144.05 (I), which states: “in the case where the claimed ranges ‘overlap or lie outside ranges discloses by the prior art’ a prima facie case of obviousness exists”.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Scheunemann (U.S. Patent Application No. 2020/0179254, publication date: 6/11/2020), as applied to claims 1-2, 6-13, and 16-21, and further in view of Hahn (U.S. Patent No. 5,804,203, issue year: 1998).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Scheunemann renders obvious the relevant limitations of claim 1 above. Scheunemann also teaches that the metal salt present in the composition may include alkaline-earth metal cations [0041] and anions including acetate, glycolate [0042], sulfate, chloride, and carbonate [0044].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Scheunemann does not specifically teach the inclusion of strontium metal salts. However, this deficiency is cured by Hahn.
Hahn teaches that strontium chloride (col. 10 line 29) may be included in topical compositions such as shampoos/conditioners and other hair care products (col. 20 line 30) to reduce irritation induced by anti-dandruff and other active agents (claim 20).
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to include strontium chloride in the composition embraced by Scheunemann. One would have understood in view of Hahn that strontium chloride may be included in hair care products to reduce skin irritation rendered by active ingredients, including anti-dandruff agents. It would have been obvious to include such a compound in the composition embraced by Scheunemann. One of ordinary skill in the art of filing would have been motivated to include strontium chloride in the composition in order to reduce skin irritation rendered by active ingredients present in the composition. The artisan of ordinary skill in the art would have had reasonable expectation of success because Scheunemann teaches that alkaline-earth metal cations [0041] and anions including acetate, glycolate [0042], sulfate, chloride, and carbonate [0044] may be present in the composition.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Scheunemann (U.S. Patent Application No. 2020/0179254, publication date: 6/11/2020), as applied to claims 1-2, 6-13, and 16-21, and further in view of Hentrich (U.S. Patent Application No. 2017/0319876, publication year: 2017).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Scheunemann renders obvious the relevant limitations of claim 1 above. Scheunemann also teaches that cationic polysaccharide polymers increase the nourishing performance of the hair treatment agents [0110].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Scheunemann does not teach the inclusion of a metal oxide. However this deficiency is cured by Hentrich.
Hentrich teaches a hair cleaning agent comprising a cationic guar derivative [0063] and piroctone olamine [0164]. The composition may also include an inorganic calcium salt such as calcium chloride or calcium oxide to achieve the desired nourishing effects [0075].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (cationic polysaccharide and calcium oxide for enhancing the nourishing effect of the hair treatment compositions). See MPEP 2144.06 (II).
Claims 1, 2, 4, 6-14, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Wells (U.S. Patent Application No. 2003/0199403, publication year: 2003), as evidenced by Rhodia (Jaguar C-162 Product Data Sheet, available 2008) and Humblebee and Me (Sodium Laureth Sulfate, available 2/14/2019).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Wells teaches a shampoo composition that may include piroctone olamine [0194] and a cationic guar derivative [0010]. The composition may also include a pigment material such as calcium carbonate and barium sulfate as an additional component [0193]. The additional components may be present in a range from 0.001% to about 10% by weight [0076].
Regarding claims 2 and 4, Wells teaches that the composition may also include a pigment material such as calcium carbonate and barium sulfate as an additional component [0193].
Regarding claim 6, Wells teaches a shampoo composition that may include piroctone olamine [0194] and a cationic guar derivative [0010].
Regarding claims 7, 8, and 16, Wells teaches that the cationic guar polymer is preferably guar hydroxypropyltrimethylammonium chloride [0069]. The cationic guar derivative has a molecular weight of from about 100,000 to about 3,000,000. Rhodia teaches that guar hydroxypropyltrimonium chloride has a substitution level between 0.1-0.14 (pg. 1 Typical Properties).
Regarding claim 9, Wells teaches that the shampoo composition contains at least about 0.05 wt.% of a cationic guar derivative (Claim 1).
Regarding claims 10 and 11, Wells teaches that the additional components may be present in a range from 0.001% to about 10% by weight [0076].
Regarding claim 12, Wells teaches that the composition may contain an anionic surfactant [0035].
Regarding claim 13, Wells teaches a shampoo composition that may include piroctone olamine [0194] and a cationic guar derivative [0010].
Regarding claim 14, Wells teaches that the shampoo compositions of the invention are used in a conventional manner for cleansing hair or skin. An effective amount of the composition for cleansing the hair or skin is applied to the hair or skin and then rinsed off [0197]. The Examiner considers the term “skin” to read on the “scalp” limitation of the instant claims.
Regarding claim 17, the a ratio of metal oxide or metal salt to piroctone compound that is implicit in the disclosed percentages for these ingredients overlaps with the range required by the instant claims (see MPEP 2144.05).
Regarding claim 18, Wells teaches that the composition may contain sodium laureth sulfate [0045]. Humblebee and Me teaches that sodium laureth sulfate is sodium lauryl ether sulfate (pg. 2 What is it?).
Regarding claim 19, Wells teaches that the composition may contain amphoteric surfactants including cocoamphoacetate [0047].
Regarding claims 20 and 21, Wells teaches that the composition may contain 5-50% anionic surfactant [0035] and 0.5-20% by weight amphoteric surfactant [0046].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1, 2, 4, 6-14, 16, and 18-21, Wells doesn’t teach a single embodiment or example meeting all limitation of the invention of claims , 2, 4, 6-14, 16, and 18-21.
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Within the broader scope of Wells all of the limitations of the invention of claims 1, 2, 4, 6-14, 16, and 18-21 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Wells and arrive at this conclusion because such was contemplated by Wells.
The Examiner notes that the weight percentage of calcium metal salt, cationic guar, and piroctone compound present in the composition and molecular weight and degree of substitution of cationic guar embraced by Wells overlaps with the weight percentages, molecular weight, and degree of substitution embraced by the instant claims. See MPEP 2144.05 (I), which states: “in the case where the claimed ranges ‘overlap or lie outside ranges discloses by the prior art’ a prima facie case of obviousness exists”.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617