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
The instant application was filed 21 June 2024 and is the national stage entry for PCT/EP2022/087648 filed 22 December 2022. The Applicant claims priority to foreign application FR2114383 filed 23 December 2021. An English copy of the foreign application has not been provided. Therefore, the effective filing date for the instant application is 22 December 2022.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 24-42) and the PHA copolymer corresponding to Example 21 of the instant specification in the reply filed on 09 July 2026 is acknowledged.
Claims 26-30, 32, 43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09 July 2026.
Claim Objections
Claims 24 and 31 are objected to because of the following informalities: claim 24 contains an extra semicolon and claim 31 contains a comma instead of a period in “0,5%” and a comma followed by a semicolon “,;”. 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 38, 40, and 41 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 38 recites “active material” in parenthesis. The parenthetical recitation renders the claim indefinite because it is unclear whether the limitations in the parenthesis are part of the claimed invention or describing an example of preference. See MPEP 2173.05(d).
Claim 40 recites “hydrogenated polyisobutene” in parenthesis. The parenthetical recitation renders the claim indefinite because it is unclear whether the limitations in the parenthesis are part of the claimed invention or describing an example of preference. See MPEP 2173.05(d).
Claim 41 recites “c) polar protic or polar aprotic organic solvents.” The claim is unclear because claim 24 recites c) as “optionally one or more fatty substances.” The Applicant is recommended to clarify or change “c)” to a different letter.
Claim 40 contains the trademark/trade name “Parleam.” 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 trademark/trade name is used to identify/describe hydrogenated polyisobutene and, accordingly, the identification/description is indefinite.
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.
Claim(s) 24, 25, 31, 33-37, 39-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Portal et al. (WO 2020/128050 A1) and XJY Document.
Regarding claim 24, Portal teaches compositions for treating keratin (abs, para. 1) using PHA copolymers that may be represented by Units A and B (claim 1) (see below).
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R1 may be a linear alkyl radical with 5-9 carbons and R2 may be a linear alkyl radical with two fewer carbons than R1 (claim 1), corresponding to Applicant’s election (see below).
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Regarding claim 25, Portal teaches compositions for treating keratin (abs, para. 1) using PHA copolymers that may be represented by Units A and B (claim 1) (see below). The formulas for the Units as written are interpreted as having at least one unit each (m and n are integers greater than or equal to 1).
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Regarding claim 31, R1 if Unit A may be a C5-C28 alkyl group (claim 1) in a molar percentage ranging from 40-97.5%, Unit B may have a molar percentage ranging from 2-40%, and Unit C may have a molar percentage ranging from 0.5-20% (para. 18).
Regarding claim 33, Portal teaches formulas for Units A and B (claim 1), which are interpreted as represented by A12 wherein ALK2 is defined as a divalent linear/branched C1-C20 hydrocarbon-based radical.
Regarding claim 34, Units A and B in Portal are represented by Compound 16 (claim 1).
Regarding claim 35, the copolymers may be in an amount of 0.1-30% by weight (para. 18).
Regarding claim 39, Portal teaches oils from vegetables (para. 30).
Regarding claim 40, Portal teaches isohexadecane (para. 29).
Regarding claim 41, Portal teaches non-silicone oil (para. 27), such as ester oils, carbonate oils, and nonpolar hydrocarbon oils (abs).
Regarding claim 42, Portal teaches pigments in Example 12 (para. 43).
Portal does not teach silicone polymers (trimethylsiloxysilicate) in claims 24, 36, and 37. Portal does not teach an exact combination of ingredients recited in at least claim 24.
XJY teaches that Silicone MQ Resin (trimethylsiloxysilicate) imparts favorable advantages in hair care and cosmetic compositions (pg. 2), such as wash-resistance, long-lasting emollience, pigment adhesion, and good compatibility with other common cosmetic ingredients (pg. 2).
In regards to selecting the combination of ingredients wherein R1 may be a linear alkyl radical with 5-9 carbons and R2 may be a linear alkyl radical with two fewer carbons than R1 (claim 1), “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Portal teaches compositions for treating keratin (abs, para. 1) using PHA copolymers that may be represented by Units A and B (claim 1), whereas the claimed invention is directed towards one or more PHA copolymers represented by Units A and B and one or more silicone polymers, wherein Units A and B are different from one another. Since Portal teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Since Portal does not teach using silicone polymers in their composition in claims 24, 36, and 37, one of ordinary skill in the art would have been motivated to use XJY’s teaching of Silicone MQ Resin (trimethylsiloxysilicate) to impart favorable characteristics and properties in Portal’s hair care product. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Claim(s) 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Portal et al. (WO 2020/128050 A1) in view of XJY Document, as applied to claim(s) 24, 25, 31, 33-37, 39-42, and further in view of Humblebee.
In regards to claim(s) 24, 25, 31, 33-37, 39-42, Portal and XJY, as applied supra, is herein applied in its entirety for its teachings of compositions for treating keratin (abs, para. 1) using PHA copolymers that may be represented by Units A and B (claim 1).
Portal does not teach an amount of silicone polymer in claim 38.
Humblebee teaches a usage rate of 1-50% for trimethylsiloxysilicate (pg. 4).
Since Portal does not teach an amount of silicone polymer in claim 38, one of ordinary skill in the art would have been motivated to use Humblebee’s teaching of an appropriate amount of silicone polymers (trimethylsiloxysilicate) with a reasonable expectation of success. A person of ordinary skill in the art would have been led to use Humblebee’s amount of 1-50% for trimethylsiloxysilicate as a general range used in the industry. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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