DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
The listing of claims filed 03 April 2025, have been examined. Claims 18-37 are pending. Claims 1-17 are canceled and new claims 18-37 have been added.
Claim Objections
Claim 18, 20, 26, 35, and 37 are objected to because of the following informalities including typographical and grammatical errors:
Claim 18 recites "thet toal", which should be "the total". Claim 20 recites "devide", which should be "device". Claim 26 recites "propellent", which should be "propellant". Claim 34 recites "the at least one dispensing orifices", wherein "orifices" is plural but "one" is singular, and should be "the at least one dispensing orifice". Further, the antecedent basis in claim 18 recites “at least one dispensing orifice” (singular), as does dependent claims 28-31. Claim 35 recites "thet toal", which should be "the total". Claim 37 recites "sprayng" should be "spraying". Correction is required.
It is also noted that claim 29 is missing the "(New)" designation present in all other new claims.
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 18-36 are rejected under 35 U.S.C. § 103 as being unpatentable over Smail et al. (US-20170362014-A1; published 21 December 2017, hereinafter “Smail”) in view of Aubert and Stefani (WO-2020127759-A1; published 26 June 2020, hereinafter “Aubert”).
Smail teaches at least one C6-C16 branched alkane, including isodecane (C10 branched alkane) (¶[0030]) and at least one fatty substance other than C6-C14 branched alkane (¶[0024]-[0029], ¶[0076], ¶[0079], and the Example (¶[0234]), which includes isopropyl palmitate a fatty ester, dimethicone a silicone, octyldodecanol a fatty alcohol, and mineral oil a hydrocarbon; see also claim 2 and 3 wherein the composition comprises a fatty ester and at least one non-silicone oil and claim 17). Specifically, nonsilicone liquid fatty substances, fatty acid and/or fatty alcohol esters, silicones, or mixtures are taught in ¶[0029] and ¶[0076], wherein they include. Numerous fatty esters are listed in ¶[0037]-[0041] and esters of aromatic acids and esters of C8-C18 fatty alcohols as dimethiconol are taught (¶[0061]).
The fatty substance(s) is or are present in an amount ranging from 0.1-80%, even better still from 2-60%, and even more preferentially from 5-30% by weight, relative to the total weight of the composition, encompassing the instant claimed 0.1-15% fatty substance amount (¶[0080]). The Example contains 10.80% fatty substances (mineral oil liquid paraffin, dimethicone, octyldodecanol, and isopropyl palmitate) and 10.32% without the fatty substance alkane (mineral oil liquid paraffin) (¶[0234]), encompassing the instant claimed range of 0.1-15%.
Smail also teaches at least one propellant (¶[0087]-[0091]), including the volatile hydrocarbon butane (C3-C5 alkane; ¶[0088] and ¶[0089]), used in the Example embodiment at 40%, based on the total weight of the composition (¶[0232]-[0234]). Further, ¶[0092] teaches the use of propellant(s) in an amount ranging from 10-90% by weight, even better still from 15-80% by weight and even more preferentially from 20-75% by weight relative to the total weight of the composition, fully encompassing the instant claimed range of 30-70%.
Smail teaches an aerosol dispensing means comprising a body that is open at its two opposite axial ends and an engaging part that is open at its two opposite axial ends (¶[0004], ¶[0005], ¶[0012], ¶[0101], and Figures 1-3 and description at ¶[0174]-[0178] show the structure; see also claim 17). The dispensing orifice defined between engaging part and body is taught in ¶[0102] and ¶[0176]. At least one circumferential direction annular dispensing orifice with a constant width is taught in ¶[0105] and ¶[0112], supported by ¶[0187]. At least one dispensing orifice that is axially symmetrical around a dispensing axis and at least one dispensing orifice that is rotationally symmetrical are taught in ¶[0113]. A plurality of dispensing orifices from 2-80 at the engaging part with a cross-section ≥0.0025 mm² is taught in ¶[0105], ¶[0209] and ¶[0126].
Hair contains keratin fibers and Smail teaches a hair treatment process for improved hair sheen, while conferring manageability, lightness, and softness to the hair (¶[0002], ¶[0003], ¶[0010] and ¶[0011]). Sheen would be recognized by one of skill in the art as a conditioning benefit, wherein compositions imparting hair moisturization, softness, smoothness, manageability, and/or shine (gloss/luster/sheen) would be reasonably considered hair conditioning agents (sheen-enhancing compositions are often classified under the patent classification code (CPC) A61Q5/12 as preparations containing hair conditioners). Smail teaches that sheen products in the art are applied on dried hair (¶[0002]), wherein the compositions were sprayed onto a head of hair and after drying the hair is notes to look shiny (¶[0237] and ¶[0238]), implying spraying without rinsing. Smail does not explicitly teach that the composition decreases drying time.
Thus, Smail teaches the dispensing means structure with the exact body/engaging part through-opening design, annular orifice with constant width, axial and rotational symmetry, plurality of orifices, and cross-section ≥0.0025 mm². However, Smail does not explicitly require that composition contains a C6-C14 branched alkane at 30-70% by weight, relative to the total weight of the composition. The composition in the example uses mineral oil, fatty esters, dimethicone, fatty alcohol, and propellant, yet it is clear from the specification that other C6-C14 branched alkane (such as isododecane, wherein isodecane is specifically listed as an example in ¶[0030]), are encompassed within the invention. As such, there is no explicit concentration requirement for a C6-C14 branched alkane, however the broader teaching of the fatty substance(s) present in an amount ranging from 0.1-80% (¶[0080]), encompasses the instant claimed 30-70% C6-C14 branched alkane.
Aubert teaches an aerosol device containing a cosmetic composition comprising at least 30% by weight of liquid fatty substances for conditioning keratin fiber, in particular human keratin fibers such as the hair (Abstract). Aubert teaches 30-90% by weight of liquid fatty substances relative to the total weight of the composition (claim 3), wherein C6-C16 liquid hydrocarbons can be branched and are preferably alkanes including dodecane, isododecane, and isoparaffins, such as isohexadecane or isodecane, and mixtures thereof (page 4, lines 16-19). Examples 1 and 2 explicitly use explicitly use isododecane at 61.57% and 69.57% weight,based on the total weight of the composition, respectively. Fatty substance other than branched alkane (nonsilicone liquid, silicones, liquid fatty esters) are also included as dimethiconol at 5.13% and 5.8%, respectively (page 17, Table 1 and page 18, Table 2). Propellant types include air, nitrogen, carbon dioxide, dimethyl ether, and volatile hydrocarbons (claims 10 and 12), in the amount ranging from 0.1-40% by weight (page 14, lines 25 and 26). Aubert teaches that the conditioning composition may be applied to dry or wet keratin fibers that have optionally been washed with shampoo by dispensing from the aerosol device (page 16, lines 21-30). Aubert does not explicitly teach that the composition decreases drying time.
The only material difference between Smail and the instant claims is that Smail does not explicitly require a C6‑C14 branched alkane at 30‑70% by weight. However, Smail teaches that C6‑C16 branched alkanes (including isodecane, a C10 branched alkane) are suitable fatty substances (¶[0030]) and that fatty substances can be present in an amount ranging from 0.1-80% by weight (¶[0080]), which encompasses the instant claimed 30‑70% range. Aubert explicitly teaches compositions containing isododecane (a C12 branched alkane) at 61.57% and 69.57% by weight, and teaches that such compositions are applied for conditioning keratin fibers via an aerosol device.
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Smail for the dispensing means and general composition framework and Aubert for the specific requirement of ≥30% C6‑C14 branched alkane to arrive at the instant invention.
The hair care industry constantly seeks products that provide conditioning benefits (e.g., softness, shine, manageability) with faster drying and lighter feel. A person of ordinary skill in the art would be motivated to improve the Smail composition by incorporating a higher concentration of volatile branched alkane as taught by Aubert. A person of ordinary skill in the art would have been motivated to combine the aerosol dispensing means of Smail with the high‑branched‑alkane composition of Aubert because both references are directed to aerosol devices for treating hair (keratin fibers). Smail addresses hair sheen and manageability, both attributes of conditioning, and Aubert addresses general hair conditioning. A person of skill in the art would look to both references because they address the same technical problem of improving hair feel, appearance, and manageability via an aerosol device.
In addition, Smail expressly teaches that the composition may contain C6‑C16 branched alkanes (¶[0030]) and that fatty substances can be present up to 80% by weight (¶[0080]). The person of skill in the art would therefore be motivated to select a C6‑C14 branched alkane and increase its concentration to achieve faster drying and lighter feel, which are properties known to be associated with volatile branched alkanes (see evidentiary reference Lehman (US-20140137884-A1; published 22 May 2014)). Selecting a specific branched alkane (isododecane) from the broad class of C6‑C16 alkanes and adjusting its concentration to a range (30‑70%) is a matter of routine optimization for aerosol formulations.
A person of ordinary skill in the art would have had a reasonable expectation of success in combining Smail and Aubert because Smail already teaches that C6‑C16 branched alkanes are suitable for use in its composition (¶[0030]). Aubert already teaches that isododecane at 61‑70% by weight forms a stable composition that can be dispensed from an aerosol device and provides conditioning benefits. The mechanical compatibility of the Aubert composition with the Smail dispensing means is a matter of routine testing, not inventive experimentation.
Both references already teach that their respective compositions are suitable for aerosol dispensing and neither reference discourages the use of high concentrations of branched alkanes or the combination of a through‑opening diffuser with a high‑branched‑alkane composition. Thus, combining the Smail dispensing means with the Aubert composition yields predictable results, as an aerosol device that dispenses a hair conditioning composition containing a high concentration of volatile branched alkane for fast drying and light feel (see MPEP § 2143).
Aubert teaches conditioning keratin fibers (Abstract) and Smail teaches sheen, softness, manageability (¶[0011]), which a person of ordinary skill in the art would have recognized as conditioning benefits. Smail teaches application to dry hair (¶[0002]) and Aubert teaches application to wet or dry hair (Page 16, lines 21‑30). Smail implies no rinsing (sheen products are typically leave‑on) and Aubert does not require rinsing.
The dispensing means of Smail converts any composition into a fine spray. A person of ordinary skill in the art would understand that the Aubert composition, when dispensed through the Smail diffuser, would produce a spray, not a foam. The physical form is dictated by the dispensing means, not the composition itself.
Claims 35 and 37 are rejected under 35 U.S.C. § 103 as being unpatentable over Smail et al. (US-20170362014-A1; published 21 December 2017, hereinafter “Smail”) in view of Aubert and Stefani (WO-2020127759-A1; published 26 June 2020, hereinafter “Aubert”) and in further view of Lehman (US-20140137884-A1; published 22 May 2014).
Smail and Aubert teach the limitations of instant claim 35, as described above, from which instant claim 37 depends, however they do not explicitly teach the specific decreased drying time limitation of instant claim 37.
A composition resulting from the combination of Smail and Aubert, specifically, a composition containing ≥30% C6-C14 branched alkane (e.g., isododecane at 61-70% as taught by Aubert) would be expected to possesses the property of decreased drying time because of the high volatility and low boiling point of C6-C14 branched alkanes (e.g., isododecane), which rapidly evaporate at room temperature, and the low viscosity which would be expected to spread thinly and evaporate quickly. A person of skill in the art would understand that a composition containing a high concentration (≥30%) of a volatile C6-C14 branched alkane (e.g., isododecane) will dry faster than a composition without such alkanes or with less volatile components (e.g., mineral oil). This is a basic chemical principle, not an unexpected result.
Further, Lehman teaches a composition and method for reducing the drying time of wet hair by about 20-30% comprising applying a composition with a high concentration of a mixture of volatile branched alkane hydrocarbons (C13-C16 isoparaffin, C12-C14 isoparaffin, and C13-C15 alkane at about 90-96% by weight; Abstract).
Thus, it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to combine the teachings of Smail for the dispensing means and general composition framework and Aubert for the specific requirement of ≥30% C6‑C14 branched alkane, and that in using 30-70% of C6‑C14 branched alkane(s) in the composition the drying time of wet hair would be reduced, based on the teaching of Lehman that compositions comprising high concentrations of volatile branched alkane hydrocarbons reduce wet hair drying time.
A person of skill in the art seeking to formulate a fast-drying hair conditioning spray would predictably select a volatile solvent such as C6-C14 branched alkanes (e.g., isododecane) which were known as fast-drying, non-greasy carriers in cosmetic products (e.g., dry shampoos, leave-on conditioners, makeup removers) well before the effective filing date, as evidence by Lehman. A person of skill in the art would know that higher concentrations of volatile solvents lead to faster evaporation and that propellants (especially butane, which flashes to gas upon release) further accelerate drying by expanding and displacing water to accelerate evaporation upon release from the aerosol container.
Thus, decreased drying time is a natural consequence and predictable result of using ≥30% volatile branched alkane in an aerosol composition, even more so with the propellent butane. Adjusting the concentration of a known volatile component to achieve faster drying is routine optimization, not invention. No inventive skill is required to recognize this (see MPEP § 2112, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 and 421 (2007)). It is not suprising that a composition with 61-70% isododecane dries faster than water alone or than a composition with non-volatile oils.
Claim Rejections – Nonstatutory 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).
Claims 18, and 28-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9, 10, and 12-20 of US Patent No. 10,710,791 B2 (hereinafter “‘791”) in view of Aubert and Stefani (WO-2020127759-A1; published 26 June 2020, hereinafter “Aubert”). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
The structural dispensing-head limitations appear to represent the same inventive concept protected by ‘791 (e.g., dispensing-head architecture including body, engaging part/core, annular dispensing orifice, plurality of dispensing orifices, symmetry features, and aerosol cosmetic delivery) used for a particular composition for improved hair sheen. The composition appears to be an intended-use or payload distinction applied to an already patented dispensing platform (see In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013), regarding using a conventional or expected payload in a patented delivery platform).
The instant claims differ from the patented claims primarily in requiring that the aerosol device container contain a composition comprising a C6-C14 branched alkane, a fatty substance, and a propellant. Aubert teaches aerosol cosmetic compositions containing C6-C14 branched alkanes, fatty substances, and propellants for application to keratin fibers, including compositions comprising isododecane and related branched hydrocarbons, essentially the exact composition/device combination now claimed (see rationale provided for the rejection of claims 18 and 28-35 under 35 U.S.C. § 103 as being unpatentable over Smail in view of Aubert above).
Aubert demonstrates that use of that dispensing-head concept with branched-alkane aerosol conditioning compositions was contemplated within the same inventive enterprise. The presently claimed subject matter therefore represents only an obvious variant of the previously patented inventions. Selection of a known cosmetic composition for use in the patented dispensing device would have been an obvious modification and does not constitute a patentably distinct invention (see MPEP §804).
Thus, it would have been obvious to one of ordinary skill in the art to employ the known cosmetic compositions disclosed by Aubert in the patented dispensing device of ‘791 because both references are directed to aerosol delivery of cosmetic compositions to keratin fibers and seek improved application characteristics and cosmetic performance. The substitution of one known cosmetic aerosol composition for another in a known dispensing device represents the predictable use of prior-art elements according to their established functions and would have yielded no more than expected results (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Accordingly, claims 18 and 28-35 define only an obvious variation of the invention claimed in ‘791 and is therefore not patentably distinct therefrom.
Conclusion
No claims are allowed.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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