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 present application is a National Stage entry of International application PCT/GB2023/050581 filed 03/13/2023, which claims the benefit of Foreign application GB2203778.2 filed 03/18/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, filed 08/30/2024, in the matter of Application N° 18/842,860. Said documents have been entered on the record. The Examiner further acknowledges the following:
Claims 1-20 are pending.
Claims 1-20 are presented for examination and rejected as set forth below.
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 4-6, 11 and 14 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.
Claims 4, 6, and 11 recite “approximately”, which is a relative term, and is not defined in a standardized way by the Specification for consistent interpretation. The Examiner suggests “approximately” should be removed and considers the claim values as if the term “approximately” was not present. See MPEP 2173.05(b)(i).
Claims 4-5, 11, and 14 recite numerical “wt%”, but it has not been made clear if the wt% is in relation to another component or based on the total weight of the composition. Thus, these claims are incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a1)/(a2) as being anticipated by Clermont-Gallerande (WO199906010A2; machine translation provided).
Applicant’s claims are directed to a hair styling composition comprising: chitosan; and a cationic acrylate polymer. The dependent claims further narrow limitations of the independent claim. Note that “hair styling” is an intended use and does note afford patentable weight in a composition claim.
Clermont-Gallerande teaches decorative cosmetic O/W emulsion having lasting effect which adheres well to the skin, and which can be applied in all branches of decorative cosmetics, and is additionally color-stable and can contain high proportions of particle-shaped materials, while having very good humidity characteristics. (abstract).
Regarding claims 1-3 and 6: Clermont-Gallerande teaches an eyeliner composition comprising 0.5% chitosan PCA (i.e., note that PCA means pyrrolidone carboxylic acid salt of chitosan) and 0.5% polyquaternium-37 (pg 9 of translation, Example 5) (i.e., therefore exhibiting a 1:1 ratio, which reads on the instant ratio of claim 6).
Therefore, the Art anticipates the claims.
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.
Claims 1-6, 8-12, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Clermont-Gallerande (WO199906010A2; machine translation provided).
As discussed above, Clermont-Gallerande teaches a cosmetic composition comprising a 1:1 ratio of chitosan and polyquaternium-37.
Regarding claim 4-5: Clermont-Gallerande teaches gelling agents in 0.1 to 0.8 wt% (Clermont-Gallerande - claim 2), that can be polyquaternium-37 and/or chitosan PCA (Clermont-Gallerande – claim 5). With regard to the numerical range, note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Regarding claim 8-11: Clermont-Gallerande teaches stearyl and cetearyl alcohol ( - claim 8), where by example, the cetearyl alcohol amount in cosmetic compositions ranges from 0.1-4.0 wt% (Example 4 on pg 8 and Example 6 on pg 9) (i.e. encompassing the instant amount of claim 11).
Regarding claim 12: Clermont-Gallerande teaches incorporation of an emulsifier (Example 4 on pg 8).
Regarding claim 16: Clermont-Gallerande teaches an oil phase that comprise different oils such as jojoba oil, that are known in the Art as conditioning agents (pg 4) (i.e., similar to the oils of Applicant’s Specification on pg 7).
Regarding claim 20: Clermont-Gallerande teaches a pH value of 3.0 to 8.0. (Clermont-Gallerande - claim 1) (i.e., encompassing the instant range of claim 20).
Thus, the Art teaches the obviousness of the instant limitations of the claim scope referred to above.
Claims 1-6, 8, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Brandt (US20010022967A1), as evidenced by Bermudez Vico (WO2012025615A2).
Brandt teaches hair styling compositions that comprise one or more holding polymers, one or more saccharides, and carrier (abstract), whereby the ratio of saccharide to holding polymer is in a fixed ratio [0013] in mousse, gel, foam etc. form [0011]. Brandt teaches compositions that advantageously impart improved feel and conditioning to the treated hair, have improved set retention, and display little or no flaking [0014] that are easy to apply to wet or dry hair and also detangle and condition the hair [0017]. Note, that Brandt teaches ingredients “normally found in hair styling agents” [0024], and furthermore optional components can include, for example: pH adjusting agents, viscosity and rheology modifiers, pearlescers, opacifiers, suspending agents, preservatives, coloring agents, dyes, proteins, herb and plant extracts, polyols and other moisturizing and/or conditioning agents [0027].
Regarding claims 1-5: Brandt teaches the saccharide chitosan (Brandt – claim 9) in 0.1-10 wt% (Brandt – claim 4), and the holding polymers of acrylate/ammonium methacrylate copolymers (Brandt – claim 8), and polyquaternium-37 (Brandt – claim 8) in 0.01 to 1.25 wt% (Brandt – claim 4). As evidenced by Bermudez Vico, Polyquaternium 37 is the INCI name used for poly (2- methacryloxyethyltrimethylammonium chloride) a methacrylated polymer with quaternized pendant groups (thus, polyquaternium-37 reads on instant claim 2) (pg 14, lines 4-6). With regard to the numerical range, note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
Regarding claim 6: Brandt teaches the saccharide (i.e., chitosan) and the holding polymer (i.e., polyquaternium-37) have a ratio of about 0.7:1 (reads on 4:9 to 8:3 of instant range claim 6, whereby the instant range is normalized to 1 is 0.44:1 to 2.67:1) (Brandt – claim 7).
Regarding claim 8: Brandt teaches incorporation of viscosity modifiers [0027], and also demonstrates viscosities from <100 to >3000 cps ([0039], Table 1) (i.e., although the frequency of the measurement is not discussed).
Regarding claim 15: Brandt teaches a carrier such as water or water/alcohol (Brandt – claim 1, [0010]), including methanol, ethanol, n-propanol, or isopropanol [0023]. The phrase “for plasticizing the chitosan” is an intended use, and is not given patentable weight in a composition claim, because the patentability of a composition is based on the ingredient mixture of the composition.
Regarding claim 16: Brandt teaches incorporation of conditioning agents [0027].
In summary, Brandt teaches the elements and desirability for the components for the instant composition, as described above, and thus, its obviousness. It must be remembered that “[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)). “[W]hen 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.). Thus, Brandt teaches the combination of art-known elements (i.e., chitosan and various cationic acrylate polymers), according to their disclosed beneficial properties (i.e., hair fixatives) with the resultant product nothing more than one would expect from their combination (i.e., hair styling compositions).
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Brandt (US20010022967A1), as evidenced by Bermudez Vico (WO2012025615A2), as applied to 1-6, 8, and 15-16, and in further view of Tamareselvy (US20130164242A1).
As discussed above, Brandt teaches many elements of the instant claim set composition. Note that Brandt teaches the general obviousness of ingredients “normally found in hair styling agents” [0024], and furthermore optional components can include, for example: pH adjusting agents, viscosity and rheology modifiers, pearlescers, opacifiers, suspending agents, preservatives, coloring agents, dyes, proteins, herb and plant extracts, polyols and other moisturizing and/or conditioning agents [0027].
However, Brandt does not explicitly teach the chelating agent (instant claim 7), the specific viscosity modifier and amount (instant claims 9-11), the specific emulsifier and amount (instant claims 12-14), and shear-thinning behavior and values that support the behavior (instant claims 17-19), and pH (instant claim 20). Note that the Examiner uses the definition known to a PHOSITA for “shear-thinning fluid” to mean a fluid that decreases in viscosity, as applied shear rate or stress increases.
Tamareselvy teaches hair styling compositions that comprise polymers (abstract), and can include polyquaternium -32 and polyquarternium-37 as fixative agents [0081] and/or polysaccharides [0083]. Tamareselvy’s compositions teach the chelating agent [0175] (reads on instant claim 7), the specific viscosity modifier of stearyl alcohol and cetearyl alcohol [0070] in 1-5 wt% amount [0067] (reads on instant claims 9-11), the specific emulsifier glyceryl stearate and/or PEG-100 stearate [0147] in 1-25 wt% amount [0148] (reads on instant claims 12-14), and shear-thinning behavior (i.e., available through the Prior Art hair fixative polymers [0005, 0008], reads on the instant “shear-thinning fluid” phrase of instant claim 17) originating from specific polymer selection [0005, 0008, 0011, 0019, 0074]. Thus, Tamareselvy merely teaches common ingredients beneficially used in shear-thinning, hair styling compositions, which are ingredients generally optionally included in Brandt’s hair styling compositions.
Furthermore, Tamareselvy teaches at a frequency of 1 Hz (or 1 s-1) [0192] providing viscosities of 90 to 145,000 mPa-s (Table 5, [0217]) (note 1 cp = 1 mPa-s) (reads on instant claims 17-19, as discussed below), and a pH of desired choice [0170], with examples of 6.2-8.07 (Table 5, [00214, 0217]) (instant claim 20). Because 1 s-1 is between 0.1 s-1 and 100 s-1 and furthermore 90 to 145,000 cps broadly encompasses the instant values of claims 18-19, then the instant viscosities are obvious. With regard to the numerical ranges, note that "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (see 2144.05(I)).
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Brandt with the ingredients and properties of Tamareselvy, because both references are directed to hair styling compositions, and Brandt teaches the obviousness of ingredients typical in hair styling agents [0024] and furthermore optional components can include, for example: pH adjusting agents, viscosity and rheology modifiers, pearlescers, opacifiers, suspending agents, preservatives, coloring agents, dyes, proteins, herb and plant extracts, polyols and other moisturizing and/or conditioning agents [0027]. The 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).
Furthermore, Tamareselvy teaches that beneficial shear-thinning behavior originates from polymer selection [0005, 0008, 0011, 0019, 0074] and enables optimization of a viscosity range that encompasses the instant ranges of claims 18-19. Thus, selection of a particular polymer and amount would provide an expected effect of improved shear-thinning behavior.
Finally, where the specific details of the instant rotational rheometer measurement differ from the Prior Art, note that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJAN PRAGANI whose telephone number is (703)756-5319. The examiner can normally be reached 7a-5p EST (M-Th).
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/R.P./Examiner, Art Unit 1614 6/29/2026
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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