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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/9/24 was filed in a timely manner. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1-9, 11-14 and 16-21 is/are rejected under 35 U.S.C. 102a1, a2 as being anticipated by Bekemeier et al (US 2016/0271023 A1 hereafter Bekemeier).
Bekemeier discloses a topical hair treatment formulation comprising a non-ionic surfactant comprising a fatty ethoxylates or polyethoxylated monoester where in the surfactant has an HLB from 12 to 17 [0069-0070], meeting limitations of claims 1. The composition further comprises sebum control agents such as sarcosine and glycerin [0066, 0233, Table 7], meeting limitations of claims 1 and 7. The sebum controlling agent is present about 8% [Example 6], meeting limitations of claim 5 and 19. The surfactant is present about 0.4 % to 4% [0104, Example 13], meeting limitations of claims 1, 4, 17 and 18. The composition comprises at least 40% water, and up to 82% depending the form of the scalp treating formulation [Table 1, Example 12], meeting limitations of claims 1, 6 and 20. The formulation further comprises moisturizers [0110, 0117, claims], meeting the limitations of claims 8. The final pH of the formulation is 5.5 [0216], meeting the limitations of claim 9 and 21. The composition can be present as a leave on conditioner [Example 9], and have a viscosity below 100 cps, depending on the amount of thickening agents [0033, Examples], meeting limitations of claims 1. The C12-18 fatty alcohols include oleth-10 [0118] and polysorbate-20 [0224], meeting limitations of claim 2, 3 and 16. The formulation are applied to the hair and for treatment methods [0179-0181], meeting the limitations of claims 13 and 14. Some embodiments are solutions [Example 12]. Some embodiments comprise lipophilic materials such as oils and measure about 10% [Example 5]. These disclosures render the claims anticipated.
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.
Claim(s) 1-14 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over the disclosures of Bekemeier et al (US 2016/0271023 A1 hereafter Bekemeier).
As discussed above the Bekemeier discloses a hair care composition comprising a non-ionic surfactant a sebum control active agent and a water. The components are present in ranges that overlap the instant claims, however the exact concentrations would be achieved through optimization of ranges. The general condition of the claims have been met and 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 In re Aller, 220 F.2d 454 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10 and the recitation that the only surfactant present is the formulation is the non-ionic surfactant. Formulations of Bekemeier are present with only the non-ionic surfactants and no other types of surfactants, however the formulation also comprise a mixture of said surfactants. As the nonionic surfactants are the only surfactants present it would be reasonable to expect that formulation would be possible and useable only comprise a single compound and not a mixture of compounds and the effect of each would be the same. The Office does not have the facilities for examining and comparing applicant’s product with the product of the prior art in order to establish that the product of the prior art does not possess the same material structural and functional characteristics of the claimed product. In the absence of evidence to the contrary, the burden is upon the applicant to prove that the claimed products are functionally different than those taught by the prior art and to establish patentable differences. See Ex parte Phillips, 28 U.S.P.Q.2d 1302, 1303 (PTO Bd. Pat. App. & Int. 1993), Ex parte Gray, 10 USPQ2d 1922, 1923 (PTO Bd. Pat. App. & Int.) and In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
With these aspects in mind it would have been obvious to follow the suggestions of the Bekemeier patent to form a stable hair treatment formulation. It would have been obvious to optimize the ranges of the patent to arrive at the concentration of the instant claims through routine experimentation and it would have been obvious to use a single surfactant when multiple surfactants of the same class are used for the same effect. One of ordinary skill int eh art would have been motivated to follow these teachings and suggestions in order to arrive at the instantly claimed invention with an expected result of a stable hair treatment formulation useful in reduce sebum build up.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICAH PAUL YOUNG whose telephone number is (571)272-0608. The examiner can normally be reached Monday through Friday, 9:00 am to 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICAH PAUL YOUNG/ Primary Examiner, Art Unit 1618
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