DETAILED ACTION
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 . 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 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.
Election/Restrictions
Applicant’s election without traverse of Group II (claims 29-42) and the species of form (shampoo) in the reply filed on 17 August 2026 is acknowledged.
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.
Claims 29-30, 32, and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sawdayee (PCT Patent Application Publication WO 2019/145963).
Sawdayee discloses herbal-based compositions for hair and scalp treatments (page 1, second paragraph). The herbs can include boiling in water a mixture of herbs (paragraph bridging pages 15 and 16), the herbs including aniseed myrtle (Syzygium anisatum) (paragraph bridging pages 16 and 17), which is an alternate name for Anetholea anisita. The composition can be applied topically (claim 13).
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.
Claims 31, 33-36, and 38-42 are rejected under 35 U.S.C. 103 as being unpatentable over Sawdayee (PCT Patent Application Publication WO 2019/145963).
Sawdayee discloses herbal-based compositions for hair and scalp treatments (page 1, second paragraph). The herbs can include boiling in water a mixture of herbs (paragraph bridging pages 15 and 16), the herbs including aniseed myrtle (Syzygium anisatum) (paragraph bridging pages 16 and 17), which is an alternate name for Anetholea anisita. The composition can be applied topically (claim 13).
Instant claims 31 and 42 recite the concentration of the extract, and Sawdayee does not disclose a specific amount. However, generally differences in concentration and tempera-ture will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05(II)(A).
Instant claims 33-36 and 38-40 recite limitations that the method treats dandruff. Sawdayee suggests including anti-dandruff agents (paragraph bridging pages 14 and 15), and such an agent would provide for treatment of dandruff. Thus, Sawdayee discloses compositions comprising the instantly claimed combination (anti-dandruff agents and aniseed myrtle (Syzygium anisatum)) and together these would provide a composition as instantly claimed. However, Sawdayee is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been prima facie obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art. Since this modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions a prima facie case of obviousness exists. See MPEP 2141.
Instant claim 41 recites the form is a shampoo, and this is taught by Sawdayee (claim 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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