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 .
Claim Status
Claims 1-20 are pending.
Priority
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The foreign priority documents are not in English. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 1.28.25, 4/11/25, 9/11/25 and 7/16/26 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Horie et al. (US20170007526; of record) and Kadir et al. (WO2016033012) and Shiroya et al. (US 2020/0163864; of record) and Takahiro et al. (WO2014104340; English translation provided).
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
Applicant claims, for example:
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Examiner comment: MPEP 2173.05(b)(I) states: “when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree.” In the present case, the scope of the term is understood when read in light of the specification. The metes and bounds of “higher alcohol” are expressly taught in [0074].
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic shampoo/conditioner research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from shampoo/conditioner components and combinations of components that are intended for application to the skin and hair— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 7, 8, 10, 14 and 20, Horie et al. teach a hair cosmetic composition comprising Components (A) and (B): (A) a cationic polymer; and (B) and anionic polymer (Claim 1) wherein a mass ratio of Component (A) to Component (B), (A)/(B), is 0.1 or more and 30 or less (Claim 7), which overlaps the claimed range of 4.5 or more and 20 or less and 5.5 or more and 16 or less. Horie et al. teach that Component (A) is preferably at least one selected from the group consisting of a polymer comprising a diallyl quaternary ammonium salt [0105]. Horie et al. teach a hair cosmetic further comprising a surfactant selected from the group consisting of an anionic surfactant (component B2), a nonionic surfactant (component G), a cationic surfactant (component E), and an amphoteric surfactant (Claim 11) and a higher alcohol (component F) having 12 or more and 30 or less of carbon atoms (Claim 12). Horie et al. also teaches adding silicones include polydimethylsiloxanes (component D), modified silicones (e.g., amino-modified silicone (component C), fluorine-modified silicone, alcohol-modified silicone, polyether-modified silicone, epoxy-modified silicone, alkylmodified silicone, and aminopolyether-modified silicone), cyclic polydimethylsiloxanes, and highly polymerized methylpolysiloxane emulsion. In particular, polydimethylsiloxanes, polyether-modified silicones, amino-modified silicone, cyclic polydimethylsiloxane, aminopolyethermodified silicone [0070]. Horie et al. teach: “These silicones may be used alone or in combination of two or more thereof. The content of the silicones in the hair cosmetic is preferably 0.1 % by mass or more and more preferably 0.5% by mass or more from the viewpoint of providing sufficient effects” [0071].
Regarding claim 3, Horie et al. teach adding (meth)acrylic acid [0085].
Regarding claim 11, Horie et al. teach adding component (G) polyethylene glycol [0067] and polyvinylpyrrolidone polymers (e.g., polyvinylpyrrolidone, vinylpyrrolidone/vinyl acetate copolymer) [0085].
Regarding claims 12, 16 and 20, Horie et al. teach wherein a content of Component (A) is 0.01 % by mass or more and 20% by mass or less (Claim 4), which overlaps the claimed range of 0.01 mass% or more and 3.0 mass% or less and 0.2 mass% or more and 1.0 mass% or less.
Regarding claims 13, 17 and 20, Horie et al. teach wherein a content of Component (B) is 0.01 % by mass or more and 20% by mass or less (Claim 6), which overlaps the claimed range of 0.005 mass or more and 0.5 mass or less and 0.2 mass% or more and 0.1 mass% or less.
Regarding claim 15, Horie et al. teach that the content of the poIyol, which includes polyethylene glycol, in the hair cosmetic is preferably 0.1% by mass or more [0067-0068], which overlaps the claimed range of 0.1 mass% or more and 1.0 mass% or less.
Regarding claims 18-19, Horie et al. teach that the content of the silicones in
the hair cosmetic is preferably 0.1 % by mass or more from the viewpoint of providing sufficient effects, and 20% by mass or less [0071], which overlaps the claimed ranges of 0.1 mass% or more and 2.0 mass% or less and 0.5 mass% or more and 8.0 mass% or less.
Regarding claims 1, 2, 6 and 20, Kadir et al. teach hair conditioning compositions with cationic polymers including polyquaternium 37 (methacryloyl ethyltrimethylammonium chloride polymer) and polyquaternium 52 (an N,N-dimethylaminoethyl methacrylic acid diethyl sulfate-N,N-dimethylacrylamide-polyethylene glycol dimethacrylate copolymer) (Claim 20). Since Applicant employs these materials (Page 68 of the specification), then it is presumed that they meet the structural and functional parameters claimed.
Regarding claims 1, 3, 4 and 20, Shiroya et al. teach adding the anionic polysaccharide alginic acid to cosmetic compositions containing cationic polymers (Claims 1 and 5; [0208]).
Regarding claims 1, 5 and 20, Takahiro et al. teach cosmetic compositions with cationic polymers and polydimethylsiloxane (Claims) and guide the artisan to polydimethylsiloxane KHS-3 because: “These silicones can give the hair a good smoothness, a moist feeling, and an effect that the hair dries quickly.” (Page 9). Takahiro et al. teaches: “The dimethyl polysiloxane, calculated from a viscosity of 5 mm .sup.2 / s in accordance with the touch, can be used to a viscosity of 10 million mm .sup.2 / s often supplied as an emulsion, from 5000 to 10,000,000 mm .sup.2 / S, more preferably 50,000 to 10 million mm .sup.2 / s. Commercially available products include KHS-3 manufactured by Shin-Etsu Silicone.” (Page 9).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Horie et al. is that Horie et al. do not expressly teach a cationic polymer component (A) having a viscosity when in a 1 mass% aqueous solution form at 30°C of 1800 mPa·s or more and 25000 mPa·s or less with the structure as in claim 2 or is a methacryloylethyltrimethylammonium chloride polymer and an N,N-dimethylaminoethylmethacrylic acid diethyl sulfate-N,N-dimethylacrylamidepolyethylene glycol dimethacrylate copolymer or adding anionic polysaccharide alginic acid. This deficiency in Horie et al. is cured by the teachings of Kadir et al. and Shiroya et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the claimed cationic polymers and anionic polysaccharide alginic acid, as suggested by Kadir et al. and Shiroya et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because Horie et al. suggest adding cationic polymers and polyquaternium 37 and polyquaternium 52 are well-known by the ordinary artisan, as taught by Kadir et al., for use in such cosmetic compositions. They are merely alternative cationic polymers intended for the same purpose with the same predictable result. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, “Where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious." In re Fout 675 F.2d 297, 301 (CCPA 1982). Similarly, Horie et al. suggest adding anionic polymers and Shiroya et al. guide the artisan to the anionic polysaccharide alginic acid as suitable for that purpose. The ordinary artisan would have reasonable expectation of success in so doing and achieve the claimed compositions.
The difference between the instant application and Horie et al. is that Horie et al. do not expressly teach wherein the component (D) comprises: (Dl) a dimethylpolysiloxane having a viscosity at 25''C of 1000 mm2/s or more and 10000 mm2is or less; and (D2) a dimethylpolysiloxane having a viscosity at 25 C of 300000 mm2/s or more and 5000000 mm2/s or less. This deficiency in Horie et al. is cured by the teachings of Takahiro et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the claimed polydimethylsiloxane (D1), as suggested by Takahiro et al., to the cosmetic product of Horie et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because Horie et al. suggests adding a polydimethylsiloxane and Takahiro et al. guide the artisan to commercially available PDMS KHS-3, which is what Applicant employs (specification [0138]). The ordinary artisan would do so for the benefits taught by Takahiro et al. with a reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Y Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613
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