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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Status
Claims 1-4 are pending.
Specification
The abstract of the disclosure is objected to because it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama (JP 2016-210694 A, published 12/15/2016, cited in IDS filed 12/3/2024).
Maruyama teaches a hair styling composition comprising poly(N-acylalkyleneimine) bonded to any silicon atom constituting an organopolysiloxane segment via an alkylene group containing a heteroatom, preferably bonded to two or more silicon atoms via said alkylene group (par. [0074]-[0077]) (cf. claim 1). The poly(N-acylalkyleneimine) segment is shown as the following formula, wherein R12 is hydrogen, C1-22 alkyl, aralkyl, or aryl, and n is 2 or 3.
PNG
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96
162
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Greyscale
The bridging alkylene group containing a heteroatom may be any of the following:
PNG
media_image2.png
245
584
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Greyscale
Alkylene groups of the structure represented by formulas (i) and (ii) are most preferable (par. [0078]-[0079]) (cf. claim 2). Maruyama continues to teach that the weight-average (i.e. mass average) molecular weight of the organopolysiloxane segment constituting the main chain is 10,000-100,000 (par. [0076]) (cf. claim 1). Maruyama also teaches that the number-average molecular weight of the poly(N-acylalkyleneimine) segment is 500 to 1600 (cf. claim 1). Maruyama teaches that the ratio of the organopolysiloxane segment to the poly(N-acylalkyleneimine) segment is 65/35 to 82/18 (cf. claim 1) (In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Maruyama teaches in two examples the synthesis of one embodiment of the invention, and discloses that this polymer is named polysilicone-9 (par. [0119]-[0120]) (cf. claim 3). Polysilicone-9 is the polymer formed when the alkylene moiety is of formula (i) above. As formula (ii) above is also taught to be preferable, a polymer wherein the alkylene moiety is of formula (ii) is also within the disclosure. The resulting polymer is known as polyethyloxazoline amodimethicone (cf. claim 3). This composition as a whole is taught to be part of a hair styling product (par. [0009]-]0010]), which would be considered a hair cosmetic (cf. claim 4).
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference... has no place in... a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
The only difference between Maruyama and the instant claims is that Maruyama does not teach the specific combination of components as claimed in a single embodiment, or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Finke, but ‘such ‘picking and choosing within several variable does not necessarily give rise to anticipation. Where, as here, Maruyama does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, 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.” See MPEP 2141(1). Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within Maruyama's disclosure, to arrive at compositions such as that being sought.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant application to produce a resin for hair cosmetics comprising a poly(N-acylalkyleneimine) segment bonded to an organopolysiloxane segment via an alkylene group containing a heteroatom as taught by Maruyama, wherein the alkylene group is preferable selected from formula (i) or (ii) above, wherein the resulting polymer is termed polysilicone-9 (in the case of formula (i)) or polyethyloxazoline amodimethicone (in the case of formula (ii)), wherein the resin that comprises this polymer is used in a cosmetic hair styling product.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the reference.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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