DETAILED ACTION
Receipt is acknowledged of applicant’s Preliminary Amendment filed 12/3/2024.
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 .
Status of the Claims
Claims 1-11 have been amended. No claims were cancelled. Claims 12-18 are newly added. Accordingly, claims 1-18 remain pending in the application and are currently under examination.
Claim Objections
Claim 7 is objected to because of the following informalities: claim 7 recites “furhter” which appears to be a misspelling of “further”. Appropriate correction is required.
Claim Rejections - 35 USC § 101/112 (Use claims)
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 9 and 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to the use of a cosmetic product for temporarily shaping keratin-containing fibers which does not fall into any of the four categories of statutory subject matter (i.e., process, machine, manufacture, composition of matter; see MPEP 2106).
Claims 9 and 17 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 pre-AIA the applicant regards as the invention.
Said claims provide for the use of a cosmetic product for temporarily shaping keratin-containing fibers. Because the claims are neither written as product claims or method claims, it is unclear whether the claims are drawn to an intended use of a cosmetic product or whether the claims are drawn to a method of using the cosmetic product. The examiner is interpreting said claims as an intended use in terms of prior art.
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.
Claim 3 is 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.
Claim 3 recites, “the non-fully synthetic film-forming agent further comprises a cellulose, a cellulose derivative, a starch, a modified starch, a pullulan, and/or guar hydroxypropyl-trimonium chloride”. Claim 3 depends from claim 2. Claim 2 recites, “the at least one non-fully synthetic film-forming agent comprises a saccharide”. Claim 3 is indefinite because it is unclear if claim 3 is attempting to further limit the saccharide of claim 2 or if claim 3 is attempting to require an additional saccharide.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-18 are rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (USPN 8,609,078 B2, Dec. 17, 2013, hereafter as “Schweinsberg”) in view of JP 2005/507945 A, Mar. 24, 2005, machine translation, hereafter as “JP ‘945”).
The instant claims are drawn to a cosmetic product for temporarily shaping keratin-containing fibers, the cosmetic product comprising: at least one non-fully synthetic film-forming agent; and a propellant comprising nitrogen, wherein the cosmetic product is in the form of a foam; a use thereof; and method of using thereof.
Regarding instant claims 1, 2, 12 and 13, Schweinsberg teaches a cosmetic agent for temporary deformation of keratinic fibers comprising, in a cosmetic carrier: at least one starch (polysaccharide) modified with propylene oxide having an average molecular weight (weight average) from 100 to 1000 kDa (non-fully synthetic) (abstract). Schweinsberg teaches that the cosmetic carrier is a water-containing cosmetic carrier, alcoholic cosmetic carrier, or an aqueous alcoholic cosmetic carrier (col. 12, lines 25-28). Schweinsberg also teaches that “film-forming polymers” refer to those polymers that, when applied in a 0.01-20 wt% aqueous, alcoholic, or aqueous alcoholic solution, are capable of depositing a transparent polymer film on the hair (col. 5, lines 40-43). Schweinsberg further teaches that that the agent can be incorporated into a foam (col. 4, lines 3-5). Schweinsberg also teaches that the cosmetic agent is for temporary deformation of keratinic fibers, particularly human hair (col. 1, lines 61-63; col. 2, lines 3-4).
Schweinsberg is silent to a propellant comprising nitrogen (instant claim 1), wherein the propellant further comprises at least one of N2O, dimethyl ether, CO2, air and alkanes having 3 to 5 carbon atoms, propane, n-butane, isobutane, n-pentane, or isopentane (instant claim 7), wherein the amount of the propellant is sufficient to generate a pressure of 5 to 15 bar (instant claim 8), and wherein the amount of the propellant is sufficient to generate a pressure of 7 bar to 12 bar” (instant claim 9).
JP ‘945 teaches foaming cosmetic compositions including those used for hair [0001] and [0005]). Said foaming compositions can include a propellant ([0080]). JP ‘945 teaches suitable propellants including nitrogen, nitrous oxide, propane, butane, isobutane, pentane, air, carbon dioxide, dimethyl ether, and mixtures thereof ([0094]-[0095]). JP’945 also exemplifies internal container pressures of 12 bar [0088]).
Schweinsberg and JP ‘945 are both drawn to foamable hair products, thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a propellant such as nitrogen in combination with an additional propellant such as nitrous oxide, propane, butane, isobutane, pentane, air, carbon dioxide or dimethyl ether in an amount sufficient to generate a pressure of 12 bar into the invention of Schweinsberg, as suggested by JP ‘945, with a reasonable expectation of success. A skilled artisan would have been motivated to do so because JP ‘945 teaches propellants including mixtures thereof in amounts sufficient to generate a pressure of 12 bar as suitable and effective in forming foaming hair products. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (MPEP 2144.07).
Regarding instant claim 3, Schweinsberg and JP ‘945 teach the elements discussed above. Schweinsberg also teaches including at least one additional polymer that are polysaccharide-based polymers such as starch (col. 5, lines 46-53).
Regarding instant claim 5, Schweinsberg and JP ‘945 teach the elements discussed above. Schweinsberg also teaches that the cosmetic agent is preferably free of synthetic film-forming polymers (col. 5, lines 16-19).
Regarding instant claim 6, 14 and 15, Schweinsberg and JP ‘945 teach the elements discussed above. Schweinsberg also teaches that the polysaccharide (e.g., starch) modified with propylene oxide is preferably present in the cosmetic agent in an amount of from 1.0 wt % to 30 wt %, particularly 2.5 wt % to 20 wt %, based on weight of the agent (col. 5, lines 12-15). MPEP 2144.05 states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Because the claimed ranges (0.1-30%, 0.15-20%, and 0.2-15%) overlap with the ranges disclosed by the prior art (1-30% or 2.5-20%), a prima facie case of obviousness exists.
Regarding instant claims 9 and 17, said claims recite “use of...” and, as such, are being interpreted as intended use limitations. An intended use recitation does not alone show patentable distinction and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
Schweinsberg and JP ‘945 teach the elements discussed above. Schweinsberg also teaches the use of a cosmetic agent for temporary deformation and/or shape fixing of keratinic fibers, particularly human hair (col. 15, lines 29-32).
Regarding instant claims 10 and 18, Schweinsberg and JP ‘945 teach the elements discussed above. Schweinsberg also teaches a method for temporary deformation of keratinic fibers, particularly human hair, wherein a cosmetic agent of the first subject of the invention is applied onto the keratinic fibers (col. 15, lines 33-36).
Regarding instant claim 11, Schweinsberg and JP ‘945 teach the elements discussed above. Schweinsberg also teaches that it is preferred that after application, the cosmetic agents are not rinsed and are left on the fibers (col. 15, lines 38-40).
Thus, the combined teachings of Schweinsberg and JP ‘945 render the instant claims prima facie obvious.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Schweinsberg et al. (USPN 8,609,078 B2, Dec. 17, 2013, hereafter as “Schweinsberg”) in view of JP 2005/507945 A, Mar. 24, 2005, machine translation, hereafter as “JP ‘945”), as applied to claim 1 above, and further in view of Mueller et al. (US 2012/0207693 A1, Aug. 16, 2012, hereafter as “Mueller”).
The claimed invention is described above.
Schweinsberg and JP ‘945 teach the elements discussed above. Schweinsberg further teaches that synthetic polymers usually used in agents for temporary shaping are manufactured from corresponding synthetically accessible monomers and these monomers are obtained from fossil substances such as petroleum by conversion to the corresponding polymer modules, in some cases with expenditure of energy (col. 1, lines 34-39). Schweinsberg also teaches that in a more sustainable approach, it is desirable to reduce the amount or even replace the aforesaid synthetic polymers, however, only when the substitute exhibits those properties desired for the intended application and ensures a sufficiently stable hold and shape for the keratin-containing fibers (col. 1, lines 40-48).
Schweinsberg and JP ‘945 are silent to a particular embodiment comprising a fully synthetic film-forming agent.
Mueller teaches an agent for treating keratin-containing fibers, particularly human hair, comprising, in a cosmetically acceptable carrier, (a) at least one nonionic starch modified with propylene oxide (non-fully synthetic film-forming agent), and (b) at least one cationic film-forming and/or cationic setting polymer; use of the agents for temporary deformation of hair, particularly as an aerosol hair spray or aerosol hair foam (abstract). Mueller also teaches that the agent further contains (c) at least one nonionic film-forming and/or nonionic setting polymer ([0114]). Mueller further teaches the film-forming polymers can be of synthetic or natural origin ([0013]). Mueller also exemplifies embodiments combining at least one non-fully synthetic film-forming agent and a fully synthetic film-forming agent (see Tables 1 and 2).
The references are drawn to foaming hair compositions, thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a fully synthetic film-forming agent into the invention of Schweinsberg/JP ‘945, as suggested by Mueller, with a reasonable expectation of success. A skilled artisan would have been motivated to do so because while Schweinsberg teaches that it is desirable to reduce the amount or even replace synthetic polymers, Schweinsberg does not explicitly require the exclusion of synthetic polymers and Mueller teaches the combination of not-fully synthetic film-forming agents and fully synthetic film-forming agents are effective in producing foaming hair compositions.
Thus, the combined teachings of Schweinsberg, JP ‘945 and Mueller render the instant claim prima facie obvious.
Claims 1-7, 9, 10, 12-15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al. (US 2012/0207693 A1, Aug. 16, 2012, hereafter as “Mueller”).
The claimed invention is described above.
Regarding instant claims 1 and 12, Mueller teaches an agent for treating keratin-containing fibers, particularly human hair, comprising, in a cosmetically acceptable carrier, (a) at least one nonionic starch modified with propylene oxide (non-fully synthetic film-forming agent), and (b) at least one cationic film-forming and/or cationic setting polymer; use of the agents for temporary deformation of hair, particularly as an aerosol hair spray or aerosol hair foam (abstract). Mueller teaches that the agent contains at least one propellant and suitable propellants include N2O, dimethyl ether, CO2, air, alkanes having 3 to 5 carbon atoms such as propane, n-butane, isobutane, n-pentane, and isopentane, and mixtures thereof ([0325]-[0326]). It is noted that nitrous oxide (N2O) comprises nitrogen.
Mueller does not explicitly teach an embodiment comprising a propellant, the propellant comprising nitrogen.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a propellant comprising nitrogen such as nitrous oxide with a reasonable expectation of success. A skilled artisan would have been motivated to do so because Mueller teaches nitrous oxide is a suitable propellant for the invention. MPEPE 2144.07 states, “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination”.
Regarding instant claims 2, 3 and 13, Mueller teaches the elements discussed above. The at least one nonionic starch modified with propylene oxide comprises starch which is a polysaccharide, i.e., a saccharide.
Regarding instant claim 4, Mueller teaches the elements discussed above. Mueller further teaches that the agent further contains (c) at least one nonionic film-forming and/or nonionic setting polymer ([0114]). Mueller teaches the film-forming polymers can be of synthetic or natural origin ([0013]). Mueller also exemplifies embodiments combining at least one non-fully synthetic film-forming agent and a fully synthetic film-forming agent (see Tables 1 and 2).
Regarding instant claim 5, Mueller teaches the elements discussed above. It is noted that the instant specification defines “substantially free of fully synthetic film-forming agents” to mean that the cosmetic product comprises up to 5% fully synthetic film-forming agents ([0031]). Mueller exemplifies embodiments combining at least one non-fully synthetic film-forming agent and a fully synthetic film-forming agent , wherein the fully synthetic film-forming agent is present in an amount of 5% or less (see Tables 1 and 2).
Regarding instant claims 6, 14 and 15, Mueller teaches the elements discussed above. Mueller also teaches that the nonionic starch modified with propylene oxide is included in an amount from 0.1 wt % to 10 wt %, more preferably from 0.2 wt % to 5.0 wt %, very particularly preferably from 1.0 to 3.0 wt %, based on total weight of the agent ([0041]). Mueller also exemplifies the nonionic starch modified with propylene oxide in amounts of between 3.0-6.5% (Tables 1 and 2).
Regarding instant claim 7, Mueller teaches the elements discussed above. Mueller also teaches suitable propellants include N2O, dimethyl ether, CO2, air, alkanes having 3 to 5 carbon atoms such as propane, n-butane, isobutane, n-pentane, and isopentane, and mixtures thereof ([0326]). MPEP 2144.06(I) states, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine nitrous oxide with another propellant such as dimethyl ether, CO2, air, alkanes having 3 to 5 carbon atoms, propane, n-butane, isobutane, n-pentane, or isopentane with a reasonable expectation of success. A skilled artisan would have been motivated to do so because Mueller teaches each of the named propellants are suitable for the invention, i.e., functional equivalents known for the same purpose, mixtures of said propellants are also suitable for the invention, and it is prima facie obvious to combine equivalents known for the same purpose.
Regarding instant claims 9 and 17, said claims recite “use of...” and, as such, are being interpreted as intended use limitations. An intended use recitation does not alone show patentable distinction and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
Mueller teaches the elements discussed above including the explicit use of the agents for temporary deformation of hair (abstract).
Regarding instant claims 10 and 18, Mueller teaches the elements discussed above. Mueller also teaches a method for treating (e.g., temporary deformation) keratinic fibers, particularly human hair, wherein a cosmetic agent is applied onto the keratinic fibers (abstract; [0336]-[0337]).
Thus, the teachings of Mueller render the instant claims prima facie obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 8,609,078 B2 in view of JP 2005/507945 A, Mar. 24, 2005, machine translation, hereafter as “JP ‘945”).
The instant claims are described above.
The patented claims are drawn to a cosmetic agent for temporary deformation of keratinic fibers comprising, in a cosmetic carrier: at least one starch modified with propylene oxide having an average molecular weight (weight average) from 100 to 1000 kDa; and a method of using thereof. The patented claims further recite that the modified starch is present in an amount from 1-30 wt%; at least one additional polymer that is a polysaccharide-based polymer; the polysaccharide-based polymers are chosen from xanthan, dehydroxanthan, alginate, guar gum, gum arabic, locust bean gum, starch, chitosan, or mixtures; and the agent is in the form of a foam. Keratinic fibers is defined to encompass human hair (col. 2, lines 3-4).
The patent is silent to a propellant comprising nitrogen (instant claim 1), wherein the propellant further comprises at least one of N2O, dimethyl ether, CO2, air and alkanes having 3 to 5 carbon atoms, propane, n-butane, isobutane, n-pentane, or isopentane (instant claim 7), wherein the amount of the propellant is sufficient to generate a pressure of 5 to 15 bar (instant claim 8), and wherein the amount of the propellant is sufficient to generate a pressure of 7 bar to 12 bar” (instant claim 9).
JP ‘945 teaches foaming cosmetic compositions including those used for hair [0001] and [0005]). Said foaming compositions can include a propellant ([0080]). JP ‘945 teaches suitable propellants including nitrogen, nitrous oxide, propane, butane, isobutane, pentane, air, carbon dioxide, dimethyl ether, and mixtures thereof ([0094]-[0095]). JP’945 also exemplifies internal container pressures of 12 bar [0088]).
The patent and JP ‘945 are both drawn to foamable hair products, thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a propellant such as nitrogen in combination with an additional propellant such as nitrous oxide, propane, butane, isobutane, pentane, air, carbon dioxide or dimethyl ether in an amount sufficient to generate a pressure of 12 bar into the patented invention, as suggested by JP ‘945, with a reasonable expectation of success. A skilled artisan would have been motivated to do so because JP ‘945 teaches propellants including mixtures thereof in amounts sufficient to generate a pressure of 12 bar as suitable and effective in forming foaming hair products. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (MPEP 2144.07).
Thus, the subject matter of the instant claims are unpatentable over the subject matter of the patented claims in view of JP ‘945.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 8,609,078 B2 in view of JP 2005/507945 A, Mar. 24, 2005, machine translation, hereafter as “JP ‘945”), as applied to claim 1 above, and further in view of Mueller et al. (US 2012/0207693 A1, Aug. 16, 2012, hereafter as “Mueller”.
The instant claims are described above.
The patented claims are described above.
The patent and JP ‘945 are silent to a particular embodiment comprising a fully synthetic film-forming agent.
Mueller teaches an agent for treating keratin-containing fibers, particularly human hair, comprising, in a cosmetically acceptable carrier, (a) at least one nonionic starch modified with propylene oxide (non-fully synthetic film-forming agent), and (b) at least one cationic film-forming and/or cationic setting polymer; use of the agents for temporary deformation of hair, particularly as an aerosol hair spray or aerosol hair foam (abstract). Mueller also teaches that the agent further contains (c) at least one nonionic film-forming and/or nonionic setting polymer ([0114]). Mueller further teaches the film-forming polymers can be of synthetic or natural origin ([0013]). Mueller also exemplifies embodiments combining at least one non-fully synthetic film-forming agent and a fully synthetic film-forming agent (see Tables 1 and 2).
The patent and references are drawn to foaming hair compositions, thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a fully synthetic film-forming agent into the invention of the patent/JP ‘945, as suggested by Mueller, with a reasonable expectation of success. A skilled artisan would have been motivated to do so because Mueller teaches the combination of not-fully synthetic film-forming agents and fully synthetic film-forming agents are effective in producing foaming hair compositions.
Thus, the subject matter of the instant claims are unpatentable over the subject matter of the patented claims in view of JP ‘945 and Mueller.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 8,603,447 B2 in view of JP 2005/507945 A, Mar. 24, 2005, machine translation, hereafter as “JP ‘945”).
The instant claims are described above.
The patented claims are drawn to an agent for treating keratin-containing fibers comprising, in a cosmetically acceptable carrier: at least one nonionic starch (polysaccharide) modified with propylene oxide (non-fully synthetic film-forming gent), and at least one nonionic film-forming and/or nonionic setting polymer having at least one structural unit chosen from the structural units of formulae (M1) to (M6),
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wherein R is a hydrogen atom or a methyl group, R' is a hydrogen atom or a (C1 to C4) acyl group, R'' and R'''' are, mutually independently, a (C1 to C7) alkyl group or a hydrogen atom, R''' is a linear or branched (C1 to C4) alkyl group or a (C2 to C4) hydroxyalkyl group; wherein the modified nonionic starch has an average molecular weight (weight average) of 100 to 2000 kDa; and wherein the modified nonionic starch has a propylene oxide content of 1 to 20 wt %, based on weight of the modified starch; and a method of using thereof. The patented claims further recite that the nonionic film-forming and/or nonionic setting polymers (b) are present in an amount from 0.1 wt % to 20.0 wt % (overlapping range with up to 5% “substantially free of” range in instant claim 5), based on weight of the agent; the nonionic film-forming and/or nonionic setting polymer is at least one polymer chosen from: polyvinylpyrrolidone, and copolymers of N-vinylpyrrolidone and vinyl esters of carboxylic acids having 2 to 18 carbon atoms; the agent is in the form of an aerosol foam or aerosol spray; and foaming an agent according to claim 1 with the use of a delivery apparatus into foam, and applying the resulting foam onto the keratin-containing fibers. Keratinic fibers is defined to encompass human hair (col. 1, lines 22-25). It is also noted that the patent recites, “agents according to the present invention and products containing these agents, particularly aerosol hair foams or aerosol hair sprays, impart a very strong, durable hairstyle hold to the treated hair even though the hair remains flexible” (col. 22, lines 4-7).
The patent is silent to a propellant comprising nitrogen (instant claim 1), wherein the propellant further comprises at least one of N2O, dimethyl ether, CO2, air and alkanes having 3 to 5 carbon atoms, propane, n-butane, isobutane, n-pentane, or isopentane (instant claim 7), wherein the amount of the propellant is sufficient to generate a pressure of 5 to 15 bar (instant claim 8), and wherein the amount of the propellant is sufficient to generate a pressure of 7 bar to 12 bar” (instant claim 9).
JP ‘945 teaches foaming cosmetic compositions including those used for hair [0001] and [0005]). Said foaming compositions can include a propellant ([0080]). JP ‘945 teaches suitable propellants including nitrogen, nitrous oxide, propane, butane, isobutane, pentane, air, carbon dioxide, dimethyl ether, and mixtures thereof ([0094]-[0095]). JP’945 also exemplifies internal container pressures of 12 bar [0088]).
The patent and JP ‘945 are both drawn to foamable hair products, thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a propellant such as nitrogen in combination with an additional propellant such as nitrous oxide, propane, butane, isobutane, pentane, air, carbon dioxide or dimethyl ether in an amount sufficient to generate a pressure of 12 bar into the patented invention, as suggested by JP ‘945, with a reasonable expectation of success. A skilled artisan would have been motivated to do so because JP ‘945 teaches propellants including mixtures thereof in amounts sufficient to generate a pressure of 12 bar as suitable and effective in forming foaming hair products. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (MPEP 2144.07).
Thus, the subject matter of the instant claims are unpatentable over the subject matter of the patented claims in view of JP ‘945.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/871441 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the copending claims and the subject matter of the instant claims are significantly overlapping.
The instant claims are described above.
The copending claims are drawn to a cosmetic product for temporarily shaping keratin-containing fibers, the cosmetic product comprising; at least one non-fully synthetically produced film-forming agent; a cosmetic carrier; and at least one care agent, wherein the care agent is selected from the group consisting of shea butter, mango butter, cocoa butter, avocado butter, shea oil, capuacu butter, illipe nut butter, kokum butter, sal butter, murumuru butter, olive butter, aloe butter, ghee, coconut oil, organic nilotica shea butter, and mixtures thereof; a use thereof; and a method of using thereof. The copending claims further recite he at least one non-fully synthetically produced film-forming agent comprises a saccharide; the at least one non-fully synthetically produced film-forming agent further comprises a cellulose, a cellulose derivative, a starch, a modified starch, a pullulan, and/or guar hydroxypropyltrimonium chloride; further comprising a fully synthetic film-forming agent; wherein the at least one non-fully synthetically produced film-forming agent and the fully synthetic film-forming agent are from 0.05 wt. % to 30 wt. % of the total weight of the cosmetic product; wherein the cosmetic product is substantially free of a fully synthetic film-forming agent; further comprising at least one propellant; wherein the propellant comprises at least one of N2O, dimethyl ether, CO2, nitrogen, air, alkanes having 3 to 5 carbon atoms, propane, n-butane, isobutane, n-pentane, or isopentane; wherein the amount of propellant is sufficient to generate a pressure of 5 bar to 15 bar in a container containing the cosmetic product; wherein the cosmetic product is left on the keratin-containing fibers and is not rinsed out; wherein the keratin-containing fibers are human hair; wherein the cosmetic product is in the form of a foam; wherein the saccharide comprises a monosaccharide, a disaccharide, a polysaccharide, and/or a biopolymer that is chemically modified; wherein the at least one non-fully synthetically produced film-forming agent and the fully synthetic film-forming agent are from 0.15 wt. % to 15 wt. % of the total weight of the cosmetic product; and the method comprising applying the cosmetic product of claim 1 to the keratin-containing fibers in the form of a foam.
It is noted the use of open-ended comprising language which allows are additional unrecited elements (MPEP 2111.03(I)).
While the copending claims do not recite each of the elements in combination, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine each of the recited elements with a reasonable expectation of success because the copending application teaches that each element is suitable in the cosmetic product for temporarily shaping keratin-containing fibers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
All claims have been rejected; no claims are allowed.
Correspondence
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/CASEY S HAGOPIAN/Examiner, Art Unit 1617
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