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 claims
Claims 1-9 are original, pending, and under examination.
Priority
This application is a CON of PCT/EP2023/050373, filed on 01/10/2023. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. GERMANY 102022203485.6, filed on 04/07/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/06/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 2 and 8 are objected to because of the following informalities:
Claim 2 recites “in the at least one compound of formula (I) n represents the…”. Proper Syntax is “in the at least one compound of formula (I), n represents the…”.
Claim 8 recites “the at least one hair care substance is from glycerol monooleate”. Proper syntax is “the at least one hair care substance is glycerol monooleate”.
Appropriate correction is required.
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.
Claims 1-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that “formula (I) includes H3C—(CH2)5—CH(CH3)—O—CH2—CH(OH)—CH2OH (methylheptylglycerin)”. However, it is unclear whether methylheptylglycerin is required to be present as one of the compounds according to formula (I), or is merely identified as an exemplary species falling within formula (I), thus rendering the claim indefinite. Note that a chemical formula can define multiple compound structures that have the formula.
Claims 2-9 are also rendered indefinite for being dependent to indefinite claim 1.
Claim 2 is indefinite as claim 1 provides that at least one of the compound of formula I is methylheptylglycerin which is a compound also encompassed by the definitions of claim 2 along with other compounds that meet those limitations. It is unclear if applicant desires this to be an additional at least one compound of formula (I), wherein the additional at least one compound of formula (I) is not methylheptylglycerin, or if the claim limitation could be met simply by having methylheptylglycerin. For the purpose of compact prosecution if the prior art teaches another compound that reads on the formula I with these definitions besides methylheptylglycerin, it will read on the claim.
Claim 5 recites “further comprising 0.01-3 wt.% of at least one cationic polymer c)”. it is unclear whether the “at least one cationic polymer c)” in this claim may be the same species as the “c) 0.01-3 wt.% of at least one cationic polymer” taught in claim 1, or if it must be different. Accordingly, this claim is rendered indefinite. For the purpose of compact prosecution, it will be read as an additional at least one cationic polymer.
Claim 7 recites “further comprising 0.01-5 wt.% of at least one hair care substance d)”. it is unclear whether the “at least one hair care substance d)” in this claim may be the same species as the “d) 0.01-5 wt.% of at least one non-ethoxylated glycerol ester hair care substance” taught in claim 1, or if it must be different. Accordingly, this claim is rendered indefinite. For the purpose of compact prosecution, it will be read as an additional at least one hair care substance (d).
Claim 8 is also rendered indefinite for being dependent to indefinite claim 7.
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Stella et al. (US20160128930A1) in view of Genrich et al. (WO2021224509A2).
Stella et al. teaches a personal care composition including a surfactant, a liquid hydrophobic benefit agent, and a crystalline hydrophobic ethylene copolymer. [¶abstract]. Stella et al. teaches that the composition can be in the form of a shampoo [¶12].
Regarding claim 1,
Stella et al. teaches that the composition may include anionic surfactants, nonionic surfactants, amphoteric surfactants, zwitterionic surfactants, cationic surfactants, or mixtures thereof to aid in cleansing [¶¶2, 26]. Stella et al. teaches that these surfactants can be included in the compositions at concentrations ranging from 0.1% to 20%, by weight [¶26].
Stella et al. teaches that the composition can comprise a cationic polymer from about 0.001% to about 3% by weight of the personal care composition as a deposition aid [¶41]. Stella et al. states that such cationic polymers can be in combinations [¶43].
Stella et al. teaches that the composition can include a benefit phase, containing 0.5% to about 20% by weight, of a benefit agent [¶52], with such benefit agents including esters of glycerol such as palm oil and, corn oil, and olive oil [¶59], none of which are ethoxylated.
Regarding claim 3, see section a.i. above.
Regarding claim 4, see section a.i. above.
Regarding claim 5, See section a.ii. above.
Regarding Claim 6, Stella et al. teaches that guar hydroxypropyltrimonium chloride and Polyquaternium 10 can be used as cationic polymers [¶¶42, 43].
Regarding claim 7 and 8, Stella et al. teaches that the composition can also include a benefit phase, containing 0.5% to about 20% by weight, of a benefit agent [¶52], with such benefit agents including glyceryl monooleate as a preservative [¶91].
Regarding claim 9, Stella et al. teaches that the composition can be rinse-off formulations, in which the product can be applied topically to the skin and/or hair and then subsequently rinsed within seconds to minutes from the skin or hair with water, which encompasses or renders obvious the claimed contact time of 5 seconds to 5 minutes.
However, Stella et al. fails to teach the structural and concentration limitations of formula (I) per claims 1 and 2.
Genrich et al. discloses antimicrobial personal care products [¶abstract]. Genrich et al. teaches that the personal care product may be selected from the group consisting of shampoos, preferably antidandruff shampoos [p. 14, lines 1-3]. Genrich et al. teaches that methylheptylglycerin can be used at concentrations ranging from 0.005 to 15 wt.% for providing antimicrobial effects [p. 11, line 26; p. 12, line 1; p. 13, line 24-26]. Claim 8 of Genrich allows use in surfactant-based systems and other personal care products. Genrich allows for other compounds of the formula that includes methylheptylglycerin (see paragraphs 11-20).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the shampoo composition of Stella et al. to include methylheptylglycerin, as taught by Genrich et al., in an amount overlapping the claimed range. Stella et al. teaches personal care/shampoo compositions comprising surfactants, cationic polymers, and benefit agents suitable for rinse-off hair-care use. Genrich et al. concurrently teaches antimicrobial personal care products such as anti-dandruff shampoos, comprising methylheptylglycerin to provide antibacterial effects. A person of ordinary skill in the art would have thus been motivated to incorporate methylheptylglycerin into the shampoo composition of Stella et al. to provide or improve antimicrobial/antidandruff activity in the known shampoo base. Because both references are directed to personal care compositions as shampoos and use conventional and compatible ingredients, a person of ordinary skill in the art would have had a reasonable expectation of success in formulating the modified composition.
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 1-9 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over the following claims of U.S. co-pending application No. 18/906,741 (referred to as co-pending ‘741): 1, 3, 6, 10, 11, 12, and 13 (for present claim 1); 1, 4, 5 (for present claim 2); 10 (for present claim 3, 4); 11 (for present claim 5, 6); 12(for present claim 7, 8); 14 (for present claim 9).
Each of the above claims (or claim groups) of co-pending ‘741 teach all limitations of their corresponding claim(s) listed in the present application, except for the following difference: present claim 6 specifically lists the cationic polymers (i.e., Guar Hydroxypropyltrimonium Chloride, Polyquaternium-10, Polyquaternium-6, Polyquaternium-67, Polyquaternium-37), and present claim 8 specifically states the haircare substance to be glycerol monooleate. Co-pending ‘741 claim 11 teaches cationic polymers, and its specifications state that such cationic polymers include Guar Hydroxypropyltrimonium Chloride, Polyquaternium-10, Polyquaternium-6, Polyquaternium-37, Polyquaternium-67 [¶68]. Co-pending ‘741 claim 12 teaches a haircare substance, and its specifications specify such haircare substance to be glycerol monooleate [¶¶29, 73]. It would have thus been obvious to a person of ordinary skill in the art to select one or more of Guar Hydroxypropyltrimonium Chloride, Polyquaternium-10, Polyquaternium-6, Polyquaternium-67, Polyquaternium-37 as the cationic polymer of co-pending ‘741 claim 11, and glycerol monooleate as the hair care substance of co-pending ‘741 claim 12, because the co-pending ‘741 specification expressly identifies each as a suitable species for use in the claimed hair treatment agent, with such selections amounting to no more than the predictable selection of expressly disclosed species from the broader claimed classes. Therefore, the specifications of the co-pending application teach the elements of claim 6 and 8. Accordingly, the present claims differ from the claims of co-pending ‘741 only by an obvious variation that does not impart a patentable distinction.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims of co-pending ‘741 have not yet in fact been patented.
Conclusions
No claim is found allowable.
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Arya A. Bazargani, Ph.D.
Patent Examiner
Art Unit 1613
/MARK V STEVENS/ Primary Examiner, Art Unit 1613
Prosecution Insights