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 .
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 20-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al (2012/0164198) in view of Wu (2014/0112964)
Johnson et al discloses a shampoo composition comprising a detersive surfactant of anionic, zwitterionic, cationic and nonionic surfactants in amount from 5-50% (0021- 0025). Johnson et al further teach a gel network phase comprising pre-formed network component that may be lamellar or solid crystalline and wherein said network comprises a mixture of fatty amphiphiles, secondary surfactants and water or suitable solvent (0027-0029). The fatty amphiphile comprises fatty alcohols, fatty esters and fatty amides in amounts from 0.5% to 10% (0042-0044). The gel network component of the shampoo composition has a particle size from 10 microns to 150 microns in scale size (0034). Johnson et al further teach that said compositions are clear when a non- volatile silicone oil is employed or additional particles of polyolefins, fatty esters and hydrocarbon oils (0081-0082); water as a solvent in an amount from 20-95% (0067); and 0.001 to 10% of adjunct ingredient or cosmetic ingredients (0068). See examples 1- 10. With further respect to the process of making claim 20, Johnson et al teach that a pre-mix of the fatty amphiphile is added to the gel network to one or more detersive surfactants and aqueous carrier to form the shampoo composition (0097).
Johnson et al do not teach the size of the anhydrous particles being from 200 microns to 15000 microns as claimed.
It would have been obvious to the skilled artisan to optimize the size of the particle from a maximum of 150 microns as disclosed in Johnson to a minimum of 200 microns as claimed, given that optimization is with the purview of the artisan of ordinary skill. Moreover, in the absence of unexpected results optimization of ranges is held obvious.
Wu disclose a hydrogel particle immersed in aqueous carrier for skin and hair applications (0004-0007), where the compositions comprising surfactants and hydrogel components have a particle size of 1 to 500 microns (0017) and wherein additional particles utilized in said compositions such as microgels, and has particle sizes ranging from 0.01 to 2000 microns (0026-0028).
It would have been obvious to optimize the size of the gel network particles of Johnson et al up to 2000 microns as suggested by Wu since Wu teaches it is well known, in personal and hair cleansing compositions comprising anhydrous particles, to comprise hydrogels particles sizes up to 2000 microns. Moreover, Johnson et al includes hydrogels in the shampoo compositions. Wu further expresses that it is well established that his compositions tend to be stable and have a good ability to suspend particles for their intended purpose. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages" Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. V. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); Inre Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQa2d 1362 (Fed. Cir. 1997).
With respect to the KES-FB3-A Compression Test for semi-hydrated phases, it would have been obvious to the skilled artisan to encompass the same characteristics such as compression test for semi-hydrated phase a given that Johnson et al teach semi and hydrated phases and wherein similar components would encompass the same or similar characteristics in the absence of a showing to the contrary. Given that Johnson teaches the same components, within the same endeavor, one skilled would have been motivated to expect similar or the same characteristics.
Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established."; MPEP 2112.01
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Johnson examples are directed toward a pre-mix used to make their gel network and it contains more than 80% water and similarly Wu contains more than 70% water and therefore they do no teach or suggest the less than 30% water as claimed in claim 1 or less than 15% as claimed in claim 1.
First, Wu is relied upon only to show the use of a particle size in shampoo compositions may encompass the range of 200 microns to 15000 microns. Secondly, the amount of water in the pre-mix is suggested at levels up to 80% but the skilled artisan, as applicant teaches in his own disclosure at page 29, Discrete Particles examples 1-4, where applicant, like Johnson, broadly show pre-mix versions of water levels and lower amount of water levels when said discrete particles are added to the shampoo compositions. Here, at page 29, applicant clearly teaches water levels of 78-80% for his discrete particles to only show in examples 1-20 water levels under 20% when added to the shampoo composition. One skilled in the art would have been able to distinguish between pre-mix levels of water and final levels, which are taught by Johnson et al at data point of 20% (0067) and optimize accordingly in the absence of criticality to the contrary.
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 20-39 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 1-6of U.S. Patent No. 12118126 and 11628126, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap and make obvious a hair benefit composition comprising a fatty amphiphile, surfactant, discrete particle. The optimization of particle sizes would have been obvious to the skilled artisan.
Conclusion
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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761
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