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 . 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.
Claim Rejections - 35 USC § 103 - Obviousness
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.
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al (US 2015/0050230 A1), in view of Paulo et al (US 2023/0414478 A1).
Yang disclosed compositions for treating hair [title and abstract], formulated as oil-in-water emulsions [0020]. Said compositions comprised:
stearamidopropyl dimethylamine [0029], at from about 0.01% to about 15% [0045];
hydrogenated castor oil/sebacic acid copolymer [0044], at from about 0.01% to about 15% [0045];
vegetable oils [0022];
nonionic surfactants, formed from a fatty acid [0030], where nonionic surfactants were included at 0.001 to about 10 % [0033, 0035];
polyols (e.g., glycols), such as glycerin, propylene glycol, ethoxydiglycol, glycerin, butylene glycol, pentylene glycol, hexylene glycol, caprylyl glycol, and the like, in amounts from about 0.001 to about 5% by weight;
and,
water [0021].
Yang generally taught vegetable oils, though was not specific an amount of a vegetable oil, as recited in claim 1(c). Furthermore, Yang generally taught excipients, typically associated with hair care products, at less than 10 % by weight [0041].
Paulo taught compositions for treating hair [abstract], comprising castor oil as a cosmetically or dermatologically acceptable excipient [0080, 0128].
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, it is prima facie obvious to select castor oil for incorporation into Yang’s hair treatment composition, based on its recognized suitability for its intended use as an excipient in hair treatment compositions, as taught by Paulo [0080,0128].
The instant claim 1 recites: (a) about 0.1 to about 8 wt.% of one or more cationic amidoamine surfactants; (b) about 0.1 to about 5 wt.% of one or more sebacic acid copolymers; (c) about 0.1 to about 10 wt.% of one or more vegetable oils; (d) about 0.1 to about 10 wt.% of one or more fatty acids; (e) optionally, one or more fatty alcohols; (f) about 5 to about 25 wt.% of one or more polyols with 2 to 8 carbon atoms.
The instant claim 16 recites wherein (a), (b), (c), and (d) are in combined amounts of about 2 to about 10 wt.%.
The instant claim 17 recites (a), (b), (c), (d), and (e) are in a combined amount of about 4 to about 12 wt.%.
The instant claim 19 recites (a) about 0.1 to about 8 wt. % of one or more cationic amidoamine surfactants; (b) about 0.1 to about 5 wt.% of hydrogenated castor oil/sebacic acid copolymer; (c) about 0.1 to about 10 wt.% of castor oil; (d) about 0.1 to about 10 wt. % of one or more fatty acids; wherein (a), (b), (c), and (d) are in combined amounts of about 2 to about 10 wt. %; (e) one or more fatty alcohols; wherein (a), (b), (c), (d), and (e) are in combined amounts of about 4 to about 12 wt. %; (f) about 5 to about 25 wt. % of one or more polyols with 2 to 10 carbon atoms; (g) water; (h) optionally, one or more cationic polysaccharides; and (i) about 0.1 to about 10 wt. % of one or more miscellaneous ingredients.
Yang, in view of Paulo, taught: stearamidopropyl dimethylamine at from about 0.01 % to about 15 %; hydrogenated castor oil/sebacic acid copolymer at from about 0.01 % to about 15 %; vegetable oils (e.g., castor oil, at less than 10 % by weight); nonionic surfactants formed from a fatty acid, where nonionic surfactants were included at 0.001 to about 10 %; polyols (e.g., glycols), such as glycerin, propylene glycol, ethoxydiglycol, glycerin, butylene glycol, pentylene glycol, hexylene glycol, caprylyl glycol, and the like, in amounts from about 0.001 to about 5 % by weight. Excipients, at less than 10 % by weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. MPEP 2144.05 A.
Yang, in view of Paulo, reads on claims 1-6, 16-17 and 19.
Claims 7-8 are rendered prima facie obvious because Yang taught cetyl alcohol [0022].
Claim 9 is rendered prima facie obvious because Yang taught 85 % to 99 % water [0021].
The instant claim 9 recites 65 % to about 90 % water. Yang taught 85 % to 99 % water. A prima facie case of obviousness exists because of overlap, as discussed above.
Claims 10-12 are rendered prima facie obvious because Yang taught guar hydroxypropyltrimonium chloride [0027].
Claim 13 is rendered prima facie obvious because Yang taught a pH from about 2 to about 10 [0038].
The instant claim 13 recites a pH of about 2.5 to about 5. Yang taught a pH from about 2 to about 10. A prima facie case of obviousness exists because of overlap, as discussed above.
Claims 14-15 are rendered prima facie obvious because Yang taught that the composition comprised an oil phase containing oils with a viscosity from about 10 to about 60,000 centistokes at 25° C [0022].
Regarding claim 15, Yang did not specifically teach a density difference of less than 0.07; however, at ¶ [0041], Yang taught viscosity and/or rheology modifiers, suggesting that viscosity was adjustable. It would have been prima facie obvious to the ordinarily skilled artisan to adjust the aqueous and oil phases of Yang, motivated by the desire to design an optimal composition. The ordinarily skilled artisan would have been guided by Yang’s teachings of viscosity and/or rheology modifiers.
The instant claim 14 recites a viscosity of about 200 to about 50,000 cP at 25 ºC. Yang taught about 10 to about 60,000 centistokes at 25° C. A prima facie case of obviousness exists because of overlap, as discussed above.
Further regarding the (e) limitation of claims 17 and 19, Yang taught cetyl alcohol [0022] (e.g., fatty alcohol) at from about 0.01% to about 15% by weight [0045]. All other percentages of the composition were previously discussed [please see above]. A prima facie case of obviousness exists because of overlap, as previously discussed.
The instant claim 18 is rendered prima facie obvious because silicones were not required ingredients.
Claim 20 is rendered prima facie obvious because Yang taught a method for repairing damaged keratin fibers, comprising applying to a keratin fiber in need thereof, in a topically acceptable vehicle, an effective amount of compounds disclosed therein by Yang [claim 1].
Nonstatutory Double Patenting
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/066,939.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/066,537.
Although the claims at issue are not identical, they are not patentably distinct from each other because the species (hair treatment composition) recited in the copending claims falls within the genus (hair composition) recited in the claims of the instant application, and thus read on the instant claims.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/549,503, in view of Yang et al (US 2015/0050230 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims require: formulation as an oil-in-water emulsion; 0.1 % to 5 % sebacic acid copolymers. The said limitations are not required of the copending claims.
Yang disclosed compositions for treating hair, formulated as oil-in-water emulsions. Said compositions comprised hydrogenated castor oil/sebacic acid copolymer at from about 0.01% to about 15%.
It would have been prima facie obvious to one of ordinary skill in the art to formulate the copending claims as an oil-in-water emulsion, and include therein from about 0.01% to about 15% hydrogenated castor oil/sebacic acid copolymer. The ordinarily skilled artisan would have been motivated to form a composition for treating hair, as taught by Yang et al.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CELESTE A RONEY whose telephone number is (571)272-5192. The examiner can normally be reached Monday-Friday; 8 AM-6 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CELESTE A RONEY/Primary Examiner, Art Unit 1612
Prosecution Insights