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 .
It is to be noted that currently, the effective filing date of instant claims 1 and 17 is November 29, 2023 (on which the provisional application 63/603,910 was filed) whereas the effective filing date of instant claim 24 is not November 29, 2023 since the provisional application does not provide adequate support for the subject matter of instant claim 24 (the provisional application does not even mention magnesium hydroxide, coconut oil, arrowroot powder, sodium bicarbonate or sunflower seed wax).
In view of applicant’s amendment, previous 102(a)(1) rejection on claims 1-4 and 15 over Patel (GB’616), previous 103 rejection on claims 11 and 12 over Patel (GB’616), previous 103 rejection on claims 5 and 6 over Patel (GB’616) in view of Lassila et al’397, previous 103 rejection on claims 7-8 over Patel (GB’616) in view of Janchitraponvej et al’080 or Vanllerberghe et al’532, previous 103 rejection on claims 9-10 over Patel (GB’616) in view of Carson et al’634, previous 103 rejection on claims 13-14 over Patel (GB’616) in view of Tiiips’s internet article “Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters” and previous 103 rejection on claim 16 over Patel (GB’616) in view of FAIG et al’696, Lassila et al’397, Janchitraponvej et al’080 or Vanlerberghe et al’532, Carlson et al’634 and Tiiips’s internet article “Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters” are hereby withdrawn.
However, instant 103 rejection on claim 17 over Patel (GB’616) in view of Lassila et al’397, Janchitraponvej et al’080 or Vanlerberghe et al’532, Carson et al’634 and Tiiips’s internet article “Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters” still stands (applicant did not make any amendment on claim 17).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Claim Objections
Claims 16 and 17 are objected to because of the following informalities: in both of claims 16 and 17, applicant need to change each of the percentages (“%”s) to --- % by weight ---. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: on each of lines 2, 3, 4, 5 and 6 of instant claim 17, applicant need to change “between” to --- of ---. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: on line 2, applicant need to change “comprises” to --- has ---. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The newly added Claim 20 recites that the formulation comprises about 1 wt.% to about 5 wt.% propanediol. Such range for the amount of propanediol constitutes a new matter. Present specification has support only for “about 3 wt.%”.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The newly added Claim 22 recites that the formulation comprises about 0.5 wt.% to about 5.0 wt.% polyglyceryl-10 caprylate/caprate. Such range for the amount of polyglyceryl-10 caprylate/caprate constitutes a new matter. Present specification has support only for “about 2 wt.%” or “about 4 wt.%”.
Claim 24 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant range “about 20 wt.% to about 30 wt.%” (as recited in claim 24) for the amount of magnesium hydroxide constitutes a new matter (present specification or the specification of the parent application 18/961,739 has support only for about 24 wt.% or about 14 wt.%).
Instant range “about 15 wt.% to about 25 wt.%” recited in claim 24 for the amount of coconut oil constitutes a new matter (present specification or the specification of the parent application 18/961,739 has support only for about 18 wt.% or about 34 wt.%).
Instant range “about 15 wt.% to about 25 wt.%” recited in claim 24 for the amount of arrowroot powder constitutes a new matter (present specification or the specification of the parent application 18/961,730 has support only for about 20 wt.% or about 18 wt.%).
Instant range “about 5 wt.% to about 15 wt.%” for the amount of shea butter constitutes a new matter (present specification or the specification of the parent application 18/961,730 has support only for about 3 wt.%, about 5 wt.% or about 10 wt.%).
Instant range “about 5 wt.% to about 15 wt.%” for the amount of caprylic/capric triglyceride constitutes a new matter (present specification or the specification of the parent application 18/961,730 has support only for about 4.25 wt.%, about 5 wt.% or about 10 wt.%).
Instant range “about 5 wt.% to about 10 wt.%” for the amount of sodium bicarbonate constitutes a new matter (present specification or the specification of the parent application 18/961,730 has support only for about 6 wt.%).
Instant range “about 5 wt.% to about 15 wt.%” for the amount of sunflower seed wax constitutes a new matter (present specification or the specification of the parent application 18/961,730 has support only for about 8 wt.% or about 10 wt.%).
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 16 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.
In claim 16, applicant recite “10) cooling the mixture to 20 – 40oC and Quantum Satis to 100%;” It is the Examiner’s understanding that “Quantum Satis to 100%” means sufficient quantity to make 100%. However, claim 16 needs to specify or identify what is being added to make 100%. Is it water, fragrance, citric acid or is it something else (see for example, step (12) in [0067] or step (8) in [0068] of present specification)? Appropriate correction is required.
Claims 1, 5-8, 11, 12, 16 and 18-23 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 the limitation "”based on total weight of the composition" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 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 24 recites the limitation "”based on total weight of the composition" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 5-8, 11, 12, 16 and 19-23 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.
Each of instant claims 5-8, 11, 12, 16 and 19-23 recites the limitation "the formulation" in line 1 (claim 16 recites “the formulation” on the 1st line after “11) mixing the mixture until uniform,”). There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ).
In Example 1, Patel teaches a shampoo composition (d), which contains 50 wt.% of Detergent B (27% aqueous solution of sodium salt of 65 ethoxylated sulfate cocyl alcohol), 1 wt.% of Erucamide, 2 wt.% of Methylethyl ketone, 1 wt.% of Diethyl urea, 2.5 wt.% of Coconut diethanolamide, 0.1 wt.% of Formaldehyde and Water added to make the total weight of the composition to 100 wt.%.
In such composition, the total amount of water would be the sum of the water added later to make 100 wt.% (i.e., 43.4 wt.%) and the water that was already contained in the 50 wt.% of Detergent B (i.e., 50 x 73% = 36.5 wt.% (since Detergent B is 27% aqueous solution of sodium salt of 65 ethoxylated sulfate cocyl alcohol, this means that the amount of water present in Detergent B is 73%)), which is 79.9 wt.% for the total amount of water. Thus, Patel teaches instant amount about 60-95 wt.% for the water)
With respect to instant limitation “about 0.5 wt.% to about 3.0 wt.% glyceryl monostearate”, although Patel states (pg.2, lines 27-38) that conditioning agents, such as fatty acids containing 12-22 carbon atoms and their esters, can be used in its shampoo composition (and glyceryl monostearate is a fatty acid ester of 21 carbon atoms), Patel does not explicitly teach the use of glyceryl monostearate. Puracy (internet article on “Glyceryl stearate”) teaches (see under the headings Haircare and Why Puracy Uses Glyceryl stearate) that glyceryl stearate is used in haircare products to trap moisture and keep hair from drying out and becoming damaged (and thus functioning as a conditioning agent) and teaches that it is also used as an emulsifier allowing product (such as haircare product) to stay blended. Although Puracy does not explicitly teach the amount of glyceryl stearate to be used in a shampoo product, as evidenced by CN 106214594 A (see claim 7) or Li (see claim 2), glyceryl monostearate (another name for glycerol monostearate) is known to be used in a shampoo product in the amount of 0.5-2 wt.% or in the amount of 0.5-5 wt.%. Since Patel teaches (pg.1, lines 71-79, pg.2, lines 27-38) that its shampoo composition contains a conditioning agent as well as one or more conventional shampoo adjuvants, it would have been obvious to one skilled in the art to use glyceryl stearate in Patel’s shampoo composition (d) in the amount of 0.5-2 wt.% or 0.5-5 wt.% as Patel’s conditioning agent and/or an emulsifier with a reasonable expectation of trapping moisture and keeping hair from drying out and becoming damaged while allowing the shampoo product to stay blended. Both of those ranges overlap with instant range about 0.5 wt.% to about 3.0 wt.% for the amount of glyceryl monostearate, thus rendering instant range prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, Patel in view of (i) Puracy and (ii) CN’594 or Li renders obvious instant limitation “about 0.5 wt.% to about 3.0 wt.% glyceryl monostearate”.
Patel does not teach the use of instant glyceryl/polygyceryl-3 caprylic/capric/lactic/lauric acid esters. Tiiips’s internet article “Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters” (referred to as “Tiiips” hereinafter) teaches (see the 1st paragraph of the article) that glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters is a complex mixture of esters primarily used in the cosmetic industry as an emulsifier, skin conditioner, and moisturizer. Tiiips teaches (see the paragraph under the heading Chemical Composition and Structure) that this complex mixture combines the moisturizing and conditioning benefits of polyglycerin-3 and glycerin with the fatty acids (caprylic, capric, lauric) and lactic acid (Tiiips teaches that polyglycerin-3 and glycerin provide excellent moisture-retention capabilities, while the fatty acids and lactic acid contribute emollient and stabilizing properties). Tiiips further teaches (see the paragraph under the heading Applications) that the complex mixture is widely used in cosmetic products as an effective emulsifier and conditioner, helping to blend and stabilize the mixture of oil and water components, and improving the product’s overall texture and application properties. Since Patel teaches that its shampoo composition contains a conditioning agent as well as one or more conventional shampoo adjuvants, it would have been obvious to one skilled in the art to use glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters in Patel’s shampoo composition (d) in order to provide moisturizing and conditioning befits as well as stabilizing properties.
As to instant ranges for the amounts of erucamide (about 1.5-3.0 wt.%) and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters (about 0.5 wt.% to about 5.0 wt.%), first of all, Patel’s erucamide is being used as a conditioning agent in Patel’s composition (see pg.2, lines 44-47), and Patel gives a general teaching (pg.1, lines 71-79) that its shampoo composition contains 0.25-25 wt.% of a conditioning agent. Under such general guideline given by Patel, and considering that Patel’s (total) amount (0.25-25 wt.%) for the conditioning agent would include erucamide, glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters as well as 0.5-2 wt.% or 0.5-5 wt.% of glyceryl monostearate (as discussed above), instant ranges for the amounts of erucamide and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Thus, Patel in view of (i) Puracy, (ii) CN’594 or Li and (iii) Tiiips renders obvious instant claim 1 (instant limitation “wherein the erucamide is present as a non-cationic slip-modifying agent” merely describes intended use or purpose of erucamide and thus carries no patentable weight).
With respect to instant claim 11, as discussed above, in Patel’s shampoo composition (d), erucamide is being used as a conditioning agent. Among other preferred examples of a conditioning agent that can also be used in its shampoo composition, Patel teaches cetyl alcohol (see pg.2, lines 44-47). Because both erucamide and cetyl alcohol are being individually taught in Patel to be useful for the same purpose (i.e., useful as a conditioning agent), it would have been obvious to one skilled in the art to use a combination of erucamide and cetyl alcohol (as conditioning agents) in Patel’s shampoo composition (d) with a reasonable expectation of further enhancing the conditioning effect of the shampoo composition (d). MPEP 2144.06 states that “[i]t 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.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Thus, Patel in view of (i) Puracy (ii) CN’594 or Li and (iii) Tiiips renders obvious instant claim obvious instant claim 11.
With respect to instant claim 12, as discussed above, Patel teaches that the conditioning agent is to be used in the amount of 0.25-25 wt.% in its shampoo compositions. Under such general teaching given by Patel, and considering that Patel’s conditioning agent would include erucamide and cetyl alcohol (as well as glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters and 0.5-2 wt.% or 0.5-5 wt.% of glyceryl monostearate), instant range 0.0001-20 wt.% for the amount of cetyl alcohol would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, Patel in view of (i) Puracy, (ii) CN’594 or Li and (iii) Tiiips renders obvious instant claim obvious instant claim 12.
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ) as applied to claim 1 above, and further in view of (iv) Lassila et al (US 2006/0293397 A1).
Patel’s shampoo composition (d) does not contain glycerin. However, Patel teaches (pg.1, lines 71-79) that its shampoo composition also includes one or more conventional shampoo adjuvants. As evidenced by Lassila et al ([0036]), glycerin is well known in the art as a humectant used in a typical shampoo formulation, and Lassila teaches that such humectant can be used in the amount of up to 15 wt.%. It would have been obvious to one skilled in the art to use up to 15 wt.% of glycerin as a humectant in Patel’s shampoo composition (d) with a reasonable expectation of providing moisture for hair. The range up to 15 wt.% overlaps with instant range of claim 6 (about 0.0001-20 wt.%) for the amount of glycerin, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Patel in view of (i) Puracy, (ii) CN’594 or Li and (iii) Tiiips, and further in view of (iv) Lassila renders obvious instant claims 5 and 6.
Claim(s) 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ) as applied to claim 1 above, and further in view of (iv) Janchitraponvej et al (5,756,080) or Vanlerberghe et al (4,349,532).
Patel’s shampoo composition (d) does not contain hydroxypropylmethylcellulose. However, as already stated above, Patel teaches (pg.1, lines 71-79) that its shampoo composition contains one or more conventional shampoo adjuvants and also teaches (pg.2, lines 51-54) that such conventional shampoo adjuvants can include thickening agents. Although Patel does not name any specific thickening agent, as evidenced by Janchitraponvej (col.12, lines 37-48) or Vanlerberghe (col.5, lines49-52, lines 58-62, claims 28 and 31), hydroxypropylmethylcellulose is well known in the art as a thickener used in shampoo composition in order to increase the viscosity of the composition to provide a desired esthetic effect, and such thickener is used in the amount of up to 5 wt.% by total weight of the shampoo composition. It would have been obvious to one skilled in the art to use up to 5 wt.% of hydroxypropylmethylcellulose as a thickener in Patel’s shampoo composition (d) with a reasonable expectation of providing a desired esthetic effect by increasing the viscosity of the composition. The range up to 5 wt.% overlaps with instant range about 0.0001 – 20 wt.% for the amount of hydroxypropylmethylcellulose, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Patel in view of (i) Puracy, (ii) CN’594 or Li and (iii) Tiiips, and further in view of (iv) Janchitraponvej or Vanlerberghe renders obvious instant claims 7 and 8.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ) as applied to claim 1 above, and further in view of (iv) Lassila et al (US 2006/0293397 A1), (v) Janchitraponvej et al (5,756,080) or Vanlerberghe et al (4,349,532) and (vi) FAIG et al (US 2021/0401696 A1).
As already discussed above, Patel’s shampoo composition (d) of Example 1 contains 50 wt.% of Detergent B (27% aqueous solution of sodium salt of 65 ethoxylated sulfate cocyl alcohol), 1 wt.% of Erucamide, 2 wt.% of Methylethyl ketone, 1 wt.% of Diethyl urea, 2.5 wt.% of Coconut diethanolamide, 0.1 wt.% of Formaldehyde and Water added to make the total weight of the composition to 100 wt.%.
With respect to instant “about 87% of the deionized water”, as already explained in Paragraph 19 above, the total amount of water included in Patel’s shampoo composition (d) is 79.9 wt.%. Instant amount “about 87 wt.%” (for the water) is a range from 78.3 wt.% to 95.7 wt.% (assuming that “about” means ± 10%). The water amount 79.9 wt.% in Patel’s shampoo composition (d) falls within the range 78.3-95.7 wt.%, and thus Patel teaches instant amount “about 87%” for the water.
With respect to instant “about 3% of the glycerin”, Patel’s shampoo composition (d) does not contain glycerin. However, Patel teaches (pg.1, lines 71-79) that its shampoo composition also includes one or more conventional shampoo adjuvants. As evidenced by Lassila et al ([0036]), glycerin is well known in the art as a humectant used in a typical shampoo formulation, and Lassila teaches that such humectant can be used in the amount of up to 15 wt.%. It would be obvious to one skilled in the art to use glycerin in the amount of up to 15 wt.% in Patel’s shampoo composition (d) with a reasonable expectation of providing moisture for hair. The amount up to 15 wt.% overlaps with instant amount “about 3%”, which is a range of 2.7-3.3% (assuming that “about” means ± 10%), thus rendering instant range prima facie obvious. In re Wertheim, supra. Alternatively, under the guideline given by Lassila, instant amount “about 3%” (a range of 2.7 – 3.3%) for the amount of glycerin would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
With respect to instant “about 1% of the hydroxypropylmethylcellulose”, Patel’s shampoo composition (d) does not contain hydroxypropylmethylcellulose. However, Patel teaches (pg.1, lines 71-79) that its shampoo composition contains one or more conventional shampoo adjuvants and also teaches (pg.2, lines 51-54) that such conventional shampoo adjuvants can include thickening agents. As evidenced by Janchitraponvej (col.12, lines 37-48) or Vanlerberghe (col.5, lines49-52, lines 58-62, claims 28 and 31), hydroxypropylmethylcellulose is well known in the art as a thickener used in shampoo composition in order to increase the viscosity of the composition to provide a desired esthetic effect, and such thickener can be used in the amount of up to 5 wt.% by total weight of the shampoo composition. It would have been obvious to one skilled in the art to use up to 5 wt.% of hydroxypropylmethylcellulose as a thickener in Patel’s shampoo composition (d) with a reasonable expectation of providing a desired esthetic effect by increasing the viscosity of the composition. The range up to 5 wt.% overlaps with instant amount “about 1%” (which is a range of 0.9-1.1%) for the amount of hydroxypropylmethylcellulose, thus rendering instant range prima facie obvious. In re Wertheim, supra. Alternatively, under the guideline given by Janchitraponvej or Vanlerberghe (i.e., using up to 5 wt.% of hydroxypropylmethylcellulose), instant amount “about 1%” for the amount of hydroxypropylmethylcellulose would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
With respect to instant “about 2% of the glyceryl monostearate”, the Examiner already established above (see Paragraph 19) that in view of teachings of Puracy and CN 106214594 A or Li, it would have been obvious to one skilled in the art to use glyceryl stearate in Patel’s shampoo composition (d) in the amount of 0.5-2 wt.% or 0.5-5 wt.% with a reasonable expectation of trapping moisture and keeping hair from drying out and becoming damaged while allowing the shampoo product to stay blended. Both of those ranges overlap with instant amount “about 2%” (which is a range of 1.8-2.2%) for the amount of glyceryl monostearate, thus rendering instant range prima facie obvious. In re Wertheim, supra.
With respect to instant “about 2% of the erucamide”, instant “about 3% of the cetyl alcohol” and instant “about 2% of the glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters” as already discussed above in Paragraph 19, under Patel’s general teaching that its shampoo composition contains 0.25-25 wt.% of conditioning agent, and considering that such amount of conditioning agent is to include erucamide, cetyl alcohol, glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters as well as 0.5-2 wt.% or 0.5-5 wt.% of glyceryl monostearate, instant ranges for the erucamide (1.8-2.2%), cetyl alcohol (2.7-3.3%) and glyceryl/polyglceryl-3 caprylic/capric/lactic/lauric acid esters (1.8-2.2%) would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
As to instant steps (1)-(11) of claim 16, Patel in view of the other cited prior arts does not explicitly teach instant steps. However, Faig teaches ([0160]-[0161]) that typically, a process for making cosmetic composition comprises the formation of an oil phase and the formation of separate aqueous phase, both phases are heated and combined while warm. Faig teaches that thickening agents (such as instant hydroxypropylmethylcellulose) are added to the aqueous phase of the cosmetic composition and teaches that one or more emulsifiers (such as instant glyceryl monostearate) are added to the oil phase. Faig further teaches ([0162]) that after combining the oil phase and the aqueous phase to form an emulsion, the composition is typically allowed to cool. Under the general guideline suggested by Faig, it would be obvious first to form an aqueous phase by adding water to a vessel; adding water soluble components, such as glycerin, and dissolving the water-soluble components to form a mixture; and dispersing thickeners, such as hydroxypropylmethylcellulose, into the mixture; heating the mixture; adding water-insoluble components such as glyceryl monostearate, cetyl alcohol, erucamide and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters to the mixture and mixing until uniform mixture is formed; and then cooling the resulting mixture and mixing further until uniform. Instant temperature range for the heating step (4) and instant temperature range for the cooling step would have been obvious one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
Thus, Patel in view of (i) Puracy, (ii) CN’594 or Li and (iii) Tiiips, and further in view of (iv) Lassila, (v) Janchitraponvej or Vanlerberghe and (vi) Faig renders obvious instant claim 16.
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ) as applied to claim 1 above, and further in view of (iv) K18’s internet article “How Do pH Levels in Hair Care Products Affect Your Hair?” (published on August 16, 2022 and obtained from the website: https://k18hair.com.au/blogs/news/k18-australia-ph-levels-in-hair-care-products?srsltid=AfmBOoq9hwisJ68xOURscDpEGg0e6wXe98k8L85BB4G3spj0qOUygLCV ) and (v) Dong et al (US 2012/0208898 A1).
Patel does not explicitly teach pH value of its shampoo composition (d). However, K18’s internet article (“K18” hereinafter) teaches (see the 2nd paragraph under “What’s the Optimal pH for Hair?”) that the pH level of hair is important to keep the hair healthy and avoid damage and that when the pH level gets too high or too low, it can cause problems with the hair. K18 further teaches (3rd paragraph under “What’s the Optimal pH for Hair?”) that since most tap water is in the range of 6.5-9.5 (above hair’s optimal pH), it is even more important to use lower pH products like shampoo to help offset that exposure to higher pH. K18 teaches (4th paragraph under “What’s the Optimal pH for Hair?”) that alkaline shampoos can damage the hair cuticle, leading to dry, brittle hair. On the other hand, shampoos with a pH that is too low can also cause problems, making the hair appear dull and lifeless. K18 then teaches that the best shampoo for healthy hair is one with a pH close to the natural pH of the hair, around 4.5-5.5. Under such guideline given by K18, instant pH value of 5.25 would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Alternatively, instant pH value of 5.25 would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With respect to instant viscosity value of 14841 centipoise, Patel does not teach viscosity value for its shampoo composition (d). However, Dong et al teaches ([0004]) that in some cleansing applications, higher viscosity is required for the product’s handling or ease of application and that higher viscosity personal care products are more aesthetically appealing to consumers. Dong then teaches ([0004]) that the viscosity for a shampoo is typically higher than 2,000 cps at ambient temperature. Under such guideline, instant viscosity value of 14841 centipoise would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
Thus, Patel in view of (i) Puracy (ii) CN’594 or Li and (iii) Tiiips, and further in view of (iv) K18 and (v) Dong renders obvious instant claim 18.
Claim(s) 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ) as applied to claim 1 above, and further in view of (iv) Miyazawa et al (5,225,112) or HUANG et al (US 2023/0293412 A1).
Patel does not teach the use of propanediol (another name for propylene glycol). However, as already discussed above, Patel teaches that its shampoo composition contain one or more conventional shampoo adjuvants. As evidenced by Miyazawa et al (col.1, lines 29-35, col.7, lines 58-64), propylene glycol is well known in the art as a humectant frequently used in a shampoo to provide a conditioning effect, and Miyazawa teaches (see Example 14) the use of propylene glycol in the amount of 2 wt.% in a shampoo composition. It would be obvious to one skilled in the art to use 2 wt.% of propylene glycol (instant propanediol) as a humectant in Patel’s shampoo composition (d) of Example 1 with a reasonable expectation of providing a conditioning effect. The amount 2 wt.% (as taught by Miyazawa) falls within instant range about 1 wt.%-about 5 wt.% for the amount of propanediol, thus teaching instant range of claim 20. Alternatively, although Patel does not teach the use of propanediol, it teaches (pg.2, lines 51-54) that as its conventional shampoo adjuvants, a preservative can be used in conventional proportions. As evidenced by Huang et al ([0047]), propanediol is known in the art as a preservative that can be used in a shampoo, and Huang teaches that such preservative can be used in the amount of 0.01 wt.% to 5 wt.%. Since Patel already teaches that its shampoo composition can contain a preservative, It would be obvious to one skilled in the art to use 0.01-5 wt.% of propanediol as a preservative in Patel’s shampoo composition (d) with a reasonable expectation of success. The range 0.01-5 wt.% overlaps with instant range “about 1 wt.% to about 5 wt.%” for the amount of propanediol, thus rendering instant range of claim 20 prima facie obvious. In re Wertheim, supra. Thus, Patel in view of (i) Puracy (ii) CN’594 or Li and (iii) Tiiips, and further in view of (iv) Miyazawa or Huang renders obvious instant claims 19 and 20.
Claim(s) 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ) as applied to claim 1 above, and further in view of (iv) Lagana’ et al (WO 2020/217210 A1).
Patel’s shampoo composition (d) does not contain instant polyglyceryl-10 caprylate/caprate. Lagana’ teaches (abstract and pg.10, lines 15-23) that using a surfactant, such as polyglyceryl-10 caprylate/caprate, in a skin/hair cleansing product confers excellent flash foam capacity (i.e., the amount of foam generated by a surfactant system over a given period of time) to the skin/hair cleansing product and also teaches that such surfactant can be used in the amount of 1-4 wt.% based on the total weight of the product. It would have been obvious to one skilled in the art to use 1-4 wt.% of polyglyceryl-10 caprylate/caprate in Patel’s shampoo composition (d) with a reasonable expectation of providing excellent flash foam capacity to the shampoo composition. The amount 1-4 wt.% (as taught by Lagana’) falls within instant range (about 0.5 wt.% – about 5.0 wt.%) for the amount of polyglyceryl-10 caprylate/caprate and thus teaches instant range of claim 22. Thus, Patel in view of (i) Puracy (ii) CN’594 or Li and (iii) Tiiips, and further in view of (iv) Lagana’ renders obvious instant claims 21 and 22.
Claim(s) 23 is rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Puracy (“Glyceryl stearate”, an internet article published on June 22, 2023 and obtained from the website: https://puracy.com/blogs/ingredients/glyceryl-stearate?srsltid=AfmBOornFWxfvXb8LEWQoPIXgjG5QQ95jO5T60GidWSSDVbsMfur97d1 ), (ii) CN 106214594 A (inventor unannounced) (and its English translation) or Li et al (CN 1411797 A and its English translation) and (iii) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ) as applied to claim 1 above, and further in view of (iv) HUANG et al (US 2023/0293412 A1) and (v) Lagana’ et al (WO 2020/217210 A1).
With respect to instant “about 89 wt.% deionized water”, as already discussed in Paragraph 19 above, the total amount of water included in Patel’s shampoo composition (d) of Example 1 is 79.9 wt.%. Instant amount “about 89 wt.%” for the water is a range from 80.1 wt.% to 97.9 wt.% (assuming that “about” means ± 10%). Even though 79.9 wt.% does not overlap with instant range 80.1 – 97.9 wt.% for the amount of water, 79.9 wt.% and the lower end (i.e., 80.1 wt.%) of instant range are so close to each other (both 79.9 wt.% and 80.1 wt.% are rounded to 80 wt.%) that one skilled in the art would have expected them to have the same properties. Thus, 79.9 wt.% of water in Patel’s shampoo composition (d) renders instant amount “about 89 wt.%” (i.e., a range of 80.1 - 97.9 wt.%) prima facie obvious. Where the claimed ranges and prior art do not overlap but are close enough that one skilled in the art would have expected them to have the same properties a prima facie case of obviousness would also exist which may also be overcome by a showing of unexpected results, In re Titanium Metals Corporation of America v. Banner, 227 USPQ 773 (Fed. Cir. 1985).
With respect to instant “about 3 wt.% propanediol”, although Patel does not teach the use of propanediol, it teaches (pg.2, lines 51-54) that conventional shampoo adjuvants, such as a preservative, can be used in conventional proportions in its shampoo composition. As evidenced by Huang et al ([0047]), propanediol is known in the art as a preservative that can be used in a shampoo, and Huang teaches that such preservative can be used in the amount of 0.01 wt.% to 5 wt.%. Since Patel already teaches that its shampoo composition can contain a preservative, It would be obvious to one skilled in the art to use 0.01-5 wt.% of propanediol as a preservative in Patel’s shampoo composition (d) with a reasonable expectation of success. The range 0.01-5 wt.% overlaps with instant amount “about 3 wt.%”, which is a range from 2.7 wt.% to 3.3 wt.% (assuming that “about” means ± 10%), for the amount of propanediol, thus rendering instant range prima facie obvious. In re Wertheim, supra.
With respect to instant “about 2 wt.% glyceryl monostearate”, the Examiner already established (see Paragraph 19 above) that in view of the teachings of Puracy and CN 106214594 A or Li, It would have been obvious to one skilled in the art to use glyceryl stearate in Patel’s shampoo composition (d) in the amount of 0.5-2 wt.% or 0.5-5 wt.% with a reasonable expectation of trapping moisture and keeping hair from drying out and becoming damaged while allowing the shampoo product to stay blended. Both of those ranges overlap with instant amount about 2 wt.% (i.e., a range 1.8-2.2 wt.%) for the amount of glyceryl monostearate, thus rendering instant range prima facie obvious. In re Wertheim, supra.
With respect to instant “about 2 wt.% erucamide”, and instant “about 2 wt.% glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters”, as already discussed above, under Patel’s general teaching that its shampoo composition contains 0.25-25 wt.% of conditioning agent, and considering that such amount of conditioning agent is to include erucamide, glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters as well as 0.5-2 wt.% or 0.5-5 wt.% of glyceryl monostearate, instant ranges for the erucamide (1.8-2.2%) and glyceryl/polyglceryl-3 caprylic/capric/lactic/lauric acid esters (1.8-2.2%) would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
With respect to instant “about 2 wt.% polyglyceryl-10 caprylate/caprate”, Patel’s shampoo composition (d) does not contain instant polyglyceryl-10 caprylate/caprate. Lagana’ teaches (abstract and pg.10, lines 15-23) that using a surfactant, such as polyglyceryl-10 caprylate/caprate, in a skin/hair cleansing product confers excellent flash foam capacity to the skin/hair cleansing product and also teaches that such surfactant can be used in the amount of 1-4 wt.% based on the total weight of the product. It would have been obvious to one skilled in the art to use 1-4 wt.% of polyglyceryl-10 caprylate/caprate in Patel’s shampoo composition (d) with a reasonable expectation of providing excellent flash foam capacity to the shampoo composition. The range 1-4 wt.% overlaps with instant amount “about 2 wt.%” (which is a range of 1.8-2.2 wt.%) for the amount of polyglyceryl-10 caprylate/caprate, thus rendering instant amount or instant range prima facie obvious. In re Wertheim, supra.
Thus, Patel in view of (i) Puracy (ii) CN’594 or Li and (iii) Tiiips, and further in view of (iv) Huang and (v) Lagana’ renders obvious instant claim 23.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Patel (GB 1314616) in view of (i) Lassila et al (US 2006/0293397 A1), (ii) Janchitraponvej et al (5,756,080) or Vanlerberghe et al (4,349,532), (iii) Carlson et al (3,671,634), and (iv) Tiiips (“Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters”, an internet article published on December 18, 2022 and obtained from the website: https://www.tiiips.com/m/tiiips/home?action=listReviews&reviewID=32152&oID=35059 ).
In Example 1, Patel teaches a shampoo composition (d), which contains 50 wt.% of Detergent B (27% aqueous solution of sodium salt of 65 ethoxylated sulfate cocyl alcohol), 1 wt.% of Erucamide, 2 wt.% of Methylethyl ketone, 1 wt.% of Diethyl urea, 2.5 wt.% of Coconut diethanolamide, 0.1 wt.% of Formaldehyde and Water added to make the total weight to 100 wt.%.
With respect to instant water in the amount of 0.0001-98%, in Patel’s shampoo composition of Example 1, the total amount of water would be the sum of the water added later to make 100 wt.% (i.e., 43.4 wt.%) and the water that was already contained in the 50 wt.% of Detergent B (i.e., 50 x 73% = 36.5 wt.% (since Detergent B is 27% aqueous solution of sodium salt of 65 ethoxylated sulfate cocyl alcohol, this means that the amount of water present in Detergent B is 73%)), which gives 79.9 wt.% for the total amount of water, and such amount falls within instant range (0.0001-98%) for the amount of water, thus teaching instant range.
With respect to instant glycerin in the amount of 0.0001-20%, Patel’s shampoo composition (d) does not contain glycerin. However, Patel teaches (pg.1, lines 71-79) that its shampoo composition contains one or more conventional shampoo adjuvants. As evidenced by Lassila et al ([0036]), glycerin is well known in the art as a humectant used in a typical shampoo formulation, and Lassila teaches that such humectant can be used in the amount of up to 15 wt.%. It would have been obvious to one skilled in the art to use up to 15 wt.% of glycerin as a humectant in Patel’s shampoo composition (d) with a reasonable expectation of providing moisture for hair. The range up to 15 wt.% overlaps with instant range 0.0001-20 wt.% for the amount of glycerin, thus rendering instant range prima facie obvious. In re Wertheim, supra.
With respect to instant hydroxypropylmethylcellulose in the amount of 0.0001-20%, Patel’s shampoo composition (d) does not contain hydroxypropylmethylcellulose. However, as already stated above, Patel teaches that its shampoo composition contains one or more conventional shampoo adjuvants and also teaches (pg.2, lines 51-54) that such conventional shampoo adjuvants can include thickening agents. Although Patel does not name instant hydroxypropylmethylcellulose specifically, as evidenced by Janchitraponvej (col.12, lines 37-48) or Vanlerberghe (col.5, lines49-52, lines 58-62, claims 28 and 31), hydroxypropylmethylcellulose is well known in the art as a thickener used in shampoo composition in order to increase the viscosity of the composition to provide a desired esthetic effect, and such thickener can be used in the amount of up to 5 wt.% by total weight of the shampoo composition. It would have been obvious to one skilled in the art to use up to 5 wt.% of hydroxypropylmethylcellulose as a thickener in Patel’s shampoo composition (d) with a reasonable expectation of providing a desired esthetic effect by increasing the viscosity of the composition. The range up to 5 wt.% overlaps with instant range 0.0001 – 20 wt.% for the amount of hydroxypropylmethylcellulose, thus rendering instant range prima facie obvious. In re Wertheim, supra.
With respect to instant glyceryl monostearate in the amount of 0.0001-20%, Patel’s shampoo composition (d) does not contain glyceryl monostearate. However, as already discussed above, Patel teaches that its shampoo composition includes one or more conventional shampoo adjuvants. As evidenced by Carlson et al (col.6, lines 40-45), glyceryl monostearate is known in the art as an emulsifier generally incorporated in hair shampoos in order to give the shampoo body and physical stability. Carson also teaches (see Examples 1-7) that glyceryl monostearate can be used in an amount that ranges from 4.7 to 17.6 wt.%. It would be obvious to one skilled in the art to use 4.7-17.6 wt.% of glyceryl monostearate as an emulsifier in Patel’s shampoo composition (d) with a reasonable expectation of providing the shampoo body and physical stability. The range 4.7-17.6 wt.% overlaps with instant range of claim 17 (0.0001-20 wt.%) for the amount of glyceryl monostearate, thus rendering instant range prima facie obvious. In re Wertheim, supra.
With respect to instant erucamide in the amount of 1-3%, as shown above, In Example 1, Patel’s shampoo composition (d) contains 1 wt.% of Erucamide. Thus, Patel teaches instant erucamide having a concentration of 1-3%.
With respect to instant cetyl alcohol, in Patel’s shampoo composition (d), erucamide is being used as a conditioning agent (col.2, lines 44-47). Among other preferred examples of a conditioning agent that can also be used in its shampoo composition, Patel teaches cetyl alcohol (see pg.2, lines 44-47). Because both erucamide and cetyl alcohol are being individually taught in Patel to be useful for the same purpose (i.e., useful as a conditioning agent), it would have been obvious to one skilled in the art to use a combination of erucamide and cetyl alcohol (as conditioning agents) in Patel’s shampoo composition (d) with a reasonable expectation of further enhancing the conditioning effect of the shampoo composition (d). MPEP 2144.06 states that “[i]t 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.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Patel does not teach the use of instant glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters. Tiiips’s internet article “Glyceryl/Polyglyceryl-3 Caprylic/Capric/Lactic/Lauric Acid Esters” (referred to as “Tiiips” hereinafter) teaches (see the 1st paragraph of the article) that glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters is a complex mixture of esters primarily used in the cosmetic industry as an emulsifier, skin conditioner, and moisturizer. Tiiips teaches (see the paragraph under the heading Chemical Composition and Structure) that this complex mixture combines the moisturizing and conditioning benefits of polyglycerin-3 and glycerin with the fatty acids (caprylic, capric, lauric) and lactic acid (Tiiips teaches that polyglycerin-3 and glycerin provide excellent moisture-retention capabilities, while the fatty acids and lactic acid contribute emollient and stabilizing properties). Tiiips further teaches (see the paragraph under the heading Applications) that the complex mixture is widely used in cosmetic products as an effective emulsifier and conditioner, helping to blend and stabilize the mixture of oil and water components, and improving the product’s overall texture and application properties. Since Patel teaches that its shampoo composition contains a conditioning agent as well as one or more conventional shampoo adjuvants, it would have been obvious to one skilled in the art to use glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters in Patel’s shampoo composition (d) in order to provide moisturizing and conditioning befits as well as stabilizing properties.
As to instant range (about 0.0001-20%) for the amount of cetyl alcohol, and instant range (about 0.0001-20%) for the amount of glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters, Patel teaches (pg.1, lines 71-79) that a conditioning agent is used in its shampoo composition in the amount of 0.25-25 wt.%. Under such general guideline given by Patel, and considering that Patel’s conditioning agent is to include 1 wt.% of erucamide, cetyl alcohol as well as glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters, instant ranges for the amount of cetyl alcohol and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Alternatively, assuming that one were to use approximately equal amounts for the cetyl alcohol and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters, it would give approximately up to 12 wt.% each (considering that there is 1 wt.% of erucamide already), and such amounts would overlap with instant ranges for the amounts of cetyl alcohol and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters, thus rendering instant ranges prima facie obvious. In re Wertheim, supra.
Thus, Patel in view of (i) Lassila, (ii) Janchitraponvej or Vanlerberghe, (iii) Carlson and (iv) Tiiips renders obvious instant claim 17.
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, 5-8, 11, 12, 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 16 and 17 of copending Application No. 18/961,769 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason:
Claims 1-4, 9-10 and 13-14 of App.’769 teach a personal care product comprising a formulation comprising about 0.0001-20 wt.% of erucamide, about 0.0001-98 wt.% of water, about 0.0001-20 wt.% of glyceryl monostearate and about 0.0001-20 wt.% of glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters. The ranges for the amounts of erucamide, water, glyceryl monostearate and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters overlap with respective ranges of instant claim 1, thus rendering instant ranges prima facie obvious. In re Wertheim, supra. Thus, claims 1-4, 9-10 and 13-14 of App.’769 render obvious instant claim 1 (instant limitation “wherein the erucamide is present as a non-cationic slip-modifying agent” simply describes intended use of erucamide and thus carries no patentable weight).
Claims 5-6 of App.’769 teach that the formulation further comprises glycerin in the amount of about 0.0001-20 wt.%, and claims 7-8 of App.’769 teaches that the formulation further comprises hydroxypropylmethylcellulose in the amount of about 0.0001-20 wt.%. Thus. Claims 5-8 of App.’769 render obvious instant claims 5-8.
Claims 11-12 of App.’769 teach that the formulation further comprises cetyl alcohol in the amount of about 0.0001-20 wt.%. Thus, claims 11-12 of App.’769 render obvious instant claims 11-12.
Claim 16 of App.’769 renders obvious instant claim 16.
Claim 17 of App.’769 renders obvious instant claim 17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
First of all, as to applicant’s argument of impermissible hindsight, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). The Examiner believes that instant 103 rejections as detailed above clearly show that in instant case, the judgment of obviousness took into account only knowledge within the level of ordinary skill in the art at the time the claimed invention was made and did not include knowledge gathered only from applicant’s disclosure.
Secondly, applicant argue that the Examiner relies on Patel’s disclosure of a conditioning agent that may be used over an exceptionally broad range of 0.25-25 wt.%, and then turns to multiple secondary references to supply additional ingredients and ranges in order to arrive at the claimed composition. Applicant argue that such an approach is inconsistent with the guidance set forth in MPEP regarding range-based obviousness and point to MPEP 2144.05(III)(D), which states that “[o]ne factor that may weigh against maintaining an obviousness rejection based on optimization of a variable disclosed in a range in the prior art is where an applicant establishes that the prior art disclosure of the variable is within a range that is so broad in light of the dissimilar characteristics of the members of the range as to not invite optimization by one of skill in the art. Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306, 99 USPQ2d 1713, 1725 (Fed. Cir. 2011).” Applicant then argue that Patel’s sweeping disclosure provide no guidance toward any particular operative subrange and does not direct one skilled in the art to select the narrowly claimed concentration recited in instant claim 1. The Examiner disagrees. First, as stated in the MPEP section cited above, the federal court in Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc. held that ordinary motivation to optimize did not apply where disclosure was 68,000 protein variants including 2,332 amino acids where one of skill in the art would appreciate that the claimed truncated proteins vary enormously in structure. That is, the case involved a situation where one had to pick the specific truncated proteins from a massive number of protein variants (68,000 truncated variants of a protein made up of 2,332 amino acids) encompassed by the claims in the prior art, and the court held that in such case there was no ordinary motivation to optimize a specific protein variant because the prior art disclosed an extremely broad range of 68,000 variants, making routine experimentation to find the claimed one not obvious to one of ordinary skill in the art. Such case law is certainly distinguishable from instant case: Patel teaches that in its shampoo composition (having a conditioning effect on the hair), conditioning agent(s) should be present in the amount that ranges from 0.25 wt.% to 25 wt.% (Patel indicates that more than one conditioning agents can be included in its shampoo composition – see pg.2, line 31 and line 44, claim 12; see also shampoo composition (b) in Example 3 which uses two conditioning agents (ricinoleic acid ethoxylate and lanolin alcohol ethoxylate)). Thus, instant case merely involves determining optimum amounts of conditioning agents (such as erucamide, glyceryl monostearate and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters and cetyl alcohol) that would give the optimal conditioning effects for Patel’s shampoo compositions. Unlike in Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., Patel’s range 0.25-25 wt.% (for the amount of conditioning agent(s)) is not extremely broad, and such range would surely invite routine experimentation to discover optimum values. “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.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Next, applicant argue that the amended claim 1 now recites erucamide at a defined concentration and in a different functional context (i.e., as a non-cationic slip-modifying agent, rather than as a broadly interchangeable conditioning additive). Applicant argue that the cited references do not teach or suggest this use or role, nor do they provide guidance that would lead one skilled in the art to select the claimed concentration and combination of ingredients from Patel’s expansive disclosure. The Examiner disagrees. First of all, the new limitation “wherein the erucamide is present as a non-cationic slip-modifying agent”, which merely states an intended use or a purpose of an already required component erucamide, does not carry any patentable weight. Besides, Patel’s erucamide and instant erucamide are the same compound. Thus, Patel’s erucamide would inherently be present as a non-cationic sip-modifying agent as recited in claim 1 (as well as a conditioning agent as taught in Patel). Even present specification ([0031]-[0032]) state that erucamide and its derivatives, which were traditionally used as a slip additive in the plastic manufacturing industry, are now being used in personal care products to achieve smoother, softer, shinier and more manageable hair. This indicates that in present composition, erucamide is present both as a slip-modifying agent and a conditioning agent. Secondly, as to instant range “about 1.5 wt.% to about 3.0 wt.%” for the amount of erucamide, as already discussed above, Patel gives a general teaching that its shampoo composition can contain 0.25-25 wt.% of a conditioning agent (such as Erucamide). Under such guideline given by Patel, and considering that such amount (0.25-25 wt.%) of conditioning agent is to include not only erucamide, but also other conditioning agents (such as glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters, cetyl alcohol and 0.5-2 wt.% or 0.5-5 wt.% of glyceryl monostearate) according to the teachings of the secondary references, instant range “about 1.5 wt.% to about 3.0 wt.%” for the amount of erucamide would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, in the absence of showing “unexpected superior” results of using erucamide in the claimed range (by showing the criticality of the claimed range), Patel’s teaching (in view of the other cited prior arts) renders obvious instant limitation “about 1.5 wt.% to about 3.0 wt.% erucamide”.
With respect to the dependent claims, applicant first argue that the Examiner relies on Patel’s disclosure of a single conditioning agent being present in an amount of 0.25-25 wt.% and then applies that same broad disclosure interchangeably to multiple different components recited in the dependent claims, including erucamide, cetyl alcohol, and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters. Applicant further argue that Patel does not teach or suggest the use of multiple distinct conditioning-related ingredients each independently selected from this broad range, nor does it provide guidance that such ingredients should be combined or apportioned in the manner recited in the dependent claims. Applicant also argue that although Tiiips’s internet article on glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters does not disclose any concentration ranges or amounts, the Examiner again defaults to Patel’s broad conditioning agent range to supply the claimed amounts. Applicant argue that this circular reasoning improperly uses Patel’s expansive disclosure as a universal placeholder for missing quantitative teachings, rather than demonstrating that one skilled in the art would have been motivated to select the claimed concentrations. The Examiner disagrees. First of all, as already stated above, Patel indicates that more than one conditioning agents can be included in its shampoo composition. Secondly, Examiner is not asserting that it would be obvious to one skilled in the art to use multiple distinct conditioning-related ingredients (erucamide, cetyl alcohol, glyceryl monostearate and glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters), where each ingredient is independently selected from the broad range of 0.25-25 wt.%. As already discussed above, Patel gives a general teaching that its shampoo composition is to contain conditioning agent(s) in the amount that ranges from 0.25 wt.% to 25 wt.%. Under such general guideline given by Patel, and also considering that such amount (0.25-25 wt.%) of conditioning agent is to include not only erucamide, but also other conditioning agents that are being added according to the teachings of the secondary references (such as glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters taught by Tiiips’s internet article, cetyl alcohol and 0.5-2 wt.% or 0.5-5 wt.% of glyceryl monostearate)), instant ranges for the amounts of other conditioning agents (including glyceryl/polyglyceryl-3 caprylic/capric/lactic/lauric acid esters taught by Tiiips) claimed in dependent claims would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra (also, applicant have not shown unexpected superior results of using the claimed amounts of the ingredients of dependent claims).
Lastly, applicant argue that the Examiner relies on a further reference (Carlson et al (3,671,634)) disclosing glyceryl-based components in examples having concentration of 4.7-17.6 wt.%, yet instant dependent claims (claims 16 and 23) recite glyceryl monostearate at approximately 2 wt.%, a concentration that falls far outside of the disclosed example range of the Carlson reference. Applicant argue that the Office Action does not explain why one skilled in the art would have been motivated to depart from the disclosed examples and select a lower concentration absent hindsight knowledge of present invention. However, applicant’s such argument is now moot in view of the fact that the Carlson reference is not being used in instant 103 rejections anymore except for in instant 103 rejection on claim 17. That is, since Carlson teaches the concentration of glyceryl monostearate to be 4.7-17.6 wt.%, and since such concentration does not teach or suggest instant range of claim 1 “about 0.5 wt.% to about 3.0 wt.%” for the amount of glyceryl monostearate, Carlson reference is not used in instant 103 rejection on claim 1 and its dependent claims. On the other hand, for instant independent claim 17 (which was not amended by applicant), Carlson’s range 4.7-17.6 wt.% for the amount of glyceryl monostearate falls within instant range “0.0001% - 20%” for the amount of glyceryl monostearate and thus teaches instant range, which is why Carlson is still being used as a secondary reference in instant 103 rejection on claim 17.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
January 19, 2026