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`09/558,447
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`RECEIVED
`FEB 0 7 zoni
`TECH CENTER l600:2900
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`Case7544M
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFI CE
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`In the Application of
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`DavidS. Dunlop
`Susan M. Guskey
`Vicente E. Leyba
`Douglas A. Royce
`
`Serial No. 09/558,447
`
`Confirmation No. 9221
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`Filed April 25, 2000
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`For ANTI-DANDRUFF AND CONDmONING:
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`S~OSCONTA~G
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`POLY ALKYLENE GLYCOL AND
`
`CATIONIC POLYMERS
`
`Group Art Unit 1615
`
`Examiner P. McQueeney
`
`AMENDMENT UNDER 37 CFR 1.111
`
`Commissioner of Patents
`
`Washington, DC 20231
`
`Dear Sir:
`
`In response to the May 11, 2001 Office Action in the above-entitled application,
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`please amend the above-identified application as follows, please enter the attached
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`Terminal Disclaimers and consider the following remarks. Attached hereto is a Petition
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`for a Three-Month Extension of Time, and the fee required under 37 CFR § 1.17(a),
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`providing for a timely response up to and including November 13, 2001 (November 11th
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`falls on a Sunday and November 12th is a federal holiday).
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`In the Claims
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`Please amend claims 11 and 21 as follows:
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`. I .
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`7544M
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`091558.447
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`11.
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`(Amended) A shampoo composition according to Claim 1, wherein said non-
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`volatile conditioning agent comprises silicone.
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`21.
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`(Amended) A shampoo composition comprising:
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`a) from about 10% to about 25%, by weight of the composition, of an anionic
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`surfactant;
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`b) from about 0.01% to about 10%, by weight of the composition, of an insoluble,
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`non-volatile silicone conditioning agent;
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`c) from about 0.3% to about 2%, by weight of the composition, of a zinc salt of 1-
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`h ydrox y-2-pyridi nethione;
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`d) from about 0.1% to about 2%, by weight of the composition, of at least one
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`cationic polymer selected from the group consisting of guar derivatives, cellulose
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`derivatives, and mixtures thereof;
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`e) from 0.025% to about 1.5%, by weight of the composition, of a polyalkylene
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`glycol corresponding to the formula:
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`i) wherein R is selected from the group consisting of hydrogen, methyl and
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`mixtures thereof,
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`ii) wherein n is an integer having an average value from about 3,500 to about
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`15,000; and
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`f) water.
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`Please cancel claims 13 and 14 without prejudice.
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`Please add new claims 26 and 27:
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`26. A shampoo composition according to Claim 18, wherein said polyalkylene glycol
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`has an average value of n frorr. about 3,500 to about 15,000 .
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`09/558,447
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`'21. A shampoo composition according to Claim 20, comprising from about 0.025% to
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`about 1.5%, by weight of the composition, of said polyalkylene glycol.
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`Claims 1-12 and 15-27 are pending in the present application. No additional
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`Remar ks
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`claims fee is due.
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`Claims 13 and 14 are canceled without prejudice. They have been replaced by
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`new claims 26 and 27. New claims 26 and 27 are supported by, at least, original claims
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`13 and 14. This amendment was made to correct the order of the claims and not in
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`response to an issue of patentability.
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`Claim II has been amended to remove the word "dispersed." Support for the
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`amendment is found, at least, at page 8 lines 4-5 of the specification. In addition, Claim
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`21 has been amended to correct a typographical error regarding the percentage of cationic
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`polymer. Support for this amendment is found, at least, in the Applicants' specification
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`at page 2 1, line 16.
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`Attached hereto is a marked-up version of the changes made to claims 11 and 21
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`by the current amendment. The attached page is captioned "Version with markings to
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`show changes made."
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`The Claim Objections
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`Response to the Office Action
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`Claims 13 and 14 have been objected to as being in improper dependent form. In
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`response, Applicants have cancelled these claims and added new claims 26 and 27.
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`Applicants contend that the claims are now in proper dependent form.
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`The Double Patenting Rejection
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`Claims l-25 have been rejected as claiming the same invention as that claimed in
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`Applications 09/558,466 and 09/558,465.
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`In response, Applicants are submitting
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`herewith two Terminal Disclaimers. Applicants contend that the Terminal Disclaimers
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`moot the double patenting rejection.
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`09/558,447
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`The Rejection under 35 U.S. C. 112. second paragraph
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`Claims I I and 2 1 have been rejected under 35 U.S.C. 1I2, second paragraph as
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`being indefinite. Specifically, claim I1 has been rejected due to the term "dispersed,
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`silicone." In response, Applicants have amended claim II to simply recite "silicone."
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`Claim 21 has been rejected due to an indefinite range for subsection (d). In response,
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`Applicants have amended the claim to correct this typographical error. Claim 2I now
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`recites a range of "from about 0.1% to about 2%" in subsection (d). Accordingly,
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`Applicants respectfully submit that the rejection under 35 U.S.C. 1I2, second paragraph
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`has been overcome.
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`The Rejection under 35 U.S. C. 102(e) over Guskey
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`Claims I-I4 and 22 have been rejected under 35 U.S.C. 102(e) as being anticipated
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`by Guskey (US 5,977,036). Applicants respectfully traverse this rejection since Guskey
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`does not specifically disclose the anti-dandruff particulate claimed by Applicants.
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`In
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`addition, Applicants' claimed range of anti-dandruff particulate is not disclosed with
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`sufficient specificity in Guskey to qualify as anticipation.
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`First, Applicants' claim 1 requires the presence of from about 0.1% to about 4% of
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`an anti-dandruff particulate. The anti-dandruff component is required to be a particulate
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`since the invention concerns depositing the anti-dandruff component from a coacervate(cid:173)
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`forming shampoo. Guskey, in Col. 17,line 38, mentions "anti-dandruff agents" as one of
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`many possible optional components. The term "anti-dandruff agent" is broader than just
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`particulates and includes all other forms (e.g. liquid, etc.) of anti-dandruff compositions.
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`The Guskey reference does not disclose anti-dandruff particulates.
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`Second, Applicants' claim 1 specifies that "from about 0.1 to about 4%" of the anti(cid:173)
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`dandruff particulate is present. Guskey's disclosure of "from about 0.001% to about
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`10%" for any of the optional components does not qualify as an anticipation of
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`Applicants' claimed range. For a prior art range to anticipate the claimed invention's
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`range, it must be disclosed with "sufficient specificity" (see MPEP 2131.03). Applicants
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`contend that Guskey's range is too broad to sufficiently specify Applicants' range of
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`from about 0.1 to about 4%. For example, Applicants' low end of the range is 2M
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`hundred times higher than that disclosed in Guskey.
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`7544M
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`091558,441
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`GuskeY:s brief mention of anti-dandruff agents as one of many optional ingredients
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`and a blanket range for any of the optional ingredients does not anticipate Applicants'
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`claim l. Guskey does not teach using an anti-dandruff particulate, as claimed by
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`Applicants. Further, Guskey's disclosed range is too broad to anticipate Applicants'
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`claimed range of anti-dandruff particulate. Therefore, Applicants contend that the
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`claimed invention is novel and that the rejection should be withdrawn.
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`The Rejection under 35 U.S. C. 103(a) over Guskey in view of Cardin et al.
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`Claims 1-25 have been rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Guskey in view of Cardin et al. Applicants respectfully traverse this rejection. The
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`references do not establish a prima facie case of obviousness for two reasons. First, they
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`do not teach or suggest all of Applicants' claim limitations.
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`Specifically, the
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`combination of references does not suggest combining an anti-dandruff pa.rticulate, a
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`cationic polymer, a conditioning agent, and polyalkylene glycol
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`in a shampoo
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`composition. Secondly, combining the anti-dandruff particles of Cardin et al. with the
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`shampoo formula of Guskey would not have given a reasonable expectation of success.
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`Therefore, Applicants contend that the claimed invention is unobvious and that the
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`rejection should be withdrawn.
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`As discussed in the Background of the Invention, the purpose of the present
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`invention is to provide anti-dandruff shampoos with improved conditioning performance.
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`In the past, there has been a problem trying to achieve this because conditioning
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`ingredients interfere with the deposition of the anti-dandruff material. As a result,
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`consumers had to choose between conditioning shampoos with no anti-dandruff
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`component or anti-dandruff shampoos with little or no conditioning effect.
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`The inventors of the claimed subject matter have surprisingly found a solution to
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`this problem. By using a shampoo comprising cationic polymer, anti-dandruff
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`particulates and polyalkylene glycol in particular amounts, the inventors have found that
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`they can provide the conditioning benefits of a cationic polymer-containing shampoo
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`while still getting adequate coverage of the anti-dandruff material on the scalp.
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`Cationic polymer causes the shampoo composition of the present invention to
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`form a coacervate upon dilution. The coacervate provides improved wet hair
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`conditioning benefits by forming particles that cling to the hair shafts. This coacervate
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`7S44M
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`091558,447
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`structure re~ults in a different deposition mechanism than standard shampoos, such as
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`that disclosed by Cardin et al. The Cardin reference does not teach the use of cationic
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`polymer to form a coacervate.
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`Furthermore, while
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`the Guskey reference discloses a coacervate-forming
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`shampoo, a person skilled in the art would not have been led to use a coacervate with
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`anti-dandruff (AD) particulates in a shampoo. Coacervates produce the opposite effect of
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`what is traditionally desired for AD particulates. Those skilled in the art believed that an
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`AD shampoo must maximize deposition and dispersion of the particulates on the scalp to
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`be effective. However, coacervates are sponge-like particles that tend to collect and
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`concentrate the AD particulates. Therefore, a skilled person in the art would not look at
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`coacervates as a useful technology for anti-dandruff.
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`The inventors of the present invention have surprisingly found that anti-dandruff
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`particulates can be used in a coacervate-forming shampoo when the claimed polyalkylene
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`glycol is used in the shampoo formulation. The polyalkylene glycol alters the physical
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`characteristics of the coacervate to the point where it effectively distributes the AD
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`particles while retaining the conditioning benefit.
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`There is no hint of this discovery in either Guskey or Cardin et al. Guskey does
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`not disclose the anti-dandruff particulates claimed by Applicants. Cardin et at. do not use
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`cationic polymer to form a coacervate. Neither reference addresses the issues of using
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`AD particulates in a coacervate-forming shampoo. Certainly, neither reference teaches or
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`suggests that polyalkylene glycol could improve the ability of AD particulates to deposit
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`from a shampoo.
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`Lack of prima facie case
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`As stated above, the combination of Guskey and Cardin et at. does not teach or
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`suggest all of Applicants' claim limitations (combining an anionic surfactant, a
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`conditioning agent, an anti-dandruff particulate, a cationic polymer, and polyalkylene
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`glycol in a shampoo composition). Therefore, the cited references do not establish a
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`prima facie case of obviousness (see MPEP 2143.03). Specifically, neither Guskey nor
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`Cardin et al. teach or suggest depositing anti-dandruff particles from a coacervate(cid:173)
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`forming shampoo.
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`Furthermore, combining the anti-dandruff particles of Cardin et al. with the
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`shampoo formula of Guskey would not have given a reasonable expectation of success.
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`-6-
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`7S44M
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`09ISS8,441
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`As stated above, a coacervate-fonning shampoo, such as that disclosed in Guskey, form
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`sponge-like particles that tend to collect and concentrate AD particulates. One skilled in
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`the art would not have expected such a shampoo to adequately deposit and disperse the
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`anti-dandruff particulates. Applicants have surprisingly discovered that the addition of
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`the claimed polyalkylene glycol alters the physical characteristics of the coacervate to the
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`point where it effectively distributes the AD particles while retaining the conditioning
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`benefit.
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`As stated in MPEP 2143.02, a prima facie case of obviousness requires a reasonable
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`expectation of success. Such an expectation could not be found by the combination of
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`Guskey and Cardin et al. One skilled in the art would not have expected the AD
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`particulates to be effective in Guskey's shampoo. Therefore, Applicants contend that the
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`rejection under 35 U.S.C. 103(a) should be withdrawn.
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`In addition, the combination of Guskey and Cardin et al. does not adequately suggest
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`the combination of elements claimed by Applicants. Applicants' claim l has six required
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`elements (an anionic surfactant, a non-volatile conditioning agent, an anti-dandruff
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`particulate, at least one cationic polymer, a polyalkylene glycol, and water). Guskey's
`primary invention (i.e. claim 1) only requires three of these elements (anionic surlactant,
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`cationic polymer and water). Three of Applicant's required elements - an anti-dandruff
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`particulate, a polyalkylene glycol, and a non-volatile conditioning agent are either
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`optional or not disclosed by Guskey. The rejection relies on Cardin to supply the anti(cid:173)
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`dandruff particulate. However, there is no motivation given to pick and choose from the
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`huge number of optional ingredients disclosed by Guskey to arrive at Applicants'
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`claimed invention (all six elements present in the claimed amounts). In fact, it is unlikely
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`that one skilled in the art would look to a styling shampoo (intended to add hold and
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`stiffness to the hair) when attempting to formulate an anti-dandruff/conditioning
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`shampoo. As a result, Applicants contend that their claimed shampoo composition is
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`novel and unobvious and that the rejection under 35 U.S.C. 103(a) should be withdrawn.
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`Conclusion
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`Applicants have made an earnest effort to place their application in proper form
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`and to distinguish
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`the invention as now claimed from
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`the applied references.
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`-7-
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`7544M
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`09/55&,447
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`WHEREFORE, Applicants respectfully request reconsideration of this application, entry
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`of the amendments presented herein and allowance of Claims 1-12 and 15-27.
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`Respectfully submitted,
`DavidS. Dunlop et al.
`
`By~
`Brent M. Peebles
`Attorney for Applicants
`Registration No. 38,576
`(5 13) 626-2404
`
`November 13, 2001
`Cincinnati, Ohio
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`- 8 -
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