DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicants’ submission filed on June 22 2026 has been entered.
Receipt of Arguments/Remarks filed on June 22 2026 is acknowledged. Claims 4, 13-14 and 19-21 were/stand cancelled. Claim 1 was amended. Claims 1-3, 5-12, 15-18 and 22 are pending. Claims 5-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 27 2017. Claims 1-3, 12, 15-18 and 22 are directed to the elected invention.
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 .
Drawings
The drawings are objected to because there is only one figure and the drawing refers to it as Fig. 1. However, 37 CFR 1.84(u)(1) indicates when there is only one drawing, it must not be numbered and the abbreviation FIG must not appear. Therefore, the figure must be referred to as The Figure. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: pages 4, 28-29 of the specification refer to Figure 1 but should state The Figure as there is only one figure. Appropriate correction is required.
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code, see pages 8-9.. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Rejections - 35 USC § 112-Indefiniteness
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 12, 15-18 and 22 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 as currently written is vague and indefinite. The claim as amended recites “wherein the moisture control material is oleic acid wherein the oleic acid is a fatty acid ester containing 15-40 total carbon atoms”. Oleic acid is a fatty acid which is well known in the art. As indicated in Merriam-Webster dictionary, oleic acid is a monosaturated fatty acid C18H34O2 obtained from natural fats and oils. This means that oleic acid is 1) an acid and 2) has 18 total carbon atoms. However, claim 1 was amended to recite that oleic acid isn’t an acid, it’s a fatty acid ester, and it contains 15-40 total carbon atoms which is different than 18 total carbon atoms.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). As set forth above, the term “oleic acid” is used to describe a fatty acid ester of 15-40 total carbon atoms whereas the accepted meaning is a fatty acid with 18 total carbon. The term is indefinite because the specification does not clearly redefine the term.
In the response filed October 5 2018, the recitation oleic acid was added to claim 1. Support for this amendment is indicated as being found in the specification at page 9, which is a table of Class II moisture control agents. While Class II moisture control material as originally filed in claim 1 recited species g) a fatty acid ester containing from 15-40 total carbon atoms. Nowhere in the specification is oleic acid defined as contrary to its ordinary meaning which is a fatty acid with 18 total carbons.
Claims 2-3, 12, 15-18 and 22 are included in the rejection as they depend on a rejected base claim and they do not clarify the issues.
Claim Rejections - 35 USC § 112-New Matter
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claims 1-3, 12, 15-18 and 22 are 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 1 introduce new matter as the claims recite the limitation: "wherein the oleic acid is a fatty acid ester containing from 15-40 total carbon atoms”. There is no support in the specification for this limitation. The limitation of: "oleic acid being a fatty acid ester containing from 15-40 total carbon atoms" was not described in the specification as filed, and person skilled in the art would not recognize in the applicant’s disclosure a description of the invention as presently claimed. The specification discloses oleic acid (see page 9) and moisture control material being an option, specifically g from claim 1 as originally filed, which is a fatty acid ester containing 15-40 total carbon atoms but does not describe the instantly claimed limitation. There is no guidance in the specification to select oleic acid being a fatty acid ester containing 15-40 total carbon atoms and from MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant directs the examiner to page 12, line 18 but this portion of the specification merely mentions option g) of the moisture control agent and does not define oleic acid as a fatty acid ester. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 15-18 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Allef et al. (US PGPUB No. 20140349902, cited in the Office action mailed on 1/30/18) in view of Bernard et al. (USPGPUB No. 20070014748, cited in the Office action mailed on 6/12/19), Moller et al. (US Patent No. 4496536, cited in the Office action mailed on 1/30/18) and Taylor et al. (USPGPUB No. 20080138438, cited in the Office action mailed on 1/30/18) and as evidenced by Benvenuti (futurederm.com, 2011, cited in the Office action mailed on 1/4/19) and Anderson et al. (USPGPUB No. 20090104136, cited in the Office action mailed on November 13 2019).
Applicant Claims
The instant application claims a shampoo composition comprising from about 0.2 to about 8% of a moisture control material which is oleic acid wherein the oleic acid is a fatty acid ester containing from 15-40 total carbon atoms wherein the shampoo composition further comprises from about 0.5 to about 2% of salicylic acid, from about 2 to about 10% of 2-hydroxyethyl urea and propylene glycol and wherein there is a decrease moisture pickup determined by a DVS method as compared to a control with no moisture control materials and further comprising 5-chlorosalicylic acid and 2-hexyl-1-decanol.
The examiner interprets the further comprising language to be further limiting the shampoo composition claimed as comprising 5-chlorosalicylic acid and 2-hexyl-1-decanol.
The instant application claims method of treating hair using the shampoo composition of Claim 1 wherein hair treated with the shampoo composition results in a decrease moisture pickup determined by a DVS method as compared to a control with no moisture control materials.
While the oleic acid recitation is indefinite for the reasons set forth above. The examiner interprets claim 1 as requiring either oleic acid or a fatty acid ester containing 15-40 carbon atoms.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Allef et al. is directed to aqueous hair and skin cleaning compositions comprising biosurfactants. Table 24 is a shampoo comprising water (solvent) in an amount greater than 20%, oleic acid in 0.4%, cocamidopropyl betaine (cationic surfactant in 2% reading on instant claim 18), propylene glycol and citric acid to adjust pH to 5.0 (reading on instant claims 15-16). Table 25 teaches a shampoo comprising water in greater than 20%, oleic acid in 0.15%, propylene glycol, glycol distearate in 1% (which is a fatty acid ester with a 28 total carbon atoms) and cocamidopropyl betaine in 2.5 (reading on cationic surfactant of claim 18) with a pH of 5.5. Gels are taught (claim 15). The fatty acid is included in amounts from 0.1 to 20% by weight of the sum of fatty acid and surfactants where surfactants are used in an amounts from 1 to 30% (claim 1). Fatty acids taught include valeric acid and oleic acid (paragraph 0029). Exemplified compositions include oleic acid and salicylic acid and propylene glycol (table 41, 66, 77, 82, reading on the claimed combination of oleic acid, salicylic acid and propylene glycol recited in claim 1). Exemplified amounts of salicylic acid include 2% (table 66). The compositions can also comprise urea (paragraph 0046). Esters of fatty acids with polyols are taught as thickeners (paragraph 0048).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Allef et al. does not teach compositions comprising 2-hydroxyethyl urea. However, this deficiency is cured by Bernard et al.
Bernard et al. is directed to urea compounds that promote desquamation. Taught is a method for stimulating desquamation of the skin and/or the mucous membranes and/or superficial body growths comprising apply to skin or superficial body growths urea compounds of formula I (claim 1). Claim 6 recites a compound of formula I is N-(2-hydroxyethyl)urea. Application to the skin and/or scalp is claimed (claim 12). Taught is combination of two desquamation-stimulating agents the compound of formula I and salicylic acid (paragraph 0223). The quantity of N-(2-hydroxyethyl)urea and of any other compound of formula I is from 0.1 to 20% by weight. Less than or equal to 10% by weight is particular for daily care applications (paragraph 0038). Compositions taught include shampoos (paragraph 0073).
Benvenuti teaches that Pequi oil, which is mostly oleic acid, is better for frizzy hair.
Allef et al. does not teach the inclusion of 5-chlorosalicylic acid or 2-hexyl-1-decanol. However, these deficiencies are cured by Moller et al. and Taylor et al.
Moller et al. is directed to sebosuppressive cosmetic preparations containing long-chained alkanols and antioxidants. Taught are topical cosmetic preparations useful in the treatment of seborrhea and strongly oily hair. The compositions comprise alkanols such as 2-hexyldecanol (column 1, lines 45-59 and claim 2). Shampoo is exemplified (example 1). Hexadecanol is exemplified (table sample 8 and 15).
Taylor et al. is directed to compositions having high antiviral and antibacterial efficacy. Taught are personal care products incorporating an active antimicrobial agent (paragraph 0067). Taught are the inclusion of organic acids to control the pH. Acids taught include 5-chlorosalicylic acid (paragraphs 0118-0123). The pH taught is 5 or less.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Allef et al., Bernard et al., Moller et al. and Taylor et al. and utilize oleic acid in combination with glycol disearate (a fatty acid ester with 38 total carbons). One skilled in the art would have been motivated to utilize this combination as Allef et al. exemplify their use together in at least table 25. As taught by Allef et al. these fatty acid esters are thickeners. Therefore, depending on the desired viscosity, one skilled in the art would add an appropriate thickener and manipulate the amount in order to achieve the desired viscosity as increasing or decreasing the amount of thickener would be expected to increase or decrease the viscosity.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Allef et al., Bernard et al., Moller et al. and Taylor et al. and utilize 2-hydroxyethyl urea in the invention of Allef et al. in order to provide for desquamation as taught by Bernard et al. One of ordinary skill in the art would have a reasonable expectation of success as the urea compounds of Bernard et al. are taught to be used in shampoos and with other desquamation agents such as salicylic acid and Allef et al. teaches the compositions can comprise urea.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Allef et al., Bernard et al., Moller et al. and Taylor et al. and use the shampoo composition, such as the shampoo of Table 25 of Allef et al. to treat hair. One of ordinary skill in the art would have been motivated to utilize shampoo with hair as that is the design of a shampoo. Although the reference is silent about the moisture pickup, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same subject is being administered the same active agent by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Finally, as evidenced by Benvenuti oleic acid is known to be useful in treating frizzy or brittle hair. As evidenced by Anderson et al., moisture on hair and its penetration into the hair can disturb the arrangement of hair proteins, resulting in cosmetically undesired changes such as an increase in frizz. Moisture resistance refers to the hysteresis of water sorption/desorption when measured by DVS. In DVS a sample is placed on a microbalance exposed to a continuous flow of air with a predetermined and constant relative humidity. As the humid air passes over the sample, a zone of constant moisture concentration is created around it. Mass changes in the sample due to water vapor sorption/desorption can be measured between different levels of relative humidity at a particular temperature (paragraphs 0289-0290). Taught is a 4% reduction in the average hysteresis values compared to control (paragraph 0298). Examples include oleic acid (paragraphs 0362-0364). This is more evidence to a reasonable expectation in treating the hair with the composition of Allef et al. which contains examples with the instantly claimed moisture control material would possess the instantly claimed decrease in moisture pickup.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Allef et al., Bernard et al., Moller et al. and Taylor et al. and utilize 2-hexyldecanol in the composition of Allef et al. One of ordinary skill in the art would have been motivated to utilize 2-hexyldecanol in order to treat seborrhea as taught by Moller et al. One of ordinary skill in the art would have a reasonable expectation of success as Moller et al. teaches the use of these compounds in a shampoo. It would have been obvious to one of ordinary skill in the art to try any of the specifically taught alcohols as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Allef et al., Bernard et al., Moller et al. and Taylor et al. and utilize 5-chlorosalicylic acid to manipulate the pH. Since Allef et al. exemplify the use of acids to control the pH, there is a reasonable expectation of success in utilizing the 5-chlorosalicylic acid. It would have been obvious to one of ordinary skill in the art to try any known acid pH modifiers as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). One skilled in the art would have a reasonable expectation of success as Taylor et al. teaches 5-chlorosalicylic acid to manipulate the pH to 5 or less and this pH is similar to the pH taught in Allef et al.
Regarding the claimed amount of salicylic acid, Allef et al. exemplify an amount reading on the claims. Regarding the claimed amount of oleic acid, Allef et al. teaches an overlapping amount. Regarding the claimed amount of 2-hydroxyethyl urea, Bernard et al. teaches an overlapping amount. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding the claimed for hair frizz reduction, this is the intended use of the composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. Since Allef et al. exemplify a composition comprising the same claimed moisture control material in an overlapping amount, it is capable of performing the intended use.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Allef et al. in view of Bernard et al., Moller et al., and Taylor et al. as applied to claims 1-3, 15-18 and 22 above and in further view of Khoshdel et al. (USPGPUB No. 20050175567, cited on PTO Form 1449)
Applicant Claims
The instant application claims the composition further comprises 2,4-dihydrobenzoic acid.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Allef et al., Bernard et al., Moller et al. and Taylor et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Allef et al. does not teach the inclusion of 2,4-dihydrobenzoic acid. However, this deficiency is cured by Khoshdel et al.
Khoshdel et al. is directed to hair care compositions containing phenolic styling agents. Taught are hair care treatment compositions comprising a styling compound of formula 1:
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. A preferred composition is where n is 0 and R2-R6 is H or OH (paragraph 0020). R1 includes H or OH (paragraph 0007). Compositions of the invention include shampoos (paragraph 0026). The compound provides improved hold to the hair (paragraph 0017). Conditioner compositions additionally comprise fatty materials. The combined use of fatty materials and cationic surfactants is believed to be especially advantageous because this leads to the formation of a structured phase in which the cationic surfactant is dispersed. Fatty material includes fatty alcohol, an alkoxylated fatty alcohol, a fatty acid or a mixture thereof. Concentration of fatty material is from 0.01 to 15% (paragraph 0113-0119).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Allef et al., Bernard et al., Moller et al., Taylor et al. and Khoshdel et al. and utilize the styling compounds of Khoshdel et al. in the composition of Allef et al. One of ordinary skill in the art would have been motivated to add the styling compounds in order to improve hold to the hair as taught by Khoshdel et al. One of ordinary skill in the art would have a reasonable expectation of success as Khoshdel et al. teaches the compounds can be utilized in a shampoo.
Response to Arguments
Applicants’ arguments filed June 22 2026 have been fully considered but they are not persuasive.
Applicants argue that (1) (page 5; 8) that the combination of references do not teach or suggest the claimed specific combination and ranges. Claim 1 as amended defines the moisture control material as oleic acid as a fatty acid ester containing from 15-40 total carbon atoms. While Allef et al. mentions oleic acid as a fatty acid, it does not teach or suggest that this oleic acid must be a fatty acid ester within the specific carbon atom range for the purpose of hair frizz reduction in a shampoo. Benvenuti also discloses a fatty acid but not a fatty acid ester. This specific structural refinement for oleic acid is a critical distinction.
Regarding Applicants first argument, firstly, the claim limitations are indefinite for the reasons set forth above. Secondly, the claims do not recite a fatty acid ester derived from oleic acid and thus the prior art needs not teach a oleic acid fatty acid ester, the claims recite any fatty acid ester containing 15-40 total carbon atoms. Allef et al. exemplifies glycol distearate which applicants recognize Allef et al. teaches (see bottom of page 1 of remarks) which reads on fatty acid ester containing 15-40 total carbon atoms. Therefore, Applicants arguments with regards to the claim amendments are not persuasive.
Applicants argue that (2) (page 5-6) Bernard et al. discloses N-(2-hydroxyethyl)urea for desquamation, there is no teaching or suggestion to combine this specific urea compound with a precisely defined oleic acid fatty acid ester, salicylic acid, propylene glycol, 5-chlorosalicylic acid and 2-hexyl-1-decanol in a shampoo composition to achieve hair frizz reduction with decreased moisture pickup. The references simply do not provide a roadmap to this specific combination of ingredients, forms and relative amounts. The examiner’s argument of a prima facie case of obviousness based on overlapping amounts is insufficient given the new structural specificity introduced.
Regarding Applicants’ second argument, again, It is well settled that "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). As long as some suggestion to combine the elements is provided by the prior art as a whole, the law does not require that they be combined for the reason or advantage contemplated by the inventor. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). MPEP 2143.01 and 2144 (IV).
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
In In re Lintner, the claimed invention was a laundry composition consisting essentially of a dispersant, cationic fabric softener, sugar, sequestering phosphate, and brightener in specified proportions. The claims were rejected over the combination of a primary reference which taught all the claim limitations except for the presence of sugar, and secondary references which taught the addition of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Appellant argued that in the claimed invention, the sugar is responsible for the compatibility of the cationic softener with the other detergent components. The court sustained the rejection, stating "The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be [sic, would have been] prima facie obvious from the purpose disclosed in the references." 173 USPQ at 562.
As long as there is motivation provided to add the claimed ingredients the rejection is proper. As established in the Office action above, one skilled in the art would add 2-hydroxyethyl urea to provide for desquamation as taught by Bernard et al. One skilled in the art would have been motivated to utilize 2-hexyldecanol in order to treat seborrhea as taught by Moller et al. One skilled in the art would have been motivated to utilize 5-chlorosalicylic acid to manipulate the pH as taught by Taylor et al. Since Allef et al. teaches the use of acids to manipulate there is a reasonable expectation of success. Therefore, the examiner cannot agree that the rejection is based on hindsight.
Applicants continue to argue that the prior art would not be motivated to add the claimed ingredients in order to improve efficacy for % water reduction and % frizz reduction. However, there is absolutely no requirement that the prior art teach the inclusion of these ingredients for this purpose. There must be some motivation to include these ingredients, the examiner agrees with this, but there is no requirement that the reason to include the claimed components is for the same purpose as applicants. As established above, the cited prior art provides the motivation to include the claimed ingredients, even as amended. While the prior art might teach various ingredients, they are all taught for a particular function and it would have been obvious to choose any of them for their intended purpose with a reasonable expectation of success. For example, while Taylor et al. might teach other organic acids to control the pH that does not make the use of 5-chlrosalicyclic acid for this specific purpose, modifying the pH, any less obvious. Applicants have not demonstrated the unexpectedness of the claimed combination. While Applicants allege that the defined forms and ranges leads to synergy, evidence of such has not been presented. In fact, the word synergy or any derivative of this word does not appear at any point in the instant specification.
Applicants argue that (3) (page 6; 9) the claimed composition provides unexpected results in terms of moisture control and frizz reduction. The examiner previously discounted the data in Table 5 by stating it does not include oleic acid which is the required moisture control material. However, the specifically explicit includes oleic acid in molecular class II and shows a 14% water reduction. This directly address the examiner’s previous criticism and unequivocally demonstrates that oleic acid as a moisture control material. It is argued that Table 5 shows composition contains 2% of 2-hydroxyethyl urea increases the penetration of salicylic acid inside hair by 14% compared to a composition without 2-hydroxyethyl urea. This highlights the synergistic effect.
Regarding Applicants’ third argument, while the table on page 9 of the instant specification states oleic acid results in a % water reduction of 14, this does not establish an unexpected effect. This is a property of the oleic acid. Aleff et al. exemplifies oleic acid and thus it would possess this property. Furthermore, the % water reduction is not unexpectedly better than other molecular class II compounds establishing an unexpected effect. Looking to table 5, the examiner cannot agree this establishes an unexpected effect. None of the compositions include oleic acid or even any fatty acid ester. Regarding the arguments on synergy, Where the combined action of two or more agents is greater than the sum of the action of one of the agents used alone, “synergy” according to the legally accepted definition exists. In re Kollman, 201 USPQ 193 (CCPA 1979). Claims drawn to (unexpectedly) synergistic combinations of known ingredients must be factually supported by data commensurate in scope with the claims. See, In re Kollman, 201 USPQ 193 (C.C.P.A. 1979). (The court affirming a 103 rejection of a claim containing the word “synergistic”, because the claims were not commensurate in scope with the showing of unexpected results, other than at 1:1 ratio for certain specific combinations). None of the data shows the effect with 2-hydroxyurea alone to make a comparison to determine if the effect is merely additive vs. synergistic. In fact, the % water reduction of salicylic acid is purported to be 18% (see page 8 of the instant specification). This suggests the data in table 5 isn’t’ synergistic.
Applicants argue that (4) (page 6-7; 9-10) that the recitation “for hair frizz reduction” is not an intended use as alleged by the examiner. The claimed invention species that the composition results in a decrease moisture pickup determined by a DVS method as compared to control with no moisture control agent. This is not an intended use but a functional limitation directly tied to the structural combination of components.
Regarding Applicants’ fourth argument, this limitation is an intended use. Furthermore, even considering that it is tied to the structure of the composition, which the examiner can agree, it doesn’t distinguish the instant claims from the prior art. As set forth above Allef et al. exemplify shampoo compositions with both oleic acid and fatty acid esters with 15-40 total carbon atoms as required by the claims.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 12, 15-18 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of US Patent No. 10561591 (copending Application No. 15367363 (USPGPUB No. 20170157011)). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims a shampoo composition comprising from about 0.2 to about 8% of a moisture control material which is oleic acid wherein the oleic acid is a fatty acid ester containing from 15-40 total carbon atoms and wherein the shampoo composition further comprises from about 0.5 to about 2% of salicylic acid, from about 2 to about 10% of 2-hydroxyethyl urea and propylene glycol and wherein there is a decrease moisture pickup determined by a DVS method as compared to a control with no moisture control materials and further comprising 5-chlorosalicylic acid and 2-hexyl-1-decanol. The instant application claims method of treating hair using the shampoo composition of Claim 1 wherein hair treated with the shampoo composition results in a decrease moisture pickup determined by a DVS method as compared to a control with no moisture control materials.
Patent ‘591 claims a method for hair frizz reduction comprising the steps of a) performing a hair cleansing by applying a hair shampoo and rinsing and b) performing one or more additional hair treatments wherein compositions used in steps a and b) comprise from 0.1 to about 20% of one or more moisture control material. The same moisture control material is claimed. Components specifically claimed include 2-hexyl-1-decanol, 2,4-dihydroxybenzoic acid and 5-chlorosalicylic acid. Salicylic acid is claimed. Hydroxyethyl urea is claimed. Isostearyl isostearate is claimed (reading on fatty acid ester containing 15-40 total carbons). Hair treated with the method for hair frizz reduction absorbs moisture at least 2% less than hair treated with the corresponding combination of treatments having no moisture control material, wherein the moisture absorption is measured using DVS method
Therefore, the scopes of the patent claims and the instant application overlap and thus they are obvious variants of one another.
Claims 1-3, 12, 15-18 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of US Patent No. 10632054 (Application No. 14677636 (USPGPUB No. 20160287495) in view of Bernard et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant claims are set forth above.
Patent ‘054 claims a method for hair frizz reduction wherein hair is soaked in an aqueous composition comprising a moisture control material. The same moisture control material. Also claimed is 2-hexyl-1-decanol, oleic acid, 2,4-dihydroxybenzoic acid and 5-chlorosalicylic acid. Overlapping pH is claimed. Salicylic acid is claimed. Fatty acid ester containing from 15-40 carbon atoms is claimed. Copending ‘636 does not claim the inclusion of 2-hydroxyethyl urea. However, this deficiency is cured by Bernard et al.
Bernard et al. is directed to urea compounds that promote desquamation. Taught is a method for stimulating desquamation of the skin and/or the mucous membranes and/or superficial body growths comprising apply to skin or superficial body growths urea compounds of formula I (claim 1). Claim 6 recites a compound of formula I is N-(2-hydroxyethyl)urea. Application to the skin and/or scalp is claimed (claim 12). Taught is combination of two desquamation-stimulating agents the compound of formula I and salicylic acid (paragraph 0223). The quantity of N-(2-hydroxyethyl)urea and of any other compound of formula I is from 0.1 to 20% by weight. Less than or equal to 10% by weight is particular for daily care applications (paragraph 0038). Compositions taught include shampoos (paragraph 0073).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of patent ‘054 and Bernard et al. and utilize 2-hydroxyethyl urea in the composition of patent ‘054 in order to provide for desquamation as taught by Bernard et al.
With regard to the functional limitation pertaining to decrease in moisture pickup, patent ‘054 discloses the same claimed moisture control materials. Note MPEP 2112.01: "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-3, 12, 15-18 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of US Patent No. 10111820 (Application No. 14959243; USPGPUB No. 20160158135). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant claims are set forth above.
Patent ‘820 claims a rinse-off condition composition for hair frizz reduction comprising about 0.2 to about 20% of a moisture control material. The same moisture control material is claimed. Fatty acid esters containing from 15-40 total carbon atoms is claimed. Also claimed is 5-chlorosalicylic acid, 2-hexyl-1-decanol, 2-4-dihydroxybenzoic acid and oleic acid. Overlapping pH is claimed. Cationic surfactant and high melting point fatty compounds are claimed. Solvents are claimed. Salicylic acid is claimed. Hydroxyethyl urea is claimed.
With regard to the functional limitation pertaining to decrease in moisture pickup, patent ‘820 discloses the same claimed moisture control materials. Note MPEP 2112.01: "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Therefore, the scopes of the copending claims and the instant application overlap and thus they are obvious variants of one another.
Claims 1-3, 12, 15-18 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of US Patent No. 10111815 (Application No. 14742136) in view of Allef et al. as evidenced by Benvenuti. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant claims are set forth above.
Patent ‘815 claims an aqueous hair leave-on composition for hair frizz reduction comprising: from about 0.15% to about 12% of a moisture control material or mixture of moisture control materials, wherein the moisture control material comprises salicylic acid in combination 2,4-dihydroxybenzoic acid, and wherein the leave-on composition further comprises a material selected from the group consisting of glycols, polyglycols, 2-hydroxyethyl urea and mixture thereof. 5-chlorosalicylic acid is claimed. 2-hydroxyethyl urea in an amount from 0.2 to 10% is specifically claimed. A pH from 2 to 7 is claimed. The same further materials are claimed. Cationic surfactant system is claimed. Fatty compounds are claimed. Additional ingredients which can be included include thickeners.
Patent ‘815 does not expressly claim oleic acid. However, this deficiency is cured by Allef et al.
Allef et al. is directed to aqueous hair and skin cleaning compositions comprising biosurfactants. Table 24 is a shampoo comprising water (solvent) in an amount greater than 20%, oleic acid in 0.4%, cocamidopropyl betaine (cationic surfactant in 2% reading on instant claim 18), propylene glycol and citric acid to adjust pH to 5.0 (reading on instant claims 15-16). Table 25 teaches a shampoo comprising water in greater than 20%, oleic acid in 0.15%, propylene glycol, glycol distearate in 1% and cocamidopropyl betaine in 2.5 (reading on cationic surfactant of claim 18). Gels are taught (claim 15). The fatty acid is included in amounts from 0.1 to 20% by weight of the sum of fatty acid and surfactants where surfactants are used in an amounts from 1 to 30% (claim 1). Fatty acids taught include valeric acid and oleic acid (paragraph 0029). Exemplified compositions include oleic acid and salicylic acid and propylene glycol (table 41, 66, 77, 82, reading on the claimed combination of oleic acid, salicylic acid and propylene glycol recited in claim 1). Exemplified amounts of salicylic acid include 2% (table 66). The compositions can also comprise urea (paragraph 0046). Esters of fatty acids with polyols are taught as thickeners (paragraph 0048).
Benvenuti teaches that Pequi oil, which is mostly oleic acid, is better for frizzy hair.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of patent ‘815 and Allef et al. and utilize oleic acid in the composition of patent ‘815. One skilled in the art would have been motivated to add oleic acid as it is a fatty compound which is better for frizzy hair. One skilled in the art would have been motivated to add glycol disearate as it is a thickener which can be utilized and Allef et al. exemplifies its use with oleic acid. Since patent ‘815 claims fatty compounds and thickeners can be included and the composition is for hair frizz reduction there is a reasonable expectation of success. Allef et al. teaches amounts of oleic acid/glycol disearate which read on the instant claims.
Claims 1-3, 12, 15-18 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of US Patent No. 10117819 (Application No. 14959234) in view of Allef et al. as evidenced by Benvenuti. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant claims are set forth above.
Patent ‘819 claims a rinse-off conditioner composition for hair frizz reduction comprising: from about 0.2% to about 20% of a moisture control material or mixture of moisture control materials, wherein the moisture control material comprises salicylic acid in combination 2,4-dihydroxybenzoic acid, and wherein the rinse-off conditioner composition further comprises a material selected from the group consisting of glycols, polyglycols, 2-hydroxyethyl urea and mixture thereof. 5-chlorosalicylic acid is claimed. 2-hydroxyethyl urea in an amount from 0.2 to about 10% is claimed. pH of 2 to 5 is claimed. Same additional components are claimed. A cationic surfactant system is claimed. Fatty compounds are claimed. Thickeners are claimed.
Patent ‘819 does not expressly claim oleic acid or a fatty acid ester. However, this deficiency is cured by Allef et al.
The teachings of Allef et al. are set forth above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of patent ‘819 and Allef et al. and utilize oleic acid in the composition of patent ‘819. One skilled in the art would have been motivated to add oleic acid as it is a fatty compound which is better for frizzy hair. One skilled in the art would have been motivated to add glycol disearate as it is a thickener which can be utilized and Allef et al. exemplifies its use with oleic acid. Since patent ‘819 claims fatty compounds and thickeners can be included and the composition is for hair frizz reduction there is a reasonable expectation of success. Allef et al. teaches amounts of oleic acid/glycol disearate which read on the instant claims.
Claims 1-3, 12, 15-18 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of US Patent No. 10258555 (Application No. 15367369) in view of Allef et al. as evidenced by Benvenuti. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant claims are set forth above.
Patent ‘555 claims a shampoo composition for hair frizz reduction comprising: from about 0.1% to about 20% of a moisture control material or mixture of moisture control materials wherein the moisture control material comprises salicylic acid in combination with 2,4-dihydroxybenzoic acid wherein shampoo composition further comprises a material selected from the group consisting of glycols, polyglycol and 2-hydroxyethyl urea or mixture thereof. 5-chlrosaliylic acid is claimed. A pH from about 3 to about 5.5 is claimed. The same additional components are claimed. 2-hydroxyethyl urea in an amount from 0.2 to 10% is claimed. Cationic surfactant system is claimed.
Patent ‘555 does not expressly claim oleic acid or fatty acid esters. However, this deficiency is cured by Allef et al.
The teachings of Allef et al. are set forth above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of patent ‘555 and Allef et al. and utilize oleic acid in the composition of patent ‘555. One skilled in the art would have been motivated to add oleic acid as it is a fatty compound which is better for frizzy hair. One skilled in the art would have been motivated to add glycol disearate as it is a thickener which can be utilized and Allef et al. exemplifies its use with oleic acid. Since patent ‘555 claims fatty compounds and thickeners can be included and the composition is for hair frizz reduction there is a reasonable expectation of success. Allef et al. teaches amounts of oleic acid/glycol disearate which read on the instant claims.
Response to Arguments
Applicants’ arguments filed June 22 2026 have been fully considered but they are not persuasive.
Applicants argue that the NSDP rejections should be held in abeyance. It is argued that the court has not sanctioned any requirements for applicant upon receiving a provisional double patenting rejection. The court has stated “once the provisional rejection has been made, there is nothing the examiner and the applicant must do until the other application issues”.
Regarding applicants’ argument, the rejections are maintained since applicant has not made any substantive arguments traversing the rejection. Additionally, the non-statutory double patenting rejections are not provisional. All of the double patenting rejections made above, and previously presented, are over issued Patents. Thus, the rection is not provisional and the other application has issued. Therefore, the arguments made by applicants with regards to abeyance are not persuasive.
Conclusion
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/ABIGAIL VANHORN/Primary Examiner, Art Unit 1636
