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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/9/2026 has been entered.
Election/Restrictions
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/21/2020.
Response to Arguments
All of Applicant’s arguments filed 4/9/2026 have been fully considered and are not persuasive.
In summary, Applicant argues that Inventive formulations 2-4 of the instant specification show a clear technical advantage. The data shows that the addition of the additional silicone (iv) resulted in a substantial reduction in friction coefficient. The comparison between Formulations 4 vs. 3 and 2 vs. 3 illustrate a synergistic effect. This effect is not predicted from the references of record.
This is not persuasive because Applicant has not provided proper side-by-side comparisons as multiple variables between the compositions have been change. Applicant remarks that even when the emulsion content was double in formulation 3, the friction coefficient showed no significant improvement as compared to formulation 2 which in includes the additional silicone (iv), however, while formulation 4 has double emulsion content the total amount of silicone used was calculated to be 1.5%, while formulation 2 has a silicone content of 2.1 and as demonstrated by Johnson below silicones are known to reduce friction in hair, so it doesn’t seem unexpected that a composition comprising a greater amount of silicone would reduce the coefficient of friction.
New Claim Rejections - 35 USC § 112
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 1-11, 14, 18-19 and 22-23 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.
Regarding claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-11, 14, 18-19 and 22-23 are rejected as they depend from claim 11 and do not cure its deficiencies and are therefore deficient for the same reasons.
Claim 22 recites “further comprising: (iv)… polydimethylsiloxane…”. The use of “further comprising” and “(iv)” renders the claim indefinite as claim 1 already comprises a silicone ingredient (iv), so it’s unclear if claim 22 is a 2nd required component (iv) and the composition must therefore have 2 ingredients (iv), or if clam 22 is simply trying to narrow the (iv) of claim 1 to specifically be a polydimethylsiloxane as claimed. For purposes of examination, claim 22 will be seem as further limiting the silicone (iv) of claim 1 to be a polydimethylsiloxane as claimed.
Claim 23 is rejected as it depends from claim 22 and does not cure its deficiencies and is therefore deficient for the same reasons.
Modified Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11, 14 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cervantes (US 5,756,076), Paul (WO 2017/109692), and Sako (WO 1999/024004), as evidenced by Benabdillah (US 2008/0226576).
Cervantes discloses a conditioning and detergent for use on hair. The composition comprises a conditioner system comprising at least one C14-C22 fatty alcohol and at least one cationic surfactants selected from quaternary ammonium salts (abs).
Regarding claims 1(i), 2-3 and 18-19: Cervantes teaches the cationic surfactants, a quaternary ammonium salt, to preferably be behenyltrimethylammonium chloride (col. 3, lines 35-10) and teaches this to be used in amounts ranging from 0.3-10%, preferably 0.5-8% which overlaps with the claimed ranges of 3.2-10%, 3.2-5% (col. 5, lines 5-15).
Regarding claims 1(iii) and 14: Cervantes teaches the at least one C14-C22 fatty alcohol to be preferably selected from cetyl alcohol, stearyl alcohol and cetyl stearyl alcohol (Col. 2, lines 40-47). The fatty alcohol is taught to be used in amounts ranging from 1-10%, preferably 1-8% (col. 5, lines 5-15), which overlaps with the claimed 5.5-15% and 5.5-10%.
Regarding claim 1(iv): Cervantes teaches that the composition can further comprise a cationic silicone, preferably DC939 cationic emulsion which is an aqueous emulsion comprising 36% of amodimethicone (col. 3, lines 40-65), a polyorganosiloxane, these can be used in amounts ranging from 0-10% (col. 5, lines 5-15). As evidenced by Benabdillah, DC939 emulsion is a silicone gum [0136].
However, Cervantes does not teach the composition to comprise the claimed O/W emulsion in amounts of 0.5-1.2%.
Regarding claims 1(ii) and 11: Paul discloses an oil-in-water emulsion having D50 particle size of less than 350 nm comprising: a silicone mixture comprising: a trialkylsilyl terminated dialkylpolysiloxane having a viscosity of from 40,000 to less than 100,000 mPa.s at 25°C and an amino silicone having a viscosity of from 1,000 to 15,000 mPa.s at 25°C and amine value of from 2 to 10 mg of KOH per gram of polymer; a mixture of emulsifiers comprising one or more non-ionic emulsifier, wherein the mixture of emulsifiers has a HLB value from 10 to 16; and water (Paul – claim 1).
Paul teaches this O/W emulsion to impart a better conditioning property along with other desirable properties. Better conditioning properties include reduction of wet combing force, improvement of dry feel or smoothness, reduction of dry combing force, reduction of heavy fee, reduced build up and/or improvement of shine (Pg. 11-12).
Regarding claims 1(ii), 2, 4-8, 9 and 11: Examples I (inventive examples 4-6) discloses multiple embodiments wherein the oil-in-water emulsion was made using 450g amino silicone fluid (trimethylsilyl terminated aminoethylaminopropylmethylsiloxane - dimethylsiloxane copolymer, viscosities ranging from 1600-13500 mPa.s and an amine value of 6.9-7.2) and 1800g trimethylsilyl terminated dimethylsiloxane polymer fluid (with a viscosity of 61500mPa.s) and a non-ionic mixture (Steareth-6, PEG 100 stearate, trideceth-3 and trideceth-10) having an HLB of 11.25. To this emulsified mixture a cationic surfactant, cetyltrimethylammonium chloride, was added. The HLB value of the mixture of cationic and non-ionic emulsifiers was between 10 and 16. As calculated using the amounts provided above, the trimethylsilyl terminated dimethylsiloxane polymer fluid makes up 80% of the silicone mixture and the amino silicone makes up 20%. The particle size of the inventive emulsions ranged from 150-170nm.
Regarding claims 8 and 10: Paul teaches the trialkylsilyl terminated dialkylpolysiloxane to be present in an amounts of 38-42% and the amino silicone to be present in an amount of 8-12%, both amounts relative to the total weight of the emulsion. The silicone are present in a total amount of 45-54% with the trialkylsilyl terminated dialkylpolysiloxane making up 70.37-93.32% of the total silicone mixture and the amino silicone making up 14.81-26.67. These amounts overlap with the ranges of 70-90% and 10-30% of instant claim 8 (Pg. 10, lines 1-4) and overlaps with the ranges of silicone mixture in claim 10.
Paul teaches that the O/W emulsion can be used in hair care compositions in amounts preferably ranging from 3-10% relative to the total weight of the hair composition (Pg. 11).
Sako discloses conditioning shampoo compositions comprising 0.01-20%, preferably 0.05-10% of a silicone compound. The silicone compound can be incorporated into the compositions in the form an emulsion and suitable include conditioning agents (pg. 13).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of Cervantes with the teachings of Paul and the O/W emulsion of Paul to the hair composition of Cervantes as an additional conditioning agent, as Paul teaches that the emulsions provides hair care compositions with better conditioning property and other desirable properties as discussed above. One of skill in the art would have a reasonable expectation of success as Cervantes teaches the use of multiple conditioning agents, such as silicones, Paul teaches that the O/W emulsion can be added to hair care compositions to provide improved conditioning benefits and its prima facie obvious to combine two compositions each taught by the prior art to be used for same purpose (i.e. conditioning) in order to create a third composition for the same purpose (i.e. conditioning). While Paul teaches the emulsion to be used in amounts of 3-10%, in view of the teachings of Sako, a skilled artisan would recognize that the conditioning O/W emulsion of Paul could be used in amounts as low as 0.05% as taught by Sako who also teaches conditioning silicone emulsions and its prima facie obvious to purse the known options within the technical grasp of the skilled artisan. Furthermore, it would have been prima facie obvious to optimize the amount of emulsion added to a cosmetic composition in order to obtain desired properties as Paul teaches the emulsion to be provide better conditioning properties include reduction of wet combing force, improvement of dry feel or smoothness, reduction of dry combing force, reduction of heavy fee, reduced build up and/or improvement of shine.
Claims 1-11, 14, 18-19 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cervantes (US 5,756,076), Paul (WO 2017/109692), and Sako (WO 1999/024004), as evidenced by Benabdillah (US 2008/0226576), as applied to claims 1-11, 14 and 18-19 above, and further in view of Desenne (US 2011/0150809) and Johnson (Cosmetics and Toiletries)
As discussed above, the prior art makes obvious the limitations of claims 1-11, 14 and 18-19, however, the above reference do not teach the composition of Cervantes to further comprise an additional polydimethylsiloxane containing trimethylsilyl end groups having the claimed viscosity as recited by instant claims 22 and 23.
Desenne teaches compositions for the treatment of hair (Abs). These composition comprises at least one silicone [0135], these include polyorganosiloxanes which can be in the form of oils, waxes, resins or gums [0136], preferred silicones for use include polydimethylsiloxanes containing trimethylsilyl end groups (i.e. dimethicone) having a viscosity of from 5x10-6 to 2.5 m2/s at 25°C [0145]. These can be used in amounts ranging from 0.1-10% [0250].
Johnson teaches that silicones are known for reducing friction, providing shine, aiding in color retention, etc. (pg. 1 and 2).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition made obvious above with the teachings of Desenne and Johnson. One of skill in the art would have been motivated to further add 0.1-10% of a silicone such as polydimethylsiloxanes containing trimethylsilyl end groups (i.e. dimethicone) having a viscosity of from 5x10-6 to 2.5 m2/s at 25°C as taught by Desenne as its prima facie obvious to pursue to known options within the technical grasp of a skilled artisan to formulate a hair care composition comprising well-known silicones, Paul teaches silicones are well known conditioning agents for hair (Paul – pg. 1, lines 15-20)) and Johnson teaches that its known in the art that silicones also reduce friction. One of skill in the art would have a reasonable expectation of success as Cervantes teaches the use of multiple conditioning agents, such as silicones.
Claims 1-11, 14, 18-19 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paul (WO 2017/109692), Ainger (US 6,610,280), Desenne (US 2011/0150809), Johnson (Cosmetics and Toiletries) and Sako (WO 1999/024004).
Paul teaches a O/W emulsion to impart a better conditioning property along with other desirable properties. Better conditioning properties include reduction of wet combing force, improvement of dry feel or smoothness, reduction of dry combing force, reduction of heavy fee, reduced build up and/or improvement of shine (Pg. 11-12).
Regarding claims 1(ii), 2, 4-8, 9 and 11: Examples I (inventive examples 4-6) discloses multiple embodiments wherein the oil-in-water emulsion was made using 450g amino silicone fluid (trimethylsilyl terminated aminoethylaminopropylmethylsiloxane - dimethylsiloxane copolymer, viscosities ranging from 1600-13500 mPa.s and an amine value of 6.9-7.2) and 1800g trimethylsilyl terminated dimethylsiloxane polymer fluid (with a viscosity of 61500mPa.s) and a non-ionic mixture (Steareth-6, PEG 100 stearate, trideceth-3 and trideceth-10) having an HLB of 11.25. To this emulsified mixture a cationic surfactant, cetyltrimethylammonium chloride, was added. The HLB value of the mixture of cationic and non-ionic emulsifiers was between 10 and 16. As calculated using the amounts provided above, the trimethylsilyl terminated dimethylsiloxane polymer fluid makes up 80% of the silicone mixture and the amino silicone makes up 20%. The particle size of the inventive emulsions ranged from 150-170nm.
Regarding claims 8 and 10: Paul teaches the trialkylsilyl terminated dialkylpolysiloxane to be present in an amounts of 38-42% and the amino silicone to be present in an amount of 8-12%, both amounts relative to the total weight of the emulsion. These amounts overlap with the ranges of 70-90% and 10-30% of instant claim 8 (Pg. 10, lines 1-4).
Paul teaches that the O/W emulsion can be used in hair care compositions in amounts ranging preferably from 3-10% relative to the total weight of the hair composition (Pg. 11). Paul teaches the emulsion to be provide better conditioning properties include reduction of wet combing force, improvement of dry feel or smoothness, reduction of dry combing force, reduction of heavy fee, reduced build up and/or improvement of shine, therefore it would have been prima facie obvious to optimize the amount of emulsion added to a cosmetic composition in order to obtain desired properties.
However, Paul does not teach the composition to comprise 3.2-10% of a cationic emulsifier and 5.5-15% of a fatty alcohol as recited by instant claims 14 and 18-19.
Ainger discloses a hair treatment composition containing a silicone component comprising droplets of a silicone blend (abs) which provide the composition with conditioning benefits (col. 1, lines 5-10). The blend is preferably added in the form of an aqueous emulsion (col. 2,lines 60-65).
Ainger teaches the composition to preferably comprise a conditioners, preferably fatty alcohols, these are preferably combined with cationic surfactants. This combination in conditioning compositions is especially advantageous because it leads to formation of a lamellar phase, in which the cationic surfactant is dispersed. Preferred fatty alcohols include cetyl alcohol, stearyl alcohol and mixture thereof. These are used in amounts ranging from 0.01-10%. The cationic conditioning surfactants suitable for use include behenyltrimethylammonium chloride and these are used in amounts ranging from 0.01-10% (Col. 9, lines 55 through Col. 11 lines 15), reading on instant claim 3.
It would have been prima facie obvious to modify the teachings of Paul with those of Ainger and use a combination of behentrimethylammonium chloride and cetyl and/or stearyl alcohols in the cosmetic compositions of Paul comprising the claimed O/W emulsion in the taught amounts as Ainger teaches that this combination when used in conditioning compositions is especially advantageous because it leads to formation of a lamellar phase, in which the cationic surfactant is dispersed. One of skill in the art would have a reasonable expectation of success as Ainger teaches that this combination can be used in hair composition comprising aqueous silicone emulsions and Paul teaches aqueous silicone emulsions and teaches that surfactants and fatty alcohols can be added to the cosmetic composition.
However, the above reference do not teach the composition of Paul to further comprise an additional polydimethylsiloxane containing trimethylsilyl end groups having the claimed viscosity as recited by instant claims 1(iv), 22 and 23.
Desenne teaches compositions for the treatment of hair (Abs). These composition comprises at least one silicone [0135], these include polyorganosiloxanes which can be in the form of oils, waxes, resins or gums [0136], preferred silicones for use include polydimethylsiloxanes containing trimethylsilyl end groups (i.e. dimethicone) having a viscosity of from 5x10-6 to 2.5 m2/s at 25°C [0145]. These can be used in amounts ranging from 0.1-10% [0250].
Johnson teaches that silicones are known for reducing friction, providing shine, aiding in color retention, etc. (pg. 1 and 2).
One of skill in the art would have been motivated to further add 0.1-10% of a silicone such as polydimethylsiloxanes containing trimethylsilyl end groups (i.e. dimethicone) having a viscosity of from 5x10-6 to 2.5 m2/s at 25°C as taught by Desenne as its prima facie obvious to pursue to known options within the technical grasp of a skilled artisan to formulate a hair care composition comprising well-known silicones, Paul teaches silicones are well known conditioning agents for hair (Paul – pg. 1, lines 15-20)) and Johnson teaches that its known in the art that silicones also reduce friction. One of skill in the art would have a reasonable expectation of success as Paul teaches additional hair care ingredients can be added to the composition (pg. 11,lines 20-25).
However, the above references do not teach the O/W emulsion to be used in amounts ranging from 0.5-1.2% as recited by instant claim 1.
Sako discloses conditioning shampoo composition comprising 0.01-20%, preferably 0.05-10% of a silicone compound. The silicone compound can be incorporated into the compositions in the form an emulsion and suitable include conditioning agents (pg. 13).
As discussed above, Paul teaches the emulsion to be provide better conditioning properties including reduction of wet combing force, improvement of dry feel or smoothness, reduction of dry combing force, reduction of heavy fee, reduced build up and/or improvement of shine and preferably be used in amounts of 3-10%. In view of the teachings of Sako, a skilled artisan would recognize that the conditioning O/W emulsion of Paul could be used in amounts as low as 0.05% as taught by Sako who also teaches conditioning silicone emulsions and its prima facie obvious to purse the known options within the technical grasp of the skilled artisan. Furthermore, it would have been prima facie obvious to optimize the amount of emulsion added to a cosmetic composition in order to obtain desired properties.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached on Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
Prosecution Insights