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 .
Claim Status
Applicant’s claim amendments and arguments, filed 09 October 2025, are acknowledged.
Claims 1, 3, 8, 13-15, 17 & 21-24 are pending.
Claims 2, 4-7, 9-12, 16 & 18-20 are cancelled.
Claims 1 & 17 are amended.
Claims 21 & 22 are withdrawn.
Claims 1, 3, 8, 13-15, 17, 23 & 24 have been examined on the merits.
Examination on the merits is extended to the extent of the following species:
Cationic Surfactant- cetyltrimethylammonium chloride;
Anionic Surfactant- essentially absent;
One or more surfactants-cocoamine oxide;
-and-
Additive- zinc pyrithione.
Withdrawn Objections/Rejections
The rejection of claims 1, 3, 8, 13-15, 17, 23 & 24 under 35 USC 112(a)-New Matter is withdrawn due to amendments which cancel the recited ratios.
The rejection of claims 1, 3, 8, 13-15, 17, 23 & 24 under 35 USC 112(b) is withdrawn due to amendments which delete the indefinite parenthetical phrase “alkyl(oligo)glycoside”.
The rejection of claims 1, 3, 8, 14, 15, 23 & 24 under 35 U.S.C. 103 over Takeda in view of Chemists Corner; claims 3 and 17 over Takeda, Chemists Corner, and BeautyCon; and claim 13 over Takeda, Chemists Corner, and Klein is withdrawn due to amendments which recite the cationic surfactant is present in excess of the at least two fatty alcohols.
New Objections/Rejections
Claim Objections
Claim 1 is objected to because of the following informalities: the claim 1 “wherein clause” has too many is’s, reciting “the cationic surfactant is present in the hair cleansing and conditioning composition is in excess of the at least two fatty alcohols” (emphasis added).
Applicant may wish to consider whether an amendment to recite “the cationic surfactant is present in the hair cleansing and conditioning composition in excess of the at least two fatty alcohols” would obviate the objection.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 8, 13-15, 17, 23 & 24 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 1 recites the limitation “the cationic surfactant is present in the hair cleansing and conditioning composition is in excess of the at least two fatty alcohols”. The reply filed 09 October 2025 does not state where support for the amendment may be found. A cursory search of the specification showed that no apparent support is present for the concept that the cationic surfactant is present in the hair cleansing and conditioning composition in excess of the at least two fatty alcohols. The claims change the scope of the disclosure; thereby constituting NEW MATTER.
Applicant is encouraged to point by paragraph number where support may be found.
Claims 3, 8, 13-15, 17, 23 & 24 are rejected under 35 USC 112(a)-NEW MATTER because they depend from rejected claim 1.
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, 8, 13-15, 17, 23 & 24 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 does not make sense. Claim 1 recites “the cationic surfactant is present…in excess of the at least two fatty alcohols…” However, the lower limit recited for the cationic surfactant and the at least two fatty alcohols is the same (i.e. 0.01%). As such, when present at their lower limits, it is impossible for the cationic surfactant to be present in an amount that is in excess of the at least two fatty alcohols.
Claims 3, 8, 13-15, 17, 23 & 24 are rejected under 35 USC 112(b) because they depend from indefinite claim 1 and do not clarify the issue.
Claim 17 does not make sense. Claim 17 depends from claim 1 which recites “the cationic surfactant is present…in excess of the at least two fatty alcohols…” However, the claim 17 lower limit recited for the cationic surfactant/cetyltrimethylammonium chloride and the at least two fatty alcohols comprising cetyl alcohol and stearyl alcohol is the same (i.e. 0.01%). As such, when present at their lower limits, it is impossible for the cationic surfactant to be present in an amount that is in excess of the at least two fatty alcohols.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 depends from claim 1. Claim 1 recites “the cationic surfactant is present…in excess of the at least two fatty alcohols…” However, claim 17 expands the relationship between the cationic surfactant and at least two fatty alcohols by reciting the same lower limit for the cationic surfactant comprising cetyltrimethylammonium chloride and the at least two fatty alcohols comprising cetyl alcohol and stearyl alcohol.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 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.
Claims 1, 3, 8, 14 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kern (US Patent No. 5,925,615; Published: 07/20/1999).
* Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. fragrance a species in the additive genera to which the elected species of zinc pyrithione/antidandruff agent belongs) and in an effort to expedite prosecution, this art has been applied.
With regard to claims 1a), 3 & 17a), and the elected species, Kern in Formulation 4 teaches a composition comprising the quaternary compounds behentrimonium methosulfate, cetrimonium chloride (1.5%), and tricetylmonium chloride in a combined amount of 4.5%. With regard to claims 1c) & 17c), Kern in Formulation 4 teaches cetyl alcohol and stearyl alcohol in a combined amount of 4.0%. More broadly, with regard to claims 1b), 8 & 17b), Kern teaches inclusion of conditioning agents and teaches glyceryl esters as conditioning agents in the compositions in an amount of 0.5 to 5.0% (col. 3, ll. 55-65). Kern teaches the conditioning agents which are glyceryl esters for inclusion are polyglyceryl-10 decaoleate (HLB 3.5), polyglyceryl-6 distearate (HLB ~7), and polyglyceryl-10 stearate (HLB 12-13). With regard to claim 1, Kern’s Formulation 4 is free of anionic surfactants. With regard to claim 14, Kern teaches inclusion of fragrance.
While there is not a single example comprising each of the claimed components, the polyglyceryl ester conditioning agents which are polyglyceryl-10 decaoleate, polyglyceryl-6 distearate, and polyglyceryl-10 stearate are included among a short list of reagents. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
With regard to recited amounts of cationic surfactant, at least one polyglyceryl ester surfactant, and at least two fatty alcohols, Kern teaches parameters with values that overlap or fall within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 13-15 & 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kern as applied to claims 1, 3, 8, 14 & 17 above, and further in view of Sata (US 2011/0014145; Published: 01/20/2011).
* Please note that in the process of searching for the elected embodiment, the examiner found art which reads on the broader recitation of the claims (i.e. piroctone olamine, a species in the additive genera to which the elected species of zinc pyrithione/antidandruff agent belongs) and in an effort to expedite prosecution, this art has been applied
Kern’s teachings are described above. Kern’s Formulation 4 is a hair conditioner (col. 12.ll. 1-20).
Kern does not teach inclusion of amine oxides.
In the same field of invention of hair conditioners, with regard to claim 13, Sata teaches a hair conditioning composition which may comprise amphoteric surfactants to impart stability (title; [0045]; [0046]). With regard to claim 13, Sata teaches examples of the amphoteric surfactant include amine oxide-type surfactants including alkyl dimethyl amine oxide ([0065]). With regard to claim 13, Sata teaches the content of a surfactant is preferably 0.1 to 10% by weight which affects the stability and feel [0066]. With regard to claims 14 & 15, Sata teaches inclusion of anti-dandruff substances including piroctone olamine [0391]. With regard to claim 23, Sata teaches it is of “particular advantage” for the composition to include of fatty substances including fatty alcohols which may be arachidyl alcohol, capryl alcohol, and behenyl alcohol ([0339], [0340] & [0343]).
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Here at least rationale (A) may be applied in which it would have been prima facie obvious to the ordinary skilled artisan, at the time of filing, to have modified Kern’s Formulation 4 hair conditioner by adding 0.1 to 10% alkyl dimethyl amine oxide, piroctone olamine, and any one of arachidyl alcohol, capryl alcohol, and behenyl alcohol as taught by Sata because Kern and Sata are both directed to hair conditioners and it is obvious to modify similar compositions in the same way. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to provide an anti-dandruff effect while improving the stability and feel Kern’s hair conditioner with advantageous inclusion of fatty alcohols.
With regard to the recited amounts of amine oxide, the combined teachings of Kern and Sata teach this parameter with values that overlap or fall within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kern as applied to claims 1, 3, 8, 14 & 17 above, and further in view of Rughani (US 2018/0280270; Published: 10/04/2018; previously cited; PTO-892: 06/23/2023).
*This rejection addresses the elected species of zinc pyrithione.
The teachings of Kern are described above. In brief, Kern in Formulation 4 teaches a hair conditioner. Kern teaches inclusion of preservatives (abstract).
Kern does not teach inclusion of zinc pyrithione.
In the same field of invention, Rughani teaches hair treatment compositions which “condition, and protect hair from damage or to reduce/minimize damage to hair or to improve the condition and quality of the hair” [0015]. Rughani teaches inclusion of preservatives, which includes zinc pyrithione, and teaches them as suitable for treating hair [0083].
Here at least rationale (A) may be applied in which it would have been prima facie obvious to the ordinary skilled artisan, at the time of filing, to have modified Kern’s Formulation 4 hair conditioner by adding zinc pyrithione to the composition as suggested by Rughani because Kern teaches inclusion of preservatives in the compositions of his invention and zinc pyrithione is a preservative used in hair conditioners to treat hair as taught by Rughani. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to treat hair and preserve the formulation with a preservative taught as suitable for hair treatments by Rughani.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kern and Rughani as applied to claims 1, 3, 8, 14, 15 & 17 above, and further in view of Safety Assessment of Polyglyceryl Fatty Acid Esters Used in Cosmetics (Published: 03/07/2016).
The teachings of Kern are described above. In brief, Kern in Formulation 4 teaches a hair conditioner. Kern teaches inclusion of glyceryl esters in their shampoo formulations (Kern’s claim 12 & 13). In the same field of invention, Rughani teaches hair treatment compositions which “condition, and protect hair from damage or to reduce/minimize damage to hair or to improve the condition and quality of the hair” [0015]. Rughani teaches inclusion of one or more compounds including polyglycerol/ glycerol esters of fatty acids or glycol diesters or diesters of ethylene glycol and fatty acids or esters of fatty acids and fatty alcohols and teaches polyglyceryl-10 laurate as suitable (HLB= 15.7; [0050] & [0055]).
Neither Kern nor Rughani teach a pattern of preference for at least one polyglyceryl ester surfactant has an HLB from about 15 to about 18.
Safety Assessment of Polyglyceryl Fatty Acid Esters Used in Cosmetics teaches polyglyceryl-10 laurate (HLB = 15.7) is a viscous liquid used in Leave-On and Rinse-Off products including hair conditioners, providing skin conditioning, surfactant and emulsifying properties (pg. 53; Table 6-pg. 76; Table 8-pg. 88; pg. 111).
Here at least rationale (A) may be applied in which it would have been prima facie obvious to the ordinary skilled artisan, at the time of filing, to have modified the hair conditioner suggested by the combined teachings of Kern and Rughani by adding polyglyceryl-10 laurate (HLB = 15.7) to the composition as suggested by Safety Assessment of Polyglyceryl Fatty Acid Esters Used in Cosmetics because Kern teaches inclusion of glyceryl esters, Rughani teaches polyglyceryl-10 laurate is suitable for hair treatments that condition hair and polyglyceryl-10 laurate is a glyceryl ester used in hair conditioners to provide skin/scalp conditioning with the added benefits of viscosity, surfactant and emulsifying properties. The ordinary skilled artisan would have been motivated to do so, with an expectation of success, in order to thicken the conditioner formulation while providing the added benefits of skin/scalp conditioning and emulsifying properties with a reagent that is suitable for hair conditioners.
Response to Arguments
In the traverse of the rejection of claims 1, 3, 8, 14-15, and 23-24 under 35 USC 103(a) over Takeda and Chemists Corner, Applicant argues Takeda does not teach the composition comprises at least two fatty alcohols in excess of the cationic surfactant (reply, pg. 6 & 7).
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORI K MATTISON/Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619