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 in the response filed 17 October 2025 are acknowledged.
Claims 1-20 are pending.
Claim 14 is amended.
Claims 15-20 withdrawn.
Claims 1-14 are under consideration.
Examination on the merits is extended to the extent of the following species:
At least one nonionic guar polymer- hydroxypropyl guar;
At least one polysaccharide-xanthan gum
At least one nonionic film-forming polymer -“VP/methacrylamide/vinyl imidazole copolymer -and-
At least one cationic film-forming polymer - VP/dimethyl amino ethyl methacrylate copolymer
Withdrawn Rejections
The rejection of claim 14 under 35 USC 112(b) is withdrawn due to a claim 14 (b) amendment to recite the limitation " the at least one polysaccharide other than the at least nonionic guar polymer" in lines 4-6.
The rejection of claim 14 under 35 USC 112(b) is also withdrawn due to claim 14 (f) amendments to recite "the at least one polysaccharide other than the nonionic hydroxyalkyl-modified guar polymer”.
New and Maintained Rejections
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 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 recites the limitation "the at least one polysaccharide other than the nonionic hydroxyalkyl-modified guar polymer" in the fifth to the last line. There is insufficient antecedent basis for this limitation in the claim.
Applicant may wish to consider whether an amendment to recite “the at least one polysaccharide other than the at least one nonionic hydroxyalkyl-modified guar polymer” would obviate the rejection.
Response to Arguments
In the traverse of the rejection of claim 14 under 35 USC 112(b), Applicant argues they have amended claim 14 as proposed by the Examiner to reference hydroxyalkyl-modified guar polymer (reply, pg. 8 & 9).
This is not persuasive. Paragraph 2 of pg. 4 of the office action mailed 17 June 2025 suggests the amendment should be “the at least one polysaccharide other than the at least one nonionic hydroxyalkyl-modified guar polymer”.
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 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 1-10, 12 & 13 are rejected under 35 U.S.C. 103 as being unpatentable over Lauscher (US 2006/0013785; IDS filed- 05/08/2023; previously cited).
Lauscher teaches hair styling gels (title). With regard to claims 1(a), 2 & 3, Lauscher teaches inclusion of at least one gel former in an amount of “0.1 to 20 percent by weight or from 0.5 to 10 percent by weight” and teaches hydroxypropyl guar as a suitable gel former ([0005], [0009] & [0021]). With regard to claims 1 (a), 2 & 3, Lauscher in Example 8 teaches a hair styling gel comprising “hydroxypropyl guar” in an amount of 0.3% [0103]. With regard to claims 1(b) & 4, Lauscher teaches the gel comprises from 0.5 to 10% by weight of gel former which is preferably xanthan gum ([0030] & [0085]). With regard to claims 1(b), 4 & 5, Lauscher in Example 3 teaches inclusion of 1.5% xanthan gum and in Example 5 teaches inclusion of 1.0 % xanthan ([0098] & [0100]). With regard to claims 1( c) & 7, Lauscher teaches at hair fixing polymers, which can be non-ionic, anionic cationic, amphoteric and or zwitterionic in an amount 0.01-5% ([0035] –[0036]). With regard claims 1 ( c) & 6, Lauscher teaches VP/VA (vinyl pyrrolidone and vinyl acetate copolymer) to be a preferred non-ionic hair fixing polymer ([0056]). With regard claims 1 ( c), 6 & 7, Lauscher teaches in Examples 5 and 7 hair styling gels comprising 1.5% of VP/VA and in Example 6 comprising 3.0% VP/VA ( [0100] - [0102]). With regard to the elected species, Lauscher teaches in their claim 9 terpolymers of vinyl pyrrolidone, methacrylamide and vinyl imidazole as the nonionic polymer for inclusion in their gel. With regard to claims 1(d) & 8, Lauscher teaches in their claim 9 copolymers of vinyl pyrrolidone and dimethylaminoethylmethacrylate for inclusion in their gel as the cationic polymer ([0047]; Lauscher-claim 9). With regard to claims 1 (d) & 9, Lauscher in the Example 6 gel teaches the cationic polymer ammonium acryloyldimethyltaurate/- vinylpyrrolidone copolymer in an amount of 1.0% [0101]. It would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lauscher’s gel by using the copolymer of copolymers of vinyl pyrrolidone and dimethylamino ethyl methacrylate in an amount of 1% because Lauscher teaches copolymers of vinyl pyrrolidone and dimethylaminoethylmethacrylate and ammonium acryloyldimethyltaurate/vinylpyrrolidone copolymer are both suitable cationic polymers for the gel of their invention and exemplifies use of a cationic polymer in an amount of 1%. With regard to claim 1 (e), Lauscher teaches an embodiment of their invention which comprises “from 0.01 to 20, especially preferably from 0.05 to 10, most preferably from 0.1 to 5, percent by weight of at least one surfactant” which can be nonionic, anionic, cationic or zwitterionic and especially can act as an emulsifier or solvating agent for hydrophobic additive ingredients, such as perfume oils” [0060]. With regard to claim 1( e), Lauscher teaches the composition may comprise at least one surfactant which may be an anionic surfactant [0060]. With regard to claim 1( e) & 10, Lauscher teaches the anionic surfactant may be acyl amino acid and their salts and sulfonic acid and their salts (i.e. alkyl sulfonates; [0069]). With regard to claims 1 (f) & 12, Lauscher in the Example 8 hair styling gel exemplifies “propylene glycol” in an amount of 3.8% [0103]. More broadly, Lauscher teaches propylene glycol as an especially suitable co-solvent [0081]. With regard to claim 13, Lauscher teaches inclusion of nonionic surfactants and the non-ionic surfactants include “decyl glucoside” [0068].
Regarding the weight ratio of the at least one polysaccharide other than the at least one nonionic guar polymer to the at least one nonionic guar polymer, with regard to claim 1, Lauscher teaches the amount of gel former can be 0.5 to 10% and this can be xanthan gum and also “hydroxypropyl guar” ([0011]- [0029]). The ordinary skilled artisan at the time of filing would have looked to the examples and selected 1.0 xanthan gum and 0.3 hydroxypropyl guar for inclusion in the composition (yielding a 1:0.3 ratio). 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 the claim 1 recitation that ”the gel composition has a transformative texture that is transformed into a foam when shear stress is applied”, Lauscher teaches the gel may be a “foam gel with a suitable apparatus for foaming” (i.e. the apparatus supplies the shear stress which produces the foam; [0082]). Further, Lauscher teaches a gel comprising the recited reagents in the recited amounts and ratios. Therefore, the composition necessarily has the property of a transformative texture that can be transformed into a foam when shear stress is applied because "[p]roducts of identical chemical composition can not 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).
With regard to recited ratio of the total amount of polysaccharides (b) to the total amount of the nonionic guar polymers (a); and the amount of the at least one nonionic guar polymer, at least one polysaccharide other than the at least one nonionic guar polymer, at least one cationic polymer, at least one nonionic film forming polymer, and at least one alkane polyol, Lauscher teaches these parameters with values which fall within or overlap with the claimed ranges. 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 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lauscher as applied to claims 1-10, 12 & 13 above, and further in view of in view of Aronson (WO 99/51716; IDS Filed-05/08/2023; previously cited).
*All references refer to the English language translation.
The teachings Lauscher are addressed above. In brief, Lauscher teaches the gel of their invention may comprise anionic surfactants which include sulfonic acid salts (i.e. alkyl sulfonates; [0069]).
Lauscher does not the amount of anionic surfactant.
In the same field of invention, Aronson teaches foaming gels which may be foaming shower gels (pg. 41, ll. 1-10). Aronson teaches inclusion of a foaming surfactant which may be an anionic surfactant and the amount is at least 5% and the range can be 5-25% (pg. 1, ll. 5-15; pg. 19, ll. 20-30). Aronson teaches inclusion of C14-16 α-olefin sulfonate (i.e. alkyl sulfonate) as the anionic surfactant and teaches inclusion of α-olefin in their Formulation E (pg. 8, ll. 1-10; pg. 10).
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. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
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 (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing the invention to have modified Lauscher’s gel by adjusting the amount of anionic surfactant to be 5-25% by weight of the composition as taught by Aronson because Lauscher and Aronson are both directed to foaming gels 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 foaming properties to the gel by using known anionic surfactants in amounts recognized as art suitable.
With regard to the recited amount of anionic surfactant, the combined teachings of Lauscher and Aronson teach this parameter with values that overlap or fall within the claimed ranges. 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 14 is rejected under 35 U.S.C. 103 as being unpatentable over Lauscher as applied to claims 1-10, 12 & 13 above, and further in view of in view of Heffernan (WO 2017/187125; previously cited).
The teachings of Lauscher are relied upon as above with regard to the reagents and their amounts recited for claim 14 (a)-14 (d), & 14 (f), the ratio of the total amount of polysaccharides (b) to the total amount of nonionic guar polymers (a) as recited by claim 14, and the gel composition having a transformative texture that can be transformed into a foam as recited by claim 14. With specific regard to claim 14 (f), Lauscher in the Example 8 hair styling gel exemplifies “propylene glycol” in an amount of 3.8% [0103]. More broadly, Lauscher teaches propylene glycol as an especially suitable co-solvent [0081]. With regard to the anionic surfactant, Lauscher teaches the anionic surfactant can act as an emulsifier or solvating agent for hydrophobic additive ingredients [0060].
Lauscher does not teach the amount of anionic surfactant is from about 0.01 to about 3% by weight.
In a related field of invention, Heffernan teaches a self-foaming or post-foaming gel composition (abstract). Heffernan teaches the foaming gels of their composition comprise anionic surfactants, which include alpha olefin sulfonates (i.e. alkyl sulfonates), in an amount of about 2 to about 20% by weight (pg. 7). Heffernan teaches application of gentle shearing forces cause a transformation into a dense foam or lather (pg. 17).
Here, at least rationale (G) may be employed in which it would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified Lauscher’s foaming gel by adjusting the amount of the anionic surfactant to be about 2 to about 20% by weight as suggested by Heffernan because Lauscher and Heffernan are both directed to foaming gels and it is obvious to modify similar compositions in the same way. The ordinary skilled art would have been motivated to do so, with an expectation of success, in order to provide emulsification and solvation of gel additives as suggested by the combined teachings of Lauscher and Heffernan.
With regard to the recited amount of nonionic hydroxyalkyl-modified guar polymer, at least one polysaccharide other than the at least one nonionic guar polymer, at least one nonionic film-forming polymer, at least one cationic film forming polymer, at least one anionic surfactant, and the at least one polyol chosen from alkane polyols; and the weight ratio of the at least one polysaccharide other than the nonionic guar polymer, the combined teachings of Lauscher and Heffernan teach this parameter with values that overlap or fall within the claimed ranges. 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).
Response to Arguments
In the traverse of the rejection of claims 1-10 and 12-13 under 35 USC 103 over Lauscher, Applicant argues hindsight reasoning has been used to modify the Lauscher reference (reply, pg. 12). Applicant argues an Example has been cherry picked and further examples have been cherry picked to modify the first example to arrive at the claimed ratio for the at least one polysaccharide other than the nonionic guar polymer to the at least one nonionic guar polymer(reply, pg. 11-12).
This is not persuasive. With regard to Applicant’s allegation of impermissible hindsight, In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, Lauscher teaches the gel comprises from 0.5 to 10% by weight of gel former which is preferably xanthan gum ([0030] & [0085]). Lauscher in Example 5 teaches inclusion of 1.0 % xanthan ([0098] & [0100]). Lauscher in Example 8 teaches a hair styling gel comprising “hydroxypropyl guar” in an amount of 0.3% [0103]. As such, Lauscher teaches a 1.0: 0.3 ratio. Patents are prior art for all they contain (MPEP 2123.I).
In the traverse of claims 11 and 14 under 35 USC 103 Applicant argues neither Aronson nor Heffernan cure Lauscher’s deficiencies (reply, pg. 12).
This is not persuasive. Lauscher’s teachings and how they meet the each of the limitations of claims 1-10 and 12-13 are addressed above in the 35 USC 103(a) rejections.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/489,196 (hereinafter ‘196; Filed: 10/16/2025) in view of Lauscher (US 2006/0013785; previously cited).
Although the conflicting claims are not identical they are not patentably distinct from each other because the instant claims and those of the ‘196 are both directed to gels having a transformative texture that transform into a foam when shear stress is applied. The gel compositions of the instant application and the ‘196 both comprise at least one nonionic guar polymer which may be hydroxyalkyl-modified guar in overlapping amounts. Both the instant claims and the ‘196 recite the gel composition comprises at least one polysaccharide other than the at least one nonionic guar and the nonionic guar and the at least one polysaccharide are in a ratio which overlap. The instant claims and those of the ‘196 recite the gel composition comprises at least one nonionic film forming polymer, the recited species of nonionic film forming polymer overlap (e.g. vinyl acetate homopolymers), and the amount of nonionic film forming polymer overlap. The instant claims and those of the ‘196 recite the gel composition comprises an anionic surfactant, the recited species of anionic surfactant overlap (e.g. acyl amino acids, acyl sarcosinates), and the recited amount of anionic surfactant overlap. The ‘196 recites the gel composition includes at least one polyol which may be an alkane polyol. The instant application and the ‘196 differ in that the ‘196 does not recite inclusion of at least one cationic film-forming polymer. The teachings of the Lauscher are described above with regard to foam gels. Lauscher teaches an embodiment of their invention which comprises Lauscher in the Example 6 gel teaches the cationic polymer, ammonium acryloyldimethyltaurate/vinylpyrrolidone copolymer in an amount of 1.0% [0101]. It would have been prima facie obvious to the ordinary skilled artisan at the time of filing to have modified the gel recited by the ‘196 by adding 1.0% ammonium acryloyldimethyltaurate/vinylpyrrolidone copolymer to the composition as taught by Lauscher because the ’196 and Lauscher are both directed to gels that foam 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 improve hair texture/feel through inclusion of a cationic polymer which binds hair.
The instant claims are an obvious variant of the conflicting, copending claims in view of the prior art.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant requests that the rejection be held in abeyance until allowable subject matter is indicated (reply, pg. 8).
Applicants' request is acknowledged, however, a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejection is maintained as no action regarding these rejections has been taken by applicants at this time.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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