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 .
DETAILED ACTION
Claim Status
Applicant’s claim amendments and arguments in the response filed 16 October 2025 are acknowledged.
Claims 43-62 are pending.
Claims 43, 45, 47, 50, 53, 55, 57 & 58 are amended.
Claims 1-42 are cancelled.
Claims 61 & 62 are withdrawn.
Claims 43-60 are under consideration.
Examination on the merits is to the extent of the following species:
At least one nonionic guar polymer- Hydroxypropyl Guar,
At least one polysaccharide other than the at least one nonionic guar- xanthan gum,
At least one nonionic film-forming polymer- VP/VA copolymer,
Thickener-acrylates/C10-C30 alkyl acrylate crosspolymer,
At least one nonionic surfactant- decyl glucoside, -and-
At least one sugar alcohol – sorbitol.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in France on 18 November 2020.
It is noted Applicant has filed an interim certified copy of the FR2011812 on 30 July 2025.
Withdrawn Objections/Rejections
The rejection of claim 58 under 35 U.S.C. 112(b) is withdrawn due to amendments to
recite “wherein the at least one sugar alcohol is present…” and “the at least one alkane polyol is present in an amount ranging from about 0.1% to about 15% by weight”.
The rejection of claims 43-54 & 56-58 under 35 U.S.C. 103 over Lauscher and claims 55, 59 & 60 under 35 U.S.C. 103 as over Lauscher and further in view of in view of Aronson is withdrawn due to the claim 43 amendment to recite an amount for the anionic surfactant.
New Rejections
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.
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 43-60 are rejected under 35 U.S.C. 103 as being unpatentable over Lauscher (US 2006/0013785; previously cited) in view of Aronson (WO 99/51716; previously cited).
Lauscher teaches hair styling gels (title). With regard to claims 43 (a), 44, 45 & 59 (a), 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 43 (a), 44, 45 & 59 (a), Lauscher in Example 8 teaches a hair styling gel comprising “hydroxypropyl guar” in an amount of 0.3% [0103]. With regard to claims 43(b), 46, 47 & 59 (b), 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 43(b), 46, 47 & 59 (b), 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 43 ( c), 49, 50 & 59 ( c), 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 43 ( c), 49, 50 & 59 ( c) , Lauscher teaches VP/VA (vinyl pyrrolidone and vinyl acetate copolymer) to be a preferred non-ionic hair fixing polymer ([0056]). With regard claims 43 ( c), 49, 50 & 59 ( c), 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 claims 43(d), 53 & 59 (d), 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 claims 43 (d), 53 & 59 (d), Lauscher in Examples 1-3, 8 and 10 exemplifies the non-ionic surfactant, “Peg-40 hydrogenated castor oil” in an amount of 0.2% , 0.2%, 0.2%, 0.18% , 0.2 % respectively, ([0064], [0096]-[0098], [0103] & [0105]). With regard to claims 43 (d), 53, & 59 (d) Lauscher in Example 7 exemplifies the non-ionic surfactant, PEG-40, in an amount of 0.2 % ([0062] & [[0102]). With regard to claims 51 & 52, Lauscher teaches the non-ionic surfactants include “decyl glucoside” [0068]. With regard to claims 43( e) & 59 ( e), Lauscher teaches the composition may comprise at least one surfactant which may be an anionic surfactant [0060]. With regard to claim 54, Lauscher teaches the anionic surfactant may be acyl amino acid and their salts [0069]. With regard to claims 43 (f), 57 & 59 (f), Lauscher in Example 9 discloses silicone compound, which is PEG-12 dimethicone in an amount of 1.5% [0104]. With regard to claim 56, More broadly, Lauscher in “various embodiments” teaches inclusion of at least one silicone compound which may be “cyclomethicone, dimethicone, dimethiconol, dimethicone polyol…”[0057]. With regard to claims 43(g), 58 & 59 (g), Lauscher teaches an embodiment comprising at least one hair conditioning additive which may be sorbitol in an amount “from 0.01 to 20, preferably from 0.05 to 10, especially preferably from 0.1 to 5, percent by weight” [0059]. With regard to claims 43(g), 58,& 59 (g), 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].
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 claims 43, 48 & 59, 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.
Lauscher does not teach 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). With regard to claims 43 ( e), 55 & 59 ( e), 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 at page 20, ll. 20-23 various anionic surfactants and including the claim 54 sarcosinates, sulphoacetates and acyl isethionates.
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 shower 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 shower gel by using known anionic surfactants in amounts recognized as art suitable.
With regard to the claims 43 & 60 recitation that ”the gel composition has a transformative texture that can be 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 and Aronson teach 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); 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 nonionic film forming polymer, at least one nonionic surfactant, at least one anionic surfactant, at least one silicone compound, at least one sugar alcohol and at least one alkane polyol, the combined teachings of Lauscher and Aronson teach 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).
Response to Arguments
Applicant argues the statement in a prior office action that “a gel composition will necessarily have the property of a transformative texture that can be transformed into a foam when shear stress is applied” (reply, pg. 10). Applicant points to Example 2 and Comparative Examples C2 and C3 to show this is not necessarily true (reply, pg. 10).
This is not persuasive. 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]).
With regard to Applicant’s arguments pertaining to Example 2 and comparative examples C2 and C3, the Examiner notes Applicant has not compared their invention to the closest prior art which is Lauscher. This is important because 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]).
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 43-60 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/332,627 (hereinafter 627; Filed: 10/17/2025) 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 ‘627 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 both comprise at least one nonionic guar polymer which may be hydroxyalkyl-modified guar in overlapping amounts. Both the instant claims and the ‘627 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 ‘627 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 ‘627 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 ‘627 recites the gel composition includes at least one polyol which may be an alkane polyol. The instant application and the ‘627 differ in that the ‘627 does not recite inclusion of at least one nonionic surfactant, at least one silicone and at least one sugar alcohol. The teachings of the Lauscher are described above with regard to foam gels. 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]. Lauscher in Examples 1-3, 8 and 10 exemplifies the non-ionic surfactant, “Peg-40 hydrogenated castor oil” in an amount of 0.2% , 0.2%, 0.2%, 0.18% , 0.2 % respectively, ([0064], [0096]-[0098], [0103] & [0105]). Lauscher also teaches inclusion of the nonionic surfactant, PEG-40 in their gels. Lauscher teaches inclusion of the silicone compounds, dimethicone copolyol, and Lauscher in Example 9 discloses silicone compound, which is PEG-12 dimethicone in an amount of 1.5% [0104]. More broadly, Lauscher in “various embodiments” teaches inclusion of at least one silicone compound which may be “cyclomethicone, dimethicone, dimethiconol, dimethicone polyol…”[0057]. Lauscher teaches inclusion of the sugar alcohol, sorbitol, in an amount of “from 0.01 to 20, preferably from 0.05 to 10, especially preferably from 0.1 to 5, percent by weight” to function as a conditioning agent [0059]. 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 ‘627 by adding 0.2% of the PEG-40, 1.5% PEG-12 dimethicone, and 0.01 to 20% sorbitol to the gel composition as taught by Lauscher because the ’627 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 stabilize the gel and improve its texture and conditioning properties through inclusion of PEG-40, PEG-12 dimethicone and sorbitol.
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