DETAILED ACTION
Claims 1-2, 5, 7-8,11-13, and 16-17 are pending. Of these, claims 12-13 are withdrawn as directed to a nonelected invention. Therefore, claims 1-2, 5, 7-8, 11, and 16-17 are under consideration on the merits.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/28/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/28/26 was filed prior to the mailing date of a first Action on the merits after the filing of an RCE. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, it was considered by the Examiner.
Status of the Rejections
The 103 rejection is withdrawn and replaced with a new rejection incorporating the teachings of a new secondary reference, Dihora et al.
The 35 USC 112(d) rejection was previously withdrawn in the Advisory Action dated 4/21/2026.
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 1-2, 5, 7-8, 11, and 16-17 are rejected under 35 U.S.C. 103 as unpatentable over Bierganns et al. (US Pat. Pub. 2012/0076747; of record in IDS) in view of Hall et al. (U.S. Pat. Pub. 2013/0296289), Geary et al. (US Pat. Pub. 2007/0289613), and Dihora et al. (US Pat. Pub. 2016/0228338).
As to claims 1-2, 5, 7-8, 11, and 16-17, Bierganns exemplifies an aqueous shampoo composition comprising 2.55 wt% SLES (an alkyl ether sulfate anionic cleansing surfactant within the scope of Formula I of claim 1 which is slightly below the 3 to less than 12% range of claim 1 and the range of claim 16, 0.6 wt% cocoamidopropylbetaine (a “cosurfactant” within the scope of Formula II of claim 1) which is slightly below the 1-3.5 wt% range of claim 5), and 0.63% of a pre-emulsion comprising dimethicone (a pre-formed emulsified silicone) which is within the range of claim 2 (Table 8A at paragraph 134). The broader teachings of Bierganns, however, disclose that the surfactant may be present in the amount of 0.01 to 50 wt% (paragraph 56), which encompasses the ranges of claims 1, 5, and 16. The ratio of the alkyl ether sulfate and the betaine surfactant is about 4, which is within the range of claim 1. Bierganns further discloses that the shampoo compositions are mixed with a blend of a cationic guar and a polymer, such as a blend of N-Hance 3215 (a cationic hydroxypropyltrimethylammonium chloride guar compound having a charge density of 1.85 of claim 1) and an APTAC (3-acrylamidopropyl) trimethyl ammonium chloride) /Acrylamide copolymer having a molecular weight of 807,000 which is outside the 500,000 or less range as recited by claim 1 as well as the range of claim 11 (Example 51 at Table 7 and footnote 28). The broader teachings of Bierganns, however, disclose that the molecular weight of the polymer may be “from about 500,000 to 2 million” which is just slightly above the range recited by claim 1(paragraph 43).
The compositions possess pH values of between 5-6, which is within the range of claim 1 (Table 8B). Bierganns further teaches that the purpose of the cationic guar is to serve as a conditioner (paragraph 5), and that the composition may further comprise a suspending agent (paragraph 95).
As to claims 1-2, 5, 7-8, 11, and 16-17, Bierganns does not further expressly disclose that the APTAC polymer is a homopolymer as recited by claim 1 as opposed to the APTAC copolymer taught by Bierganns and which has a molecular weight within the ranges of claims 1 and 11, or that the pre-formed emulsified silicone comprises dimethiconol as recited by claim 1, nor that the suspending agent comprises polyacrylic acid as recited by claim 1, nor the charge density at pH 7 of the APTAC polymer as recited by claims 10 and 17.
Hall discloses a shampoo composition (Abstract) comprising a silicone as a conditioning agent such as a dimethicone (paragraph 84), wherein the silicone may be in the form of a suitable pre-formed silicone emulsion such as DC2-1766 (an emulsion of dimethiconol (paragraph 87). Hall further teaches that the shampoo preferably comprises a suspending agent such as polyacrylic acid (paragraph 112).
Geary discloses aqueous shampoo compositions comprising a cationic deposition polymer (paragraphs 16-17) that may be either a copolymer or homopolymer comprising as a cationic monomer an acrylamidopropyltrimethyl ammonium chloride such as an APTAC homopolymer having a charge density of at least 5 which is within the range of claim 1 and encompasses the range of claim 17 and having a molecular weight of at least 500,000 which is slightly below the “less than 500,000” range of claim 1 (see, e.g., paragraphs 8-12 and 70 and Example 9 on pages 17-18).
Dihora discloses shampoo compositions comprising a cationic deposition polymer that may be 3-acrylamidopropyl trimethyl ammonium chloride (APTAC), wherein the polymer has a molecular weight preferably between 100,000 and 5,000,000 Daltons, which overlaps the range of claim 1 and encompasses the range of claim 11 (paragraphs 5, 50, 139-140).
As to claims 1-2, 5, 7-8, 11, and 16-17, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the composition of Bierganns by selecting an emulsion comprising dimethiconol as the pre-formed silicone emulsion instead of, or in addition to, the dimethicone emulsion taught by Bierganns, because Hall teaches that both dimethicone and dimethiconol pre-formed emulsions are suitable for use as conditioners in shampoos, such that the skilled artisan reasonably would have expected that a dimethiconol could be used in the pre-formed emulsion for the Bierganns shampoo. Such a modification is merely the substitution of one known element for another according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143. It further would have been prima facie obvious to select polyacrylic acid as the suspending agent, since Bierganns does not provide any guidance as to which suspending agents are suitable, but Hall teaches that polyacrylic acid is a suitable suspending agent for an aqueous shampoo composition, such that the skilled artisan reasonably would have expected that it could be used as the suspending agent in the Bierganns aqueous shampoo composition. It further would have been prima facie obvious to select an APTAC homopolymer having a charge density and molecular weight within the range of claim 1 for incorporation into the Bierganns shampoo instead of, or in addition to, the APTAC copolymer disclosed by Bierganns, because Geary teaches that both an APTAC copolymer as well as an APTAC homopolymer within the scope of the claims are functional equivalents for use as cationic deposition polymers in an aqueous shampoo composition, such that the skilled artisan reasonably would have expected that an APTAC homopolymer of the claims could be used successfully in the Bierganns aqueous shampoo compositions with a reasonable expectation of success, such a modification being merely the combining of known elements or the simple substitution of one known element for another according to known methods to yield predictable results, which is prima facie obvious as per MPEP 2143, and because Bierganns expressly teaches that polymers having a molecular weight of “about 500,000” may be used, wherein the use of “about” indicates that molecular weights somewhat less than 500,000 may be used, and further because Dihora discloses that APTAC polymers used as a cationic deposition polymer in shampoo compositions suitably may have a molecular weight between 100,000 and 5,000,000 Daltons, which overlaps the range of claim 1 and encompasses the range of claim 11, such that the skilled artisan reasonably would have expected that such molecular weights could be used for the APTAC polymer in the Bierganns composition. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 7-8, it further would have been prima facie obvious to select an amount of the guar compound to be within the ranges recited by these claims with a reasonable expectation of success, because said amount is a result effective variable that will influence its efficacy as a conditioner in the composition and the guar compound is being used to impart the same hair care properties to the Bierganns composition as in the composition of the present claims, such that the skilled artisan would have been optimizing for the same function. Discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Applicant’s Arguments
Applicant argues that Biergmann does not teach the use of an APTAC polymer of the claims having a molecular weight of less than 400,000 Da as recited by claim 1 as amended, nor does any of the cited art provide a suggestion to use such a molecular weight.
In response, Applicant’s argument has been considered carefully but is moot in light of the new ground of rejection, which relies on Dihora’s express teaching that an APTAC cationic deposition polymer may possess a molecular weight within the claimed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached M-F 9AM-6PM.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/ Primary Examiner, Art Unit 1600
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