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 .
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.
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/26/2026 has been entered.
Status of claims
The amendment filed on 01/26/2026 is acknowledged. Claims 1-12, 16-19, and 22 have been canceled, claim 28 has been withdrawn, and new claims 29-32 have been added with claims 30 and 32 being withdrawn claims. Claims 13-15, 20, 21, 23-27, 29, and 31 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 01/26/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejection necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejection.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claims 13-15, 20, 21, 23-27, 29, and 31 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The recitation of "wherein (a) is present in an amount from 15% to 45%, by weight, of the composition, (b) is present in an amount from 55% to 80%, by weight, of the composition, (c) is present in an amount of up to 5%, by weight, of the composition, (d) is present in an amount of up to 3%, by weight, of the composition, and (e), when present, is present in an amount of up to 15%, by weight, of the composition" in claim 13 renders the claim 13 indefinite. There are two “composition”s recited in claim13: a cosmetic composition and a surfactant composition. It is unclear what the “composition” is relative to. Claims 14, 15, 20, 21, 23-27, 29, and 31 are rejected as dependent claims of a rejected claim.
To expedite the prosecution "the composition" is given its broadest reasonable interpretations by the examiner in light of the specification in the 103 rejections as relative to the surfactant composition.
Rejections maintained
The following rejections of the claims are maintained for reasons of record and the following. In addition, new claims are hereby included in the rejections and the rejection are modified.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 13-15, 20, 21, 23-27, 29, and 31 are rejected under 35 U.S.C. 103(a) as being unpatentable over Terasaki et al. (US 6,346,259 B1) in view of Saint Victor (WO 2017/099933 A1) and Saint Victor et al. (US 2013/0338227 A1).
Terasaki et al. teach a method for the treatment and make-up of hair for good softness (the claimed cosmetic method for conditioning keratin fibers in the instant claims 13 and 20) using a cosmetic composition in form of emulsion (the instant claim 13) comprising a mixture of
surfactant glycerine betaine alkyl ester
PNG
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400
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with R1 being C12-22 alkyl (at once envisage C22, according to MPEP 2131.02 III, in the claimed R in the instant claims 13,14, 25, and 26), R2 being methylene (-CH2- in the instant claim 13), R3-5 being -CH3 (the instant claim 13) and X being halogen (the instant claims 14, 25, and 26) (the claimed (a) in the instant claim 13) (abstract, column 1, line 16-20, and claim 1) and
a solvent R-OH (the solvent is not removed, the claimed (b) in the instant claim 13) with R being C14-18 alkyl (at once envisage C18, according to MPEP 2131.02 III, the instant claims 13, 14, 25, and 26) (column 1, line 48 through column 3, line 30) and
exemplified in example 2 a mixture of 20% by weight of glycerine betaine alkyl ester salt of formula 4 and 80% by weight of solvent R-OH (the claimed weight percentages of item a and b in the instant claim 13) and
exemplified in example 7 a composition comprising water (the claimed cosmetic acceptable medium in the instant claim 13).
Polyglycosides are not taught by Terasaki et al. (the instant claim 13).
The hair to be treated would include all types of hair including the hair in the instant claim 21 and being pre-washed and rinsed in the instant claim 23.
The surfactant composition in claim 13 is construed as a surfactant composition comprising C14-24 ester of glycerine betaine alkyl sulfonate salt and C14-24 R-OH fatty alcohol WITHOUT organic acid HX, glycine betaine alkyl sulfonate salt, R-O-R dialkyl ether based on the recitation of up to 5% by weight of organic acid HX (construed as 0-5%), up to 3% by weight of glycine betaine alkyl sulfonate salt (construed as 0-3%), and optionally up to 15% by weight of C14-24 R-O-R dialkyl ether (construed as 0-3%) and the new claims 29 and 31 are construed as up to 5% by weight of organic acid HX, up to 3% by weight of glycine betaine alkyl sulfonate salt, and optionally up to 15% by weight of C14-24 R-O-R dialkyl ether, i.e., WITHOUT organic acid HX, glycine betaine alkyl sulfonate salt, R-O-R dialkyl ether based on the recitation of up to 5% by weight of organic acid HX.
Terasaki et al. do not teach the X being the claimed organic anion in the instant claim 13 and alkyl sulfonate, etc., in the instant claims 15, 24, and 27).
These deficiencies are cured by
Saint Victor who teaches a liquid cleaning composition comprising
a glycine betaine ester salt of formula (I): X−Me3N+-CH2-C(O)-O-R with R being C8-22 aliphatic group and X being methane sulphonate anion or halide and water (paragraph 8, 9, 13, and 14 and claims 37, 40, and 42) and
Saint Victor et al. who teach cationic surfactant glycine betaine C14-22 alkyl (chain length) ester methane sulfonate being used in cosmetic, home cleaning, etc., with the longer chain lengths provide for greater thickening (abstract and paragraph 78).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Terasaki et al., Saint Victor, and Saint Victor et al. to replace halogen as X in the surfactant glycerine betaine alkyl ester salt taught by Terasaki et al. with methane sulfonate. Both halogen and methane sulfonate being X anions in glycerine betaine alkyl ester salt surfactants in the cleaning compositions and also being suitable in cosmetic compositions was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing halogen as X in the surfactant glycerine betaine alkyl ester salt taught by Terasaki et al. with methane sulfonate flows from both having been used in the prior art as suitable surfactants in both cleaning and cosmetic compositions. Furthermore, X being an organic or inorganic anion including a chloride, an alkyl sulfonate ion, etc., was claimed in claims 13 and 15 dated 03/13/2025 and is disclosed in the instant specification page 5, line 6-14. Thus, the criticality of the now claimed X being an organic anion in claim 13 and an alkyl sulfonate ion, etc., in claim 15 over halogen taught by Terasaki et al. is not established.
Response to Applicants’ arguments:
Applicant’s argument based on inclusion of components c-e are addressed in the modified rejection above.
Applicants argue that Saint Victor (WO 2017/099933 A1) do not teach the claimed weight percentages of components a-c.
However, this argument is not deemed persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Saint Victor (WO 2017/099933 A1), together with Saint Victor et al. (US 2013/0338227 A1), provides teachings of both methane sulphonate anion or halide being suitable X in a glycine betaine ester salt of formula (I): X−Me3N+-CH2-C(O)-O-R with R being C8-22 aliphatic group while Saint Victor et al. (US 2013/0338227 A1) provide teachings of cationic surfactant glycine betaine C14-22 alkyl (chain length) ester methane sulfonate being used in both cosmetic (of Terasaki et al.) and home cleaning (of Saint Victor (WO 2017/099933 A1)). Please refer to MPEP 2145.III:
the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicants argue that there are superior properties in example 3 in the instant specification.
However, this argument is not deemed persuasive.
Example 3 in the instant specification compares fatty alcohol-in-water emulsions containing, as conditioning agent, a mixture of C18-22 glycine betaine ester salts according to the invention (a surfactant composition comprising at least one glycine betaine derivative of formula (1): Xn−[(CH3)3N+-CH2-COO-R]n according to the specification and the claims dated 05/19/2022) vs behentrimonium chloride:
first, components c is an acid for protonating trimethylglycine before the esterification of trimethylglycine with fatty alcohol (component b) for forming component a while non-protonated trimethylglycine is component d according to the instant specification (page 3, line 10 through page 6, line 2). Thus, components c and d are unreacted reagents of the acid-protonated trimethylglycine esterification reaction. Dialkyl ether (the claimed component e) is an acid-catalyzed dehydration reaction product of fatty alcohol, thus, is a by-product of the acid-protonated esterification of trimethylglycine reaction. There is no indication of the components c-e being must have components of the surfactant composition.
Second, a mixture of C18-22 glycine betaine ester salts according to the invention is a surfactant composition comprising at least one glycine betaine derivative of formula (1): Xn−[(CH3)3N+-CH2-COO-R]n with X including inorganic anion (the claim 13 dated 05/19/2022 and 03/13/2025) including chloride (the claim 15 dated 05/19/2022 and 03/13/2025). Thus, the mixture of C18-22 glycine betaine ester salts according to the invention in example 3 is a surfactant composition comprising at least one glycine betaine derivative of formula (1), i.e., ONE glycine betaine derivative of formula (1) (components c-e not being must have components) with X being chloride which is the same as the glycine betaine ester salts taught by Terasaki et al.
Third, results in figure 1 (number of comb strokes) and figure 2 (softness): the experiment is not a true side-by-side closest to prior art. In the prior art the surfactant is Xn−[(CH3)3N+-CH2-COO-R]n with X being halide; in the experiment the comparison surfactant is behentrimonium chloride (no superior property resulted from at least one glycine betaine derivative of formula (1) over behentrimonium chloride). Thus, the results from the experiment are not convincing. Please refer to MPEP 716.02(e).
The interpretation of the amended claim 13 and new claims 29 and 31 discussed above applies in the same manner in the ODP rejections of record and the ODP rejections are modified based on the amendments.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 13-15, 20, 21, 23-27, 29, and 31 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,084,398 B2.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
The instant application claims 13-15, 20, 21, 23-27, 29, and 31 recite a cosmetic method for conditioning keratin fibers, comprising the topical application to the keratin fibers of a cosmetic composition in the form of an emulsion comprising, in a cosmetically acceptable medium, a surfactant composition comprising at least one glycine betaine derivative of formula (1): Xn−[(CH3)3N+-CH2-COZ-R]n where Z denotes an O atom or an -NH group, R is a saturated or unsaturated, linear or branched C14-24 alkyl group, X is an organic or inorganic anion, and n = 1 or 2, provided that said surfactant composition does not contain alkyl polyglycosides.
The U.S. 12,084,398 B2 patent claims 1-15 recite a cosmetic product for treating body (including hair) comprising a surfactant composition containing a glycine betaine ester salt, a fatty alcohol, an organic or inorganic acid, and a glycine betaine salt.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same method.
Claims 13-21 and 23-27 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 11-26 of copending Application No. 18/017,094, and claims 11-24 of copending Application No. 18/007,079. Although the patent and instant claims are not identical, they are not patentably distinct from each other because: the instant claims 13-21 and 23-27 are discussed above and applied in the same manner.
The 18/017,094 application claims 11-26 recite a method for treating the body (including hair) comprising applying onto the body a cosmetic product comprising a surfactant composition comprising glycine betaine amide salts of formula (1): Xn−[(CH3)3N+-CH2-CONH-R]n in which R is a saturated or unsaturated linear C8-18 alkyl group; alkylammonium salt of formula (2): Xn−[NH3+R]n in which R is a saturated or unsaturated linear C8-18 alkyl group; glycine betaine ester salt of formula (3): Xn−[(CH3)3N+-CH2-COOR′]n in which R′ is a linear or branched C4-8 alkyl radical; and glycine betaine of formula (4): (CH3)3N+-CH2-COO−; wherein X is an organic or inorganic anion and n = 1 or 2.
The 18/007,079 application claims 11-24 recite a cosmetic method for protecting the skin (including beard) against the effects of UVA rays comprising the topical application, to the skin, of a photoprotective composition comprising, in a physiologically acceptable medium, at least one photoprotective compound and a surfactant comprising at least one glycine betaine derivative of formula (1): [(CH3)3N+-CH2-COZ-R]nXn-, where Z denotes an oxygen atom or an -NH group, R is a saturated or unsaturated, linear or branched, C8-24 alkyl group, X is an organic or inorganic anion and n = 1 or 2, it being understood that said photoprotective composition does not contain optionally cationized alkylpolyglycoside.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same method.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Applicants’ arguments:
No argument is presented by Applicants with regard to the two nonstatutory obviousness-type double patenting rejections above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614