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
Status of claims
The amendment filed on 06/18/2026 is acknowledged. Claims 1-12, 16-19, 22, 25, and 26 have been canceled and claims 28, 30, and 32 have been withdrawn. Claims 13-15, 20, 21, 23, 24, 27, 29, and 31 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments, arguments, and affidavit filed on 06/18/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 103(a) rejection of claims 13-15, 20, 21, 23-27, 29, and 31 over Terasaki et al. (US 6,346,259 B1), Saint Victor (WO 2017/099933 A1), and Saint Victor et al. (US 2013/0338227 A1) from the previous Office Action. 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.
Rejections maintained
The following rejections of the claims are maintained for reasons of record and the following.
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, 24, 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 13-15, 20, 21, 23, 24, 27, 29, and 31 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 13-15, 20, 21, 23, 24, 27, 29, and 31 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 Arguments:
Applicant states that the obviousness-type double patenting rejections be held in abeyance until the claims have been allowed. Until that time the claims must remain rejected.
New ground of rejections necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejection.
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, 24, 27, 29, and 31 are rejected under 35 U.S.C. 103(a) as being unpatentable over Perusse et al. (US 2017/0087077 A1).
Perusse et al. teach surfactant composition to be used in cosmetics such as care for hair → implies the claimed method of conditioning keratin fibers in the instant claims 13 and 20 and would include any type of hair in the instant claims 21 and 23 (abstract, paragraph 53, and claim 11) as a composition C1 comprising reaction product without purification of
reacting 2-trimethylammonioacetate (glycine betaine) of formula (X)
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with an alcohol of formula (II) R2-OH with R2 being C8-22 alkyl in the presence of an excess of acid of formula (IX) HX methane sulfonate ion with an acid to glycine betaine molar ratio of <4 (paragraph 17, 25, 28, 44-51, 96, and 97, and claims 6 and 10);
wherein the composition C1 comprises 20-30 mol % of a compound of formula (IV)
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(the claimed a); 15-25 mol % of a compound of formula (V)
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(the claimed d); 15-25 mol % of an alcohol of formula (II) R2-OH (the claimed b); 25-35 mol % of an acid of formula (IX) (the claimed c) (the instant claims 13 and 31) (paragraph 37-43 and claim 9).
Since the reaction product is not purified and dialkyl ether (the claimed component e) is an acid-catalyzed dehydration reaction product of fatty alcohol, i.e., is a by-product of the acid-protonated esterification of glycine betaine reaction, reaction product composition C1 would contain certain amount of dialkyl ether R2-O-R2 (the instant claims 13 and 29)
Given the limited selections of R2 among C8-22 alkyl, one of ordinary skill in the art is able to at once envisage R2 being C22 alkyl (the instant claims 13 and 14) and X being methane sulfonate ion (the instant claims 13, 15, 24, and 27) according to MPEP 2131.02.III.A.
Given the molecular weight of
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with R being C22 alkyl and X being methane sulfonate ion being 521.84 g/mol, the molecular weight of R-OH with R being C22 alkyl being 326.6 g/mol, the molecular weight of HX with X being methane sulfonate ion being 96.11 g/mol; and the molecular weight of
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with X being methane sulfonate ion being 212.24 g/mol; the weight percentages of the claimed a, b, c, and d are calculated to be 44%, 34.4%, 8.1%, and 13.4%, respectively, based on 20 mol% a, 25 mol% b, 20 mol% c, and 15 mol% d and a%+b%+c%+d%=100%.
Perusse et al. do not teach the same weight percentages of components b, c, and d in the instant claim 13 (34.4% vs the claimed 55-80%, 8.1% vs the claimed ≤5%, 13.4% vs the claimed ≤5%) and component e in the instant claim 29 (>0% vs ≤15%).
These deficiencies are cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties as emulsifier for the car of hair.
MPEP 2144.05.I:
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%
the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., “not substantially less than 13%,” “not substantially below 17%,” and “between about 13[%] and 20%”)
MPEP 2144.05.II.A:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
MPEP 2144.05.III.A:
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range.
In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.
a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%));
Response to Applicants’ arguments:
Applicant’s arguments, filed on 06/18/2026, have been fully considered but they are moot in view of new ground of rejection. However, the examiner would like to address the following arguments to the extend they pertain to the new ground of rejections.
Applicants asked the examiner to indicate the consideration of figure and 2 in the instant specification.
Figure 1 and 2 (example 3) comparing water, behentrimonium chloride, C18-22 glycine betaine ester salts (GBE), and C16-22 glycine betaine amide salts (GBA) while Perusse et al. teach C8-22 glycine betaine amide salts. The difference between the prior art and the instant claims is the length of alkyl chain (C8-22 vs C18-22 and concentrations of components b, c, d, and e), not ester vs amide. Thus, the experiment is not a true side-by-side closest to prior art. and the results from the experiment are not convincing.
716.02(b) III:
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
Applicant’s arguments based on the affidavit are addressed in the Response to applicants’ 37 CFR 1.132 declaration below.
Response to applicants’ 37 CFR 1.132 declaration:
The declaration under 37 CFR 1.132 filed 06/18/2026 is insufficient to overcome the rejection of pending claims as set forth in this Office action because:
Item 5:
First, the experiment is not a true side-by-side closest to prior art. The reaction mixture in table 1 is compared with the reaction mixture in table 2 in the experiments while the weight percentages of the components in the reaction mixture in the prior art are different from the weight percentages of the components in the reaction mixture in table 1. Thus, the results from the experiment are not convincing.
Second, assuming – purely arguendo – there were unexpected results result from the difference the weight percentages of the components in the reaction mixture, the scope of the mixture in table 2 is much narrower than the scope of the claims. There is no adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the single tested composition. In other words, Applicant has not shown that based on this single example, it is reasonable to expect that other embodiments falling within the scope of the claims will behave similarly. Please refer to MPEP 716.02(b) III.:
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
Items 6-9:
The weight percentages of the components in the mixture from the 1st table are changed to 23.1% GBEC16/18, 0.9%, 69.3%, 4.9%, and 1.65% after the addition of C16/18 alcohol (the mixture incorporated in the 2nd table).
The experiment comparing a composition in 2nd table comprising the mixture of the 1st table + C16/18 alcohol (GBEC16/18 + C16/18 alcohol + 3 other components) vs a composition in 3rd table comprising the mixture of GBEC16 + C18 alcohol → fatty alcohol having a longer alkyl chain resulting in better friction reduction 39.42% vs 32.83%);
however, first, 39.42% is not significantly better than 32.83%,
second, there are other variables in the two comparison compositions besides the GBEC16/18 + C16/18 alcohol vs GBEC16 + C18 alcohol: weight percentage of the mixture from 1st table incorporated in the 2nd table is 4.31% with 5 components while the mixture of GBEC16 + C18 alcohol in 3rd table is 4.04% with 2 components. Thus, a conclusion that the difference alkyl chain length in GBEC and fatty alcohol being the factor resulting in friction reduction can’t be reached while the instant specification discloses and the previous claims recited alkyl chain length of C14-24 being suitable.
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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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