DETAILED ACTION
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 .
Election/Restrictions
Applicant's election with traverse of isododecane of Claims 1 and 15 in the reply filed on 5 May 2026 is acknowledged. The traversal is on the ground(s) that properties of each of the independent and distinct compounds identified as “Component (B)” are encompassed within the generic descriptive terms of these properties, and that the classification symbols for two of the independent and distinct compounds recited are the same. This is not found persuasive because none of these arguments addresses the fact that each of the isododecane, hydrogenated polyisobutylene, phenyltrimethicone, and methyltrimethicone are in fact independent and distinct chemicals, and that different searches of the art would be required to identify art reading thereupon, per MPEP 808.02 placing on the examiner an undue search burden.
The requirement is still deemed proper and is therefore made FINAL.
Status of the Claims
Claims 1, 3-10, and 12-18 are pending.
Claims 13, 14, and 16-18 are withdrawn from consideration as directed to non-elected inventions.
Claims 1, 3-10, 12, and 15 are presented for examination and rejected as set forth below.
Claim Interpretation
Applicants claims are directed to compositions combining a “component (A),” and a “component (B)” as any of among a Markush-type listing of alternatives in defined concentrations. Dependent Claims 3 and 5-10 place further limitations on the identity of the “component (A),” which applicants species election indicates are addressed by compositions containing the ingredient “POLYSILICONE-29” recited explicitly in Claim 10. Claim 4 requires the inclusion of a C1-4 aliphatic alcohol. Claim 12 specifies that the composition contain 13% or less water. Claim 15 indicates that the component (B) is isododecane.
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, 3-10, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Herrlein (EP3281623) in view of Hyunh (U.S. PGPub. 2018/0311138).
Herrlein describes cosmetic compositions for the coloring of keratinous fibers containing a film-forming aminosilicone polymer. (Abs.). Herrlein indicates that the polysilicone-29 of the instant claims is just such a film-forming aminosilicone polymer, incorporated into these cosmetic compositions in concentrations of between 1-20%, a range overlapping and therefore rendering obvious that of the instant claims. [0067-68], See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Herrlein indicates that these compositions are to also contain a cosmetically acceptable carrier. [0038]. By indicating that he carrier may be oily, with nothing of Herrlein requiring the inclusion of water, a completely organic carrier falls within the Herrlein disclosure, addressing the limitations of Claim 12 by implying an anhydrous carrier may be used. Even when water is employed, water concentrations of as low as 0.1%, 1%, and 10% fall within and therefore render obvious the limitations of Claim 12. [0040]. Each of ethanol, isopropanol, and propanol are described by Herrlein as suitably included in these compositions. [0039]. Herrlein indicates that these hair coloring compositions may contain an oily compound such as a volatile hydrocarbon as a carrier. [0043].
But for the specification of any of the newly narrowed component “B” of the present claims, the specific combination of features claimed is disclosed within the broad generic ranges taught by the reference but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). Where, as here, the reference does not provide any motivation to select this specific combination of a cosmetic composition for application to the hair combining conditioners, polysilicone-29 in the concentrations claimed, combined with water or ethanol in the amounts recited by the present claims, anticipation cannot be found.
That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been prima facie obvious to have selected various combinations of a cosmetic composition for application to the hair combining conditioners and polysilicone-29 in the concentrations claimed, combined with water or ethanol in the amounts recited by the present claims from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Despite this breadth, Herrlein does not specify that any of the newly narrowed “component B” compound, and more specifically the isododecane elected by applicants, may be included in the hair treatment compositions.
This is cured by the teachings of Hyunh, which teaches in the context of essentially anhydrous hair treatment compositions, that the instantly claimed and elected isododecane was, at the time the instant application was filed, known to be usefully employed in hair treatment compositions as a volatile hydrocarbon oil. [0136]. Hyunh indicates that these oils are typically employed in such compositions in concentrations of between about 50-99.5% by weight of the hair treatment composition, a range overlapping and therefore rendering obvious the concentrations of the instant claims. [0033-34], see Peterson, supra.
It therefore would have been prima facie obvious to have included isododecane in the compositions of Herrlein, as Herrlein explicitly includes volatile oils as carrier components, and Hyunh establishes that the isododecane of the instant claims was in fact just such a volatile oil component for use in haircare compositions.
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.
At least Claims 1 and 3-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 10, and 15 of copending Application No. 18/540,213 (reference application), in view of Hyunh as discussed in greater detail above. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘213 application incorporate hair compositions combining polysilicone-29 with water, benzyl alcohol, and phenoxyethanol in concentrations overlapping those of the present claims, and Hyunh establishes that the isododecane of the Claims is commonly employed in hair care compositions as a volatile oil agent, making its inclusion prima facie obvious..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 4 December 2025 have been fully considered but they are not persuasive.
As a threshold matter, applicants amendments to the Claims have required the Examiner cease their reliance on the teachings of Holmes in place of the teachings of Hyunh which discloses the common cosmetic use of isododecane as a volatile oil in hair treatment compositions. As such, applicants arguments concerning the combined teachings of Herrlein and Holmes are moot, as Herrlein and Holmes no longer serve as the basis of the present rejections. Insofar as applicants arguments retain any relevance to the present rejections, for example applicants attempt to point to various specific uses to which the compositions of each of the Herrlein and Holmes compositions could be put as a basis for somehow precluding the Examiner’s reliance thereon, applicants are reminded that the scope of analogous art is to be considered broadly. Wyers v. Master Lock Co., No. 2009-1412, 2010 WL 2901839 (Fed. Cir. 2010). Here, as Herrlein and now Hyunh are each directed to haircare compositions, the particular uses to which each describe their compositions as suitable for achieving are non-limiting. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). 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), In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Herrlein indicates that their haircare compositions may contain volatile oils as a carrier, an Hyunh indicates that isododecane is just such a cosmetically acceptable volatile oil.
For at least these reasons, applicants arguments are unpersuasive.
Conclusion
No Claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M BASQUILL whose telephone number is (571)270-5862. The examiner can normally be reached Monday through Thursday, 5:30 AM to 4 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571) 272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEAN M BASQUILL/Primary Examiner, Art Unit 1614
Prosecution Insights