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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/10/2025 has been entered.
Claim Status
Applicant’s amendment of 10/10/2025 is acknowledged. 1, 12, and 13 are amended, and claims 2 and 8-9 are cancelled. Claims 1, 3-7, and 10-15 are currently pending.
Priority
The instant application is a 371 of PCT/JP2020/046802 filed on 12/15/2020 and claims foreign priority to JP-2019232110 filed on 12/23/2019 as reflected in the filing receipt dated on 12/14/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 12/05/2024. The election is maintained and claims 11-13 remain withdrawn. Accordingly, claims 1, 3-7, 10, and 14-15 are examined on the merits herein.
Withdrawn Objections and Rejections
In view of Applicant’s amendments to the claims, the previous 103 and non-statutory double patenting rejections are withdrawn in favor of the new grounds of rejection presented herein.
Claim Objections
Claims 1 and 3-4 are objected to because of the following informalities:
Claims 1 and 3-4 each recite ranges wherein the upper and lower limits of the range overlap, which creates confusion as to the metes and bounds of the range at first glance. For example, claim 1 recites “content of the component (A) is 0.05% by mass or more and 5.0% by mass or less”, wherein the amount “or more” exceeds the upper limit of 5.0% defined by the claim, and the amount “or less” exceeds the lower limit of 0.05% defined by the claim. Therefore, the Examiner recommends amending all recited ranges to the following format, for example, “content of the component (A) is from 0.05% by mass to 5.0% by mass”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-7, 10, and 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “wherein a content of the component (A)”, “a content of the component (B)”, “a mass ratio of the component (B) to the component (A)”, “a content of the micelle formation inhibitor”, and “a total mass of the composition”. The use of the article “a” when referring to the content of each component, the mass ratio of components, and the total mass of the composition makes it unclear whether (1) more than concentration of each component, more than one mass ratio, and/or more than one total mass is present within the composition or (2) only one concentration of each component, mass ratio, and/or total mass is present. If the intended interpretation is the latter, which the Examiner is using for the purposes of compact prosecution in the prior art rejections below, the Examiner recommends amending the claim to recite limitation “wherein the content of the component (A)”, “the content of the component (B)”, “the mass ratio of the component (B) to the component (A)”, “the content of the micelle formation inhibitor”, and “the total mass of the composition”.
Claims 3-7, 10, and 14-15 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claims 1 and 3 recite the limitation “mass ratio…(B)/(A)…” followed by the recitation of a range comprising singular values rather than a range comprising defined ratios of (B)/(A). The claim is indefinite because it does not define exactly what concentrations of component (B) relative to component (A) are permitted. For example, from 0.5/1 to 150/1.
Claims 3-7, 10, and 14-15 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim Interpretation
The Examiner is interpreting the limitation “having a molecular weight of 100,000 to 400,000 g/mol” as further limiting only the copolymer of ethylene oxide and propylene oxide and not the polysilicone-9, which is consistent with the level of support provided by Applicant’s instant specification (Table 2).
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, 5-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Grit et al. (US20130017157A1; published: 01/17/2013; effectively filed: 12/03/2010; PTO-892 of instant action) and further in view of Momentive (Silsoft* CLX-E Conditioning Agent; published: April 2017; PTO-892 of instant action) as evidenced by Arora et al. (US20200375869A1; published: 12/03/2020; effectively filed: 05/31/2019; PTO-892 of 07/25/2025).
Grit, throughout the reference, teaches hair styling compositions for keratin fibers comprising at least one film forming polymer and at least one dipeptide (Abstract and Claims). In at least one exemplary embodiment, an aerosol spray comprises, by weight: 0.5% polysilicone-9; 0.5% PEG-40 hydrogenated castor oil; q.s. aminomethyl propanol; and ethanol to 100% (Paragraph 0093; Example 14).
Regarding the component (B) of instant claims 1, 3, and 10: Polysilicone-9 reads on the instantly claimed component (B) as evidenced by instant claim 10, and the concentration of polysilicone-9 lies within and thus renders obvious the range recited in instant claim 1.
Regarding the at least one micelle formation inhibitor component of instant claim 1: ethanol reads on the instantly claimed component (C2). While Grit is silent as to the exact concentration of ethanol, due to an unknown amount of aminomethyl propanol used, Grit teaches that the concentration of organic solvent used is most preferably in the range of 10 to 50% by weight (Paragraph 0054). Therefore, one of ordinary skill in the art could at once envisage an embodiment wherein the concentration of ethanol used is 50% by weight, which lies within and thus renders obvious the claimed range.
However, Grit does not expressly teach that the composition comprises a component (A) self-crosslinking compound as recited in instant claims 1, 3, and 5-7, or the mass ratio of the component (B) to the component (A) as recited in instant claims 1 and 3.
Momentive teaches Silsoft CLX-E as a conditioning agent comprising 15% polysilicone-29 (and) dipropylene glycol that forms a soft, flexible film on keratinaceous substances (Pages 1-2). Polysilicone-29 reads on the instantly claimed component (A), specifically component (A1), as evidenced by instant claim 7. The agent helps to reduce combing force, provides excellent anti-frizz capabilities, and restores manageability to hair, and is therefore particularly useful in hair care products, such as products to smooth hair and shine sprays (Pages 1-2).
Regarding the component (A) of instant claims 1, 3, and 5-7: Grit emphasizes that a styling composition must have a certain level of hair setting effect but importantly must allow easy hair styling, diminish flyaways, and not negatively affect hair shine, noting that overwhelmingly, synthetic fixing polymers are used to satisfy the expectations of consumers (Paragraphs 0002-0003). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Grit by further including the Silsoft CLX-E of Momentive, which comprises the film forming polymer polysilicone-29, to impart benefits such as anti-frizz, increased shine, and easy styling.
Regarding concentration of the component (A) recited in instant claim 1: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration of polysilicone-29 using 0.1% by weight of the composition, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization because Grit teaches that this amount of film forming polymer is useful for achieving the desired hair styling effects (Paragraph 0014).
Regarding the mass ratio (B)/(A) recited in instant claims 1 and 3: The ratio of [polysilicone-9] / [polysilicone-29] in the composition taught by the combination of Grit and Momentive is 5/1 (calculated by Examiner), which lies within and thus renders obvious the instantly claimed ranges.
It is noted that the recitation “fiber treatment agent” in claim 1 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of Grit and Momentive is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02.
Regarding instant claim 6: While the patentability of a product-by-process claim is based on the product itself and does not depend on its method of production (Note: MPEP 2113(I)), the polysilicone-29 of Momentive’s Silsoft CLX-E is a product of the reaction between a glycidoxypropyl-terminated dimethyl siloxane polymer, PEG-13 diglycidyl ether, diethylaminopropylamine, and aminopropyltriisopropoxysilane, as evidenced by Arora (Paragraph 0007), which respectively read on compounds (a), (b), (d), and (c) as recited in the instant claim.
One of ordinary skill in the art would reasonably expect success in modifying the prior art composition as proposed because Grit teaches that its compositions must comprise at least one film forming polymer, preferably synthetic, and the polysilicone-29 of Momentive, which is characterized by its ability to form a flexible film of keratinaceous substances, imparts qualities to the hair which Grit teaches as satisfying the expectations of consumers.
Claims 1, 3-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Grit et al. (US20130017157A1; published: 01/17/2013; effectively filed: 12/03/2010; PTO-892 of instant action) in view of Momentive (Silsoft* CLX-E Conditioning Agent; published: April 2017; PTO-892 of instant action), as applied to claims 1, 3, 5-7, and 10 above, and further in view of Essential Wholesale and Labs (<https://blog.essentialwholesale.com/skincare-haircare-ph-need-know/>; published: 03/20/2017; PTO-892 of 07/25/2025) as evidenced by Arora et al. (US20200375869A1; published: 12/03/2020; effectively filed: 05/31/2019; PTO-892 of 07/25/2025).
The combination of Grit and Momentive as evidenced by Arora teaches the invention(s) of claims 1, 3, 5-7, and 10 as discussed in detail above and further incorporated herein.
However, the combination of Grit and Momentive is silent as to the pH of the composition and, thus, does not expressly teach the pH recited in instant claim 4.
Essential Wholesale and Labs teaches that the effect you want your product to have on the hair will determine its ideal pH (Page 2, Hair pH). If a smoothing effect is desired, a lower pH is more beneficial than a higher pH which can cause frizz and tangles, and generally, a pH of 5 is a good balance for both hair and scalp (Page 2, Hair pH).
Regarding instant claim 4: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by the combination of Grit and Momentive by adjusting the pH using a pH of 5, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization because Essential Wholesale and Labs teaches that this pH is effective for producing hair products that reduce frizz and tangles, which aligns with the goals of Grit, whose compositions should reduce flyaways and allow easy styling.
One of ordinary skill in the art would reasonably expect success in modifying the prior art composition as proposed because Essential Wholesale and Labs teaches that it is routine in the art to optimize the pH of hair care products to achieve the styling effects desired by Grit.
Claims 1, 3, 5-7, 10, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Grit et al. (US20130017157A1; published: 01/17/2013; effectively filed: 12/03/2010; PTO-892 of instant action) in view of Momentive (Silsoft* CLX-E Conditioning Agent; published: April 2017; PTO-892 of instant action), as applied to claims 1, 3, 5-7, and 10 above, and further in view of Meisei Chemical Works Ltd. (<https://www.meisei-chem.co.jp/english/products/alkox/alkox_epn.html>; archived: 01/28/2019; PTO-892 of 07/25/2025) as evidenced by Arora et al. (US20200375869A1; published: 12/03/2020; effectively filed: 05/31/2019; PTO-892 of 07/25/2025).
The combination of Grit and Momentive as evidenced by Arora teaches the invention(s) of claims 1, 3, 5-7, and 10 as discussed in detail above and further incorporated herein.
However, the combination of Grit and Momentive does not expressly teach that the composition comprises a copolymer of ethylene oxide and propylene oxide as recited in an alternative embodiment of instant claims 1 and 3 and in instant claims 14 and 15.
Meisei Chemical Works Ltd. teaches a random copolymer of ethylene oxide and propylene oxide, EP1010N, which has improved compatibility and solubility in organic solvents, has flexible and adhesives properties, and can be used as a film former (Page 1). EP1010N has a molecular weight of 100,000 (Page 2) and a mass ratio of ethylene oxide to propylene oxide of 90:10 as evidenced by Applicant’s instant specification (Instant Specification, Page 38, Table 2, Footnote *5). While Meisei is silent on the unit of measure for the molecular weight disclosed, one of ordinary skill in the art would understand that molecular weight of polymers is most often expressed in g/mol.
Regarding the component (B) recited in instant claims 1, 3, and 14-15: Grit teaches that PEG-40 hydrogenated castor oil and poly-condensates of ethyleneoxide and propyleneoxide are each useful nonionic surfactants in its compositions (Paragraphs 0037-0041). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the composition taught by the combination of Grit and Momentive by substituting the PEG-40 hydrogenated castor oil with the EP1010N copolymer of ethylene oxide and propylene oxide taught by Meisei Chemical Works Ltd. to yield the predictable result of hair styling composition. One of ordinary skill in the art would have been motivated to exchange one known nonionic surfactant for another because Meisei Chemical Works Ltd. teaches that EP1010N has improved compatibility and solubility in organic solvents as well as desirable film forming properties.
Regarding the concentration of the component (B) recited in instant claim 1: The combined concentration of polysilicone-9 and EP1010N in the composition taught by the combination of Grit, Momentive, and Meisei Chemical Works Ltd. is 1% by weight of the composition, which lies within and thus renders obvious the claimed range.
Regarding the mass ratio (B)/(A) recited in instant claims 1 and 3: The ratio of [polysilicone-9 + EP1010N] / [polysilicone-29] in the composition taught by the combination of Grit, Momentive, and Meisei Chemical Works Ltd. is 10/1 (calculated by Examiner), which lies within and thus renders obvious the instantly claimed ranges.
One of ordinary skill in the art would reasonably expect success in modifying the prior art composition with the teachings of Meisei Chemical Works Ltd. as proposed because both PEG-40 hydrogenated castor oil and poly-condensates of ethyleneoxide and propyleneoxide are taught by Grit as suitable nonionic surfactants, suggesting they would behave in a similar manner when used at concentrations within the range disclosed by Grit.
Response to Arguments
Applicant’s arguments submitted on 10/10/2025 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1, 3-7, 10, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,220,478 B2 in view of Grit et al. (US20130017157A1; published: 01/17/2013; effectively filed: 12/03/2010; PTO-892 of instant action), Meisei Chemical Works Ltd. (<https://www.meisei-chem.co.jp/english/products/alkox/alkox_epn.html>; archived: 01/28/2019; PTO-892 of 07/25/2025), and Arora et al. (US20200375869A1; published: 12/03/2020; effectively filed: 05/31/2019; PTO-892 of 07/25/2025).
US ‘478 claims 1 and 3 recite a hair cosmetic composition comprising the following components (A) to (C), wherein a content of component (A) is 0.2% by mass to 2.00% by mass, a content of component (B) is 15% by mass to 95% by mass, and a mass ratio of component (B) to component (A), (B)/(A), is 20 to 93.5: (A) polysilicone-29; (B) ethanol; and (C) water, wherein the hair cosmetic composition has a pH of 1.0 to 4.0.
Polysilicone-29 reads on component (A), specifically component (A1), of instant claims 1, 3, and 5-7, wherein the mass lies within and thus renders obvious the claimed range. Ethanol reads on the at least one micelle inhibitor (C2) of instant claim 1, wherein the mass of 95% lies within and thus renders obvious the instantly claimed range. The pH of 4 lies within and thus renders obvious the pH of instant claim 4.
The claims of US ‘478 differ from the instant claims in the claims of US ‘478 do not recite that the composition comprises the component (B) recited in instant claims 1, 3, 10, or 14-15, or the mass ratio (B)/(A) recited in instant claims 1 and 3.
The teachings of Grit and Meisei Chemical Works Ltd. are as set forth above and further incorporated herein.
Arora teaches that film-forming polymers provide protection against external factors such as protection from moisture and reduce frizziness (Paragraph 0003), and nonionic surfactants confer additional benefits to achieve improved styling and hair smoothing (Paragraph 0042).
Regarding the component (B) recited in instant claims 1, 3, 10, and 14-15: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the composition recited in the claims of US ‘478 by further including the polysilicone-9 of Grit and the EP1010N copolymer of ethylene oxide and propylene oxide of Meisei Chemical Works Ltd. because Arora teaches that silicone film-forming polymers and nonionic surfactants provide the above benefits to hair care compositions comprising the film-former polysilicone-29.
Regarding the content of component (B) recited in instant claim 1: It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the concentration of polysilicone-9 and EP1010N using by 0.1% by weight of each, wherein the total 0.2% by weight lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization because Arora teaches that these concentrations are suitable for producing a hair care composition with improved styling properties (Paragraphs 0014 and 0075).
Regarding the mass ratio (B)/(A) recited in instant claims 1 and 3, the ratio of [polysilicone-9 + EP1010N] / [polysilicone-29] in the composition taught by the combination of US ‘478 claims, Grit, Meisei Chemical Works Ltd., and Arora is 1/1 (calculated by Examiner), which lies within and thus renders obvious the instantly claimed ranges.
It is noted that the recitation “fiber treatment agent” in instant claim 1 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of US ‘478 claims, Grit, Meisei Chemical Works Ltd., and Arora is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02.
One of ordinary skill in the art would reasonably expect success in modifying the composition recited in the claims of US ‘478 with the prior art teachings as proposed because all components, concentrations, and properties are known in the art as suitable for producing hair care compositions.
Claims 1, 3-7, 10, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 27-29 of copending Application No. 17/621,857 in view of Grit et al. (US20130017157A1; published: 01/17/2013; effectively filed: 12/03/2010; PTO-892 of instant action), Meisei Chemical Works Ltd. (<https://www.meisei-chem.co.jp/english/products/alkox/alkox_epn.html>; archived: 01/28/2019; PTO-892 of 07/25/2025), and Arora et al. (US20200375869A1; published: 12/03/2020; effectively filed: 05/31/2019; PTO-892 of 07/25/2025).
App. ‘857 claims 27 and 28 recite treatment agents having a pH of 4 or less or 8 or more and comprising the following components (A), (B) and (C):
(A) an epoxy-aminosilane copolymer;
(B) water; and
(C) a pH adjuster.
App. ‘857 claims 1 and 29 further limit component (A) to polysilicone-29 in an amount of 0.5% to 2% by weight.
The claims of App. ‘857 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1 and 3 of U.S. Patent No. 12,220,478 B2 in view of Grit, Meisei Chemical Works Ltd., and Arora, which is discussed in detail above.
Regarding the at least one micelle inhibitor recited in instant claim 1: It would have been obvious to one of ordinary skill in the art to modify the hair treatment agent taught by the combination of App. ‘857 claims, Grit, Meisei Chemical Works Ltd., and Arora by including the ethanol taught by Grit. One of ordinary skill in the art would have been motivated to add ethanol using 50% by weight, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization because Grit teaches this amount of ethanol as a suitable solvent for hair compositions comprising aminosilicone polymers and nonionic surfactants.
One of ordinary skill in the art would reasonably expect success in modifying the composition recited in the claims of App. ‘857 with the prior art teachings as proposed because all components, concentrations, and properties are known in the art as suitable for producing hair care compositions.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-7, 10, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-10, and 11 of copending Application No. 17/788,266 in view of Grit et al. (US20130017157A1; published: 01/17/2013; effectively filed: 12/03/2010; PTO-892 of instant action), Meisei Chemical Works Ltd. (<https://www.meisei-chem.co.jp/english/products/alkox/alkox_epn.html>; archived: 01/28/2019; PTO-892 of 07/25/2025), and Arora et al. (US20200375869A1; published: 12/03/2020; effectively filed: 05/31/2019; PTO-892 of 07/25/2025).
The claims of App. ‘266 recite a hair cosmetic composition comprising the following components:
(A) a self-crosslinking compound; and
(B) a compound having an IOB of 1.3 or less in the organic conceptual diagram and being liquid at 200C;
wherein the content of component (A) is 0.05% by mass or more and 10% by mass or less.
App. ‘266 claim 4 recites that the composition further comprises the following component: (C) an aliphatic alcohol having 1 to 4 carbon atoms.
The claims of App. ‘266 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1 and 27-29 of copending Application No. 17/621,857 in view of Grit, Meisei Chemical Works Ltd., and Arora, which is discussed in detail above.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-7, 10, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-10 of copending Application No. 18/540,213 in view of Grit et al. (US20130017157A1; published: 01/17/2013; effectively filed: 12/03/2010; PTO-892 of instant action), Meisei Chemical Works Ltd. (<https://www.meisei-chem.co.jp/english/products/alkox/alkox_epn.html>; archived: 01/28/2019; PTO-892 of 07/25/2025), and Arora et al. (US20200375869A1; published: 12/03/2020; effectively filed: 05/31/2019; PTO-892 of 07/25/2025).
The claims of App. ‘213 recite a composition comprises the following components (A) to (C), wherein a content of component (A) is 0.01% by mass to 5.00% by mass, and a content of component (B) is 5.00% by mass to 96.77% by mass:
(A) an epoxyaminosilane copolymer;
(B) a micelle formation inhibitor comprising at least one selected from the following (b1) to (b3):
(b1) an organic compound having a hydrogen bond term of the Hansen solubility parameter of 10.0 MPa1/2 to 15.8 MPa1/2;
(b2) a compound selected from ethanol, triethylene glycol, pentylene glycol, methyl propanediol, diethanolamine and N-methyldiethanolamine; and
(b3) an organic salt;
wherein the organic compound (b1) is distinct from the organic salt (b3), and
(C) water.
App. ‘213 claim 10 further limits component (A) to polysilicone-29.
The claims of App. ‘213 are rejected for the same/similar reasons as discussed above in the double patenting rejection over claims 1 and 27-29 of copending Application No. 17/621,857 in view of Grit, Meisei Chemical Works Ltd., and Arora, which is discussed in detail above.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted on 10/10/2025 with respect to rejections on the grounds of non-statutory double patenting have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
To the extent that Applicant’s argument of unexpected results pertains to the new grounds of rejection presented herein in view of US ‘478 and App. ‘266: The Examiner notes that double patenting rejections are based on a comparison of the claims in a patent and an application or between two applications. The alleged differences in properties argued by Applicant are not claimed features of either the instant claims or the comparative claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, Applicant provides no comparative evidence to establish that these properties are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.").
Similarly, to the extent that Applicant’s arguments in relation to copending App. ‘857 pertain to the new grounds of rejection presented herein: The alleged differences in properties argued by Applicant are not claimed features. Since the claims of App. ‘857 in view of Grit, Meisei Chemical Works Ltd., and Arora teach a composition having the same chemical structure as instantly claimed, it is capable of performing the intended use.
In view of the foregoing, the non-statutory double patenting rejections of record are maintained.
Conclusion
No claim is allowed.
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/SARAH C WISTNER/ Examiner, Art Unit 1616
/Mina Haghighatian/ Primary Examiner, Art Unit 1616