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 .
Claim Status
Applicant’s amendment of 07/08/2026 is acknowledged. Claims 1, 4, 12, and 13 are amended, and claims 2-3 and 8-9 are cancelled. Claims x-z are currently pending and are examined on the merits herein.
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 The election is maintained and claims 11-13 remain withdrawn.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, 4-7, 10, and 14-15 are examined on the merits herein.
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.
Declaration Under 37 CFR 1.132
Ryosuke Suzuki provided a Declaration under 37 CFR 1.132, filed 07/08/2026. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents the results of inventive examples (Examples 1, 12, and 13) compared to additional comparative examples (AC-1, -2, and -3) that do not include polysilicone-29. A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
The Declaration under 37 CFR 1.132 filed 07/08/2026 is insufficient to overcome the rejection of claims 1, 4-7, 10, and 14-15 as set forth in the last Office action for the following reasons: The relevant criterion here is No. 3, whether the Declaration is commensurate in scope of the claims, and No. 5, whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness. The Examiner has carefully reviewed the Declaration, including the data presented in the Declaration.
The data which demonstrate the alleged superiority of the inventive examples in achieving superior film formability, color deepening, and film durability are not commensurate in scope with the instant claims. The data compare Examples 1, 12, and 13, which comprise both polysilicione-29 and a compound corresponding to instant component (B) to Comparative Example 1, which comprises polysilicone-29 but does not comprise a compound corresponding to component (B), and to additional comparative examples AC-1, AC-2, and AC-1, which do not comprise polysilicone-29. The presence of polysilicone-29 appears to be the most critical element in simultaneously achieving all three properties of interest. The instant claims, in contrast, reflect that any combination of component (A) selected from any silicone or alkylamine containing an alkoxysilyl group, which encompasses a wide breadth of compounds, and compounds corresponding to each of components (B) and (C) produces the same superior effect. If component (A) is not polysilicone-29, which is an art-recognized film former, or 3-aminopropyltriethoxysilane [see Example 4 in Table 1 of Applicant’s instant spec.], is the same performance observed? One of ordinary skill in the art would not necessarily expect all combinations of (A), (B), and (C) to achieve the same allegedly superior effects, given the diverse chemical structures encompassed by instant component (A).
Further, the instant claims are not limited to a composition having any particular film formability, color deepening, and/or film durability properties. They are broadly drawn to a composition comprising three components that are routinely incorporated into hair care compositions in the exact same amounts as instantly claimed. As discussed in the prior art rejections of record, it would have been prima facie obvious to one of ordinary skill in the art to further include polysilicone-29 in the hair care composition of Grit, which requires at least one film former and also comprises polysilicone-9 and ethanol in the instantly claimed amounts, because Momentive teaches that incorporating polysilicone-29 in an amount within the instantly claimed range is known to impart several benefits (e.g., anti-frizz, increased shine, easy styling, etc.) that meet the consumer expectations outlined by Grit. Based on the prior art teachings, an ordinarily skilled artisan would have had sufficient motivation to arrive at the exact composition as instantly claimed, regardless of Applicant’s finding of allegedly unexpected properties that flow naturally from the claimed combination.
Lastly, in view of the cited Momentive reference, which clearly recognizes the film-forming properties of polysilicone-29 as “durable through multiple washes” [Momentive, pg. 1; previously cited], it is unclear that the results observed by Applicant are actually unexpected. Regarding the observed color deepening effect, the property would flow naturally from the combination suggested by the cited references. Note MPEP 2145. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991); see also In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (obviousness rejection affirmed where using claimed elements in the manner suggested by the prior art necessarily resulted in claim-recited effect). Since the combined references would have led one of ordinary skill in the art to make the instantly claimed composition, which is intended for hair care, one would reasonably expect that the color deepening effect observed by Applicant would flow naturally from applying the composition to hair in a manner suggested by the prior art.
The Declaration is insufficient to overcome the prior art rejections of record because the results demonstrated are not commensurate in scope with the claims and because the cited combination of references would have led one of ordinary skill in the art to the instantly claimed composition regardless of Applicant’s allegedly unexpected results- some of which are actually expected. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Previous Rejections/Objections
Applicant’s arguments filed 07/08/2026 have been fully considered. Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied as necessitated by Applicant’s amendment to the claims. They constitute the complete set of rejections and/or objections presently being applied to the instant application. Applicant’s arguments insofar as they pertain to the present grounds of rejections and/or objections are addressed herein.
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, 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 02/09/2026) and further in view of Momentive (Silsoft* CLX-E Conditioning Agent; published: April 2017; PTO-892 of 02/09/2026) 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 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 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 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 claim 1: 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 range.
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, 4-7, 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 02/09/2026) in view of Momentive (Silsoft* CLX-E Conditioning Agent; published: April 2017; PTO-892 of 02/09/2026), as applied to claims 1, 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, 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, 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 02/09/2026) in view of Momentive (Silsoft* CLX-E Conditioning Agent; published: April 2017; PTO-892 of 02/09/2026), as applied to claims 1, 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, 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 claim 1 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 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 claim 1: 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 range.
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 07/08/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered, but were not found to be persuasive.
Applicant argues that the present application is associated with unexpected results indicative of nonobviousness and submits that there is no reason for one of ordinary skill in the art to believe that a composition that includes only one of these components, or a combination of these components, would exhibit a color deepening effect in view of the prior art teachings. Applicant’s arguments are analogous those presented in the Declaration filed 07/08/2026 and were not found to be persuasive for the same reasons as discussed in detail above [see “Declaration Under 37 CFR 1.132”]. Namely, the results demonstrated are not commensurate in scope with the claims, and the cited combination of references, which teaches all features of the instantly claimed composition, would have led one of ordinary skill in the art to the instant composition regardless of Applicant’s allegedly unexpected results- some of which are actually expected. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Therefore, the prior art rejections of record are hereby maintained.
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, 4-7, 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 02/09/2026), 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 and 5-7, wherein the mass lies within and thus renders obvious the claimed range. Ethanol reads on the micelle formation inhibitor 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 reference claims do not recite that the composition comprises the component (B) recited in instant claims 1, 10, or 14-15, or the mass ratio (B)/(A) recited in instant claim 1.
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, 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 claim 1: 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 range.
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, 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, 4-7, 10, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-10 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 02/09/2026), 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. Given the limited number of choices, one of ordinary skill in the art could readily envision an embodiment wherein the aliphatic alcohol is ethanol.
The claims of App. ‘266 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 et al., which is discussed in detail above.
Regarding the mass ratio (B)/(A) recited in instant claim 1: The ratio of [polysilicone-9 + EP1010N] / [polysilicone-29] in the composition taught by the combination of reference claims, Grit, Meisei Chemical Works Ltd., and Arora is 0.02/1 to 4/1 (calculated by Examiner), which overlaps and thus renders obvious the instantly claimed range.
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 reference claims, Grit, Meisei Chemical Works Ltd., and Arora by manipulating the concentration of 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.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted on 07/08/2026 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 were not found to be persuasive.
Applicant argues that the rejections are improper because there is no motivation to combine the references as the Office suggests. Specifically, Applicant argues that none of Grit, Meisei, Arora, or reference claims teaches or suggests a composition that improves color saturation or for improving the appearance of damaged hair or that any combination of components described in the reference applications could achieve such a result. Applicant points to the instant and reference specifications for support. These arguments were not found to be persuasive.
First, the reason or motivation to modify the reference may suggest what the inventor has done, but for a different purpose. It is not necessary that the prior art suggests the combination to achieve the same advantage or result discovered by Applicant.
Second, it is noted that the features upon which Applicant relies (i.e., improving color saturation or improving the appearance of damaged hair) are not recited in the rejected 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). In fact, it is improper to treat what is disclosed in a reference patent or copending application as if it were prior art in the context of non-statutory double patenting analysis. See MPEP 804(B)(1).
Because all instantly claimed components and concentrations are well-known in the prior art, and because the cited prior art provides sufficient motivation to include the instant component (B) in hair care compositions comprising the film-former polysilicone-29, i.e., to provide protection from moisture and reduce frizziness and to achieve improved styling and hair smoothing, the Examiner maintains that in view of the prior art, the instant claims are an obvious variation of the reference claims.
In view of the foregoing, the Examiner maintains that the double patenting rejections of record are proper and are hereby maintained.
Conclusion
No claim is 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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, Sue Liu can be reached at (571)272-5539. 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.
/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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