DETAILED ACTION
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 has been entered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 30-41 and 43-47 are rejected under 35 U.S.C. 103 as being as being obvious over Gregolin (WO 2019/195901 A1) in view of Combs et al. (US 2014/0093466 A1).
Regarding claims 30 and 47 Gregolin discloses a hair treatment composition to provide styling effects to hair (e.g., straightening effects, volume reduction, frizz control, styling or shaping effects, curling effects) (abstract; pg. 4, lines 8-14) comprising at least one reducing agent, such as the polyphenol, tannic acid (pg. 24, line 13), at least one thickening agent, such as the polysaccharide, carrageenan (pg. 10, line 12), at least one nonionic surfactant, such as a fatty alcohol (pg. 42-43), and water in an amount of 50 to 99 wt.% (pg. 62, lines 23-24) (pg. 3, lines 13-28). Gregolin the reducing agent (such as the polyphenol, tannic acid, pg. 24, line 13) is present in the composition in an amount of 0.1 to 20 wt.% (pg. 20, bottom – pg. 29). Gregolin discloses the thickening agent (such as the polysaccharide, carrageenan, pg. 10, line 12) is present in the composition in an amount of 0.01 to 10 wt.% (pg. 10, lines 9-26). Gregolin discloses that the composition is in the form of a cream or a lotion (pg. 11, lines 12-14).
Gregolin does not disclose that the composition includes an emulsifier, such as acrylamide/sodium acryloyldimethyltaurate copolymer, isohexadecane, and polysorbate 80.
Combs discloses a hair care composition (abstract) with the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 as a rheology modifier [0065]. Combs teaches that the rheology modifier increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
Since Gregolin generally teaches a composition for the hair, it would have been prima facie obvious to one of ordinary skill in the art to include the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80, within the teachings of Gregolin, because Combs teaches this combination is a hair care composition. An ordinarily skilled artisan would be motivated to use the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 because Combs teaches that this combination acts as a rheology modifier which increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
Regarding the limitation of the combined amount of (a) and (b) being sufficient to style the hair, Gregolin teaches that the compositions of the disclosure can be used to provide styling effects (e.g., straightening effects, volume reduction, frizz control, styling or shaping effects, curling effects) (abstract; pg. 4, lines 8-14), therefore, it would be reasonably expected that the combined amount of the reducing agent (i.e., tannic acid) and the thickener (i.e., carrageenan), in the amounts taught by Gregolin, is sufficient to provide styling effects to the hair.
In regards to the specific amounts of the individual components (i.e., tannic acid and carrageenan), in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A.
Claims 31-33 are rendered prima facie obvious because Gregolin discloses that the reducing agent (such as the polyphenol, tannic acid, pg. 24, line 13) is present in the composition in an amount of 0.1 to 20 wt.% (pg. 20, bottom – pg. 29). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 34-36 are rendered prima facie obvious because Gregolin discloses that the thickening agent (such as the polysaccharide, carrageenan, pg. 10, line 12) is present in the composition in an amount of 0.01 to 10 wt.% (pg. 10, lines 9-26). A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claims 37-38, it would have been prima facie obvious to include the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80, within the teachings of Gregolin, as taught by Combs, as previously discussed and Combs teaches this combination as a rheology modifier which is present in the composition in an amount of 0.5-20 wt.% [0068] [0009].
Claims 39-40 are rendered prima facie obvious because Gregolin discloses the fatty alcohol comprises cetyl alcohol (pg. 43, lines 8-9).
Claim 41 is rendered prima facie obvious because Gregolin discloses the nonionic surfactant, such as fatty alcohols (pg. 42-43) are present in the composition in an amount of 0.01% to 15% by weight (pg. 48, lines 4-6). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 43-44 are rendered prima facie obvious because Gregolin discloses the composition further includes a water-soluble solvent (pg. 3, lines 13-28), such as the humectant, propylene glycol (pg. 63, lines 3-12), in an amount of 0.01% to 10% by weight (pg. 64, lines 5-6). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 45 is rendered prima facie obvious because Gregolin discloses the composition includes water in an amount of 50 to 99 wt.% (pg. 62, lines 23-24). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 46 is rendered prima facie obvious because Gregolin discloses the composition including water further includes a water-soluble solvent (pg. 3, lines 13-28), such as the non-aqueous solvent, isopropyl alcohol (pg. 63, line 4), in an amount of 0.01% to 10% by weight (pg. 64, lines 5-6). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 42 is rejected under 35 U.S.C. 103 as being as being obvious over Gregolin (WO 2019/195901 A1) in view of Combs et al. (US 2014/0093466 A1) and further in view of Noll et al. (US 2020/0129407 A1).
The 35 U.S.C. 103 rejection over Gregolin in view of Combs was previously discussed.
Gregolin does not disclose that the composition comprises at least one oil, wherein the total amount of oils ranges from about 2 to about 20% by weight relative to the total weight of the composition, as recited in claim 42.
Noll teaches a cosmetic agent for hair (abstract) where the cosmetic agent includes at least one nourishing oil in an amount of 0.5 to 10% by weight [0052]-[0053]. Noll teaches that oils are advantageous as nourishing substances since they give hair a silky shine and make the hair more resistant [0052].
Since Gregolin generally teaches a composition for the hair, it would have been prima facie obvious to one of ordinary skill in the art to include an oil, in the amount taught by Noll, within the teachings of Gregolin, because Noll teaches an oil in a composition for the hair. An ordinarily skilled artisan would be motivated to use an oil because Noll teaches that oils are advantageous as nourishing substances since they give hair a silky shine and make the hair more resistant [0052].
Response to Arguments
Applicant' s arguments with respect to claims 30-47 have been considered 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 30-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 33-52 of U.S. Patent Application No. 17/853,128 in view of Gregolin (WO 2019/195901 A1) and Combs et al. (US 2014/0093466 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for the composition being a lotion or a cream and the composition including a combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80.
Gregolin discloses a hair treatment composition to provide styling effects to hair (e.g., straightening effects, volume reduction, frizz control, styling or shaping effects, curling effects) (abstract; pg. 4, lines 8-14) where the composition is in the form of a cream or a lotion (pg. 11, lines 12-14).
Combs discloses a hair care composition (abstract) with the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 as a rheology modifier [0065]. Combs teaches that the rheology modifier increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
It would have been prima facie obvious to a person having ordinary skill in the art to formulate the composition as a lotion or a cream and include a combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 within the copending claims. The ordinarily skilled artisan would be motivated to formulate the hair styling composition as a lotion or cream as taught by Gregolin (pg. 11, lines 12-14). The ordinarily skilled artisan would have been motivated to include a combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 because Combs teaches that it increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
The specific amounts of the components, as recited in the instant claims, would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Claims 30-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15, 17-18, and 20-21 of U.S. Patent Application No. 17/855,765 in view of Gregolin (WO 2019/195901 A1) and Combs et al. (US 2014/0093466 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for a fatty alcohol, the composition including a combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80, and the composition being in the form of a lotion or a cream.
Gregolin discloses a hair treatment composition to provide styling effects to hair (e.g., straightening effects, volume reduction, frizz control, styling or shaping effects, curling effects) (abstract; pg. 4, lines 8-14) where the composition is in the form of a cream or a lotion (pg. 11, lines 12-14). Gregolin teaches the composition includes at least one nonionic surfactant, such as a fatty alcohol (pg. 42-43) (pg. 3, lines 13-28).
Combs discloses a hair care composition (abstract) with the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 as a rheology modifier [0065]. Combs teaches that the rheology modifier increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
It would have been prima facie obvious to a person having ordinary skill in the art to formulate the composition as a lotion or a cream and include a fatty alcohol and a combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 within the copending claims. The ordinarily skilled artisan would be motivated to formulate the hair styling composition as a lotion or cream and include a fatty alcohol as a nonionic surfactant as taught by Gregolin (pg. 11, lines 12-14; pg. 42-43; pg. 3, lines 13-28). The ordinarily skilled artisan would have been motivated to include a combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 because Combs teaches that it increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
The specific amounts of the components, as recited in the instant claims, would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Claims 30-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 28-33, 35-44 and 46-47 of U.S. Patent Application No. 17/853,580 in view of Gregolin (WO 2019/195901 A1) and Combs et al. (US 2014/0093466 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for a fatty alcohol, an emulsifier (such as a combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80) and the composition being in the form of a lotion or a cream.
Gregolin discloses a hair treatment composition to provide styling effects to hair (e.g., straightening effects, volume reduction, frizz control, styling or shaping effects, curling effects) (abstract; pg. 4, lines 8-14) where the composition is in the form of a cream or a lotion (pg. 11, lines 12-14). Gregolin teaches the composition includes at least one nonionic surfactant, such as a fatty alcohol (pg. 42-43) (pg. 3, lines 13-28).
Combs discloses a hair care composition (abstract) with the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80 as a rheology modifier [0065]. Combs teaches that the rheology modifier increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
It would have been prima facie obvious to a person having ordinary skill in the art to formulate the composition as a lotion or a cream and include a fatty alcohol and an emulsifier within the copending claims. The ordinarily skilled artisan would be motivated to formulate the hair styling composition as a lotion or cream and include a fatty alcohol as a nonionic surfactant as taught by Gregolin (pg. 11, lines 12-14; pg. 42-43; pg. 3, lines 13-28). The ordinarily skilled artisan would have been motivated to include an emulsifier (such as the combination of acrylamide/sodium acryloyldimethyl taurate copolymer, isohexadecane, and polysorbate 80) because Combs teaches that it increases the substantivity of the composition such that it does not drip undesirably onto other areas of the body, onto clothing, or onto home furnishings [0065].
The specific amounts of the components, as recited in the instant claims, would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Conclusion
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612