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 .
DETAILED ACTION
A second 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 29, 2025 has been entered.
Claims 41, 42 and 44-61 are pending.
Claims 1-40 and 43 are cancelled.
Claims 41, 42, 45, 47, 56 and 57 are currently amended.
Claims 48-50 and 57-60 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 41, 42, 44-47, 51-56 and 61 as filed on December 29, 2025 are pending and under consideration to the extent of the elected species, e.g., the at least one polyphenol is “resveratrol”, the at least one nonionic polysaccharide polymer is “modified starch”, the at least one cationic surfactant is “behentrimonium chloride”, the at least one fatty alcohol or/and ester is “stearyl alcohol”, and the at least one silicone compound is “amodimethicone, if present”. In view of the submission of claims on March 13, 2025 drawn to a non-elected embodiment of invention, tannic acid was rejoined. See MPEP 819.
Withdrawn Objections / Rejections
In view of the apparent amendment of the claims, all previous claim objections are withdrawn. Applicant is reminded claims being currently amended must be presented with markings to indicate the changes that have been made relative to the immediate prior version. See MPEP 714 II (C)(B).
In view of Notice of Abandonment mailed in Application No. 17/130,273, the previous double patenting rejection thereover is withdrawn.
Applicant’s arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 23, 2025, January 5, 2026 and February 2, 2026 were considered.
Claim Objections
Claim 56 is objected to because of the following informalities: no basis is provided for the determination of the claimed percentages, e.g., by weight consistent with claim 41. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 55 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 55 recites the total amount of the at least one non-aqueous solvent ranges from greater than 0% to about 20% by weight. Applicant’s Remarks of March 13, 2025 cite to paragraphs [0019]-[0022], [0037]-[0039], [0061] and [00107] of the as-filed specification in support of the amendments. Paragraph [00107] discloses, in part:
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The disclosure of unbounded ranges does not support the bounded range newly claimed.
Response to Arguments: Claim Rejections - 35 USC § 112(a)
Applicant's disagreement articulated at page 7 of the Remarks is acknowledged but not found persuasive because Applicant has not identified support for either a lower boundary or a bounded range in the as-filed specification. Therefore, the rejection is properly maintained and made again.
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 41, 42, 44-47, 51-56 and 61 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 pre-AIA the applicant regards as the invention.
Claim 41(a) and claim 56(a) recites the polyphenols. There is insufficient antecedent basis for the polyphenols because the antecedent recites one or more polyphenols and it is unclear whether the polyphenols references one, more than one, or all of the one or more polyphenols encompassed by the antecedent. Claims 42, 44-47, 51-55 and 61 are included in this rejection because they depend from claim 1 and thus they also encompass the embodiment under rejection.
Claim 46 recites anions X- chosen from inter alia C1-C30 alkyl, C1-C30 alkoxy, …, or C10C30 hydroxyalkyl groups. However, the circumscribed alkyl groups are not anions and cannot form the claimed salt. Because it is unclear what salts are claimed, claim 46 is indefinite.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 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 41, 42, 44-47, 51, 52 and 54-56 are rejected under 35 U.S.C. 103 as being unpatentable Fack et al. (US 7,151,079, published December 19, 2006, of record) in view of Destribats et al. (FR 3,059,990 A1, published June 15, 2018, as evidenced by the Google translation, of record).
Fack teaches cosmetic compositions comprising, in a cosmetically acceptable medium, at least one fructan, at least one polysaccharide and at least one beneficial agent (title; abstract; claims; paragraph bridging columns 1-2). The medium is aqueous (0 wt% non-aqueous solvent) or aqueous / alcoholic (column 21, lines 28-30; Examples). The Exemplary compositions of Fack comprise q.s. water; Example 1 comprises 81.8 wt% water (~= 100 – 10.6 – 4 – 1.9 – 1.7) (Examples), as required by instant claim 54.
The polysaccharide is chosen from inter alia modified or unmodified starches (claim 1; column 2, lines 30-45 and 60-61), as required by instant claim 44. The polysaccharide is present from 0.01 to 20 wt%, from 0.05 to 10 wt% (claims 1, 43; column 2, lines 62-65), as required by instant claim 45. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.015.
The beneficial agent is chosen from inter alia (2) branched or unbranched fatty acids and alcohols selected from inter alia stearyl alcohol, (7) antioxidants selected from inter alia polyphenols, (12) cationic surfactants or/and (14) organomodified or non-organomodified silicones (claims 2, 4, 8, 14, 36-37). The beneficial agent is present from 0.001 to 20 wt%, from 0.01 to 10 wt% (claims 18, 44), as required by instant claims 42, 47, 52.
Fack further teaches the cationic surfactants are selected from inter alia quaternary ammonium salts of the following general formula:
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such as behenyltrimethylammonium (behentrimonium) chloride (claims 13, 30; column 17, line 23 through column 20, line 8, in particular column 20, lines 4-8), as required by instant claim 46. Surfactants are present from 0.05 to 50 wt%; Example 1 comprises 4 wt% behenyltrimethylammonium chloride and Example 2 comprises 2 wt% behenyltrimethylammonium chloride (column 15, lines 33-41; column 21, lines 18-23; Examples; claims 19-20, 45-46), as required by instant claim 47. Fack further teaches cationic surfactants as conditioning agents in amounts from 0.1 to 10 wt%, from 0.5 to 5 wt% (column 21, lines 18-23).
Fack further teaches organomodified silicones include inter alia products known as dimethicone copolyols and products comprising amino groups; Example 1 comprises 1.7 wt% amodimethicone (amino-functional as evidenced by paragraph [00108] of the instant specification) (column 11, lines 36 through column 12, line 9; Examples), as required by instant claims 51, 52.
Fack, as a whole, is drawn to compositions for washing and/or conditioning keratinous matter such as the hair and skin and is drawn to compositions for hair straightening (abstract; claim 21). Fack further teaches a process which makes it possible to retain the form of the hairstyle (column 21, lines 1-17).
Fack does not teach about 0.5 to 5 wt% tannic acid as required by claims 41, 56.
Fack does not teach about 1 to 3 wt% tannic acid as required by claim 42.
Fack does not specifically teach the amount of non-aqueous solvent ranges from greater than 0 to about 20 wt% as required by claim 55.
These deficiencies are made up for in the teachings of Destribats.
Destribats teaches hair compositions comprising a particular combination of cationic quaternary surfactant, antioxidant, and a particular conditioning agent inclusive of silicones chosen from amino silicones; the compositions may further comprise fatty alcohols (title; abstract; claims, in particular 1, 3, 5-7, 10, 11, 13; Example). Antioxidants include tannic acid and may be present from 0.1 to 10 wt%, most preferably from 0.5 to 1.5 wt% (claim 5, pages 4-5, “(2) Antioxidant agents”), as required by instant claim 42. The compositions comprise 50 to 99 wt% water and can comprise organic solvent(s) chosen from monoalcohols from 0.5 to 50 wt% (claim 13; page 13, last 4 full paragraphs), as required by instant claim 55.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute antioxidants as taught by Destribats inclusive of tannic acid for the antioxidant beneficial agent in the compositions of Fack because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Regarding the ranges of claims 41, 42 and 56, the combined teachings of Fack and Destribats render obvious compositions comprising tannic acid for the antioxidant beneficial agent, wherein the beneficial agent is present from 0.001 to 20 wt%. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include antioxidants such as tannic as taught by Destribats in an amount from 0.1 to 10 wt% as taught by Destribats in the compositions of Fack because this amount is suitable for inhibiting oxidation in hair compositions.
Regarding claim 55, 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 aqueous / alcoholic medium of the compositions of Fack to comprise 50 to 99 wt% water and 0.5 to 50 wt% monoalcohol as taught by Destribats because these amounts are suitable for hair compositions.
Claims 53 and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Fack et al. (US 7,151,079, published December 19, 2006, of record) in view of Destribats et al. (FR 3,059,990 A1, published June 15, 2018, as evidenced by the Google translation, of record) as applied to claims 41, 42, 44-47, 51, 52 and 54-56 above, and further in view of Kadir et al. (WO 2019/200027, published October 17, 2019, of record).
The teachings of Fack and Destribats have been described supra.
Fack, as a whole, is drawn to compositions for washing and/or conditioning keratinous matter such as the hair and skin and is drawn to compositions for hair straightening (abstract; claim 21). Fack further teaches the beneficial agent is chosen from inter alia (8) chelating agents inclusive of EDTA (claims 2, 9).
They do not teach cyclodextrin as required by claim 53.
They do not teach resveratrol as required by claim 61 and by the elected embodiment.
These deficiencies are made up for in the teachings of Kadir.
Kadir teaches compositions for hair care inclusive of straightening (title; abstract; paragraph [0001]). The compositions can contain various adjuvants conventionally included in personal care compositions (paragraph [0070]). Chelating agents inclusive of EDTA or/and cyclodextrins can be employed to stabilize the compositions against the deleterious effects of metal ions (paragraphs [00186]-[00187]), as required by instant claim 53. Antioxidants include polyphenols and plant extracts comprising phenols such as resveratrol (paragraph [00261]), as required by instant claim 61.
Regarding claim 53, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute chelating agents inclusive of cyclodextrins as taught by Kadir for the chelating agents of the compositions of Fack because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Regarding claim 61, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine antioxidants inclusive of plant extracts comprising resveratrol as taught by Kadir with the antioxidants of the compositions of Fack in view of Destribats inclusive of tannic acid because “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06.
Claims 41, 42, 44-47, 51, 52, 54-56 and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Chaumontet et al. (WO 2019/197852, published October 17, 2019, of record).
Chaumontet teaches hair treatment compositions comprising (title; abstract; claims):
about 0.1 to 20 wt% of at least one reducing agent inclusive of non-thiol-based compounds inclusive of ortho-diphenol derivatives inclusive of tannic acid and resveratrol (claim 5; pages 19-28, “Non-Thiol-Based Compounds,” in particular the paragraph bridging pages 21-22 and page 27, lines 11-15), as required by instant claims 42, 61;
at least one disulfide;
optionally, about 0.1 to 15 wt% of at least one cationic surfactant inclusive of behentrimonium chloride (claims 9-10, 26-27; pages 28-34, “Cationic Surfactant”), as required by instant claims 46, 47; and
about 50 to 99 wt% water (page 59, “Water”), as required by instant claims 54, 55.
The compositions may further comprise about 0.1 to 15 wt% of at least one nonionic surfactant inclusive of fatty alcohols inclusive of stearyl alcohol (claims 12-13, 26-27; pages 34-40, “Nonionic Surfactant” and in particular page 35, lines 11-15 and 22-23).
The compositions may further comprise about 0.01 to 10 wt% of at least one thickening agent inclusive of modified or unmodified starches (claims 14-17, 26; pages 40-44, “Thickening Agent,” and in particular page 44, lines 1-3), as required by instant claims 44, 45.
The compositions may further comprise about 0.01 to 15 wt% of at least one silicone compound inclusive of amodimethicone (amino-functional as evidenced by paragraph [00108] of the instant specification) (claims 18-20, 26-27; pages 44-54, “Silicone Compound” and in particular page 48, lines 20-21), as required by instant claims 51, 52.
The compositions may further comprise about 0.01 to 10 wt% of at least one water-soluble solvent (page 59, line 25 through page 61, line 6; also Table 1), as required by instant claim 55.
The compositions may further comprise additional components such as plant oils (Table 1).
Chaumontet fails to specifically teach or exemplify an embodiment of composition comprising tannic acid in combination with species of nonionic surfactants (at least one emulsifier), thickening agents (at least one nonionic polysaccharide) or/and species of silicones falling within the scope of the dependent claims and the elected embodiment thereof. However, the specific combination of features claimed is disclosed within the broad generic ranges taught by the Chaumontet reference and 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). See MPEP 2141.
Therefore, it would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aqueous hair treatment compositions of Chaumontet comprising about 0.1 to 20 wt% of tannic acid and resveratrol and optionally about 0.1 to 15 wt% at least one cationic surfactant inclusive of behentrimonium chloride to further comprise about 0.1 to 15 wt% stearyl alcohol as the nonionic surfactant, to further comprise about 0.01 to 10 wt% modified starches as the thickening agent or/and to further comprise about 0.01 to 15 wt% amodimethicone as the silicone because this embodiment of composition is possessed by Chaumontet. And it would have been obvious to employ the ingredients of the compositions of Chaumontet, e.g., the reducing agent and the cationic surfactant and the water and the nonionic surfactant and the thickening agent and the silicone compound, within the ranges taught by Chaumontet. Because the ranges taught by Chaumontet overlap the instantly claimed ranges, a prima facie case of obviousness exists. See MPEP 2144.05.
Claim 53 is rejected under 35 U.S.C. 103 as being unpatentable over Chaumontet et al. (WO 2019/197852, published October 17, 2019, of record) as applied to claims 41, 42, 44-47, 51, 52, 54-56 and 61 above, and further in view of Proust et al. (EP 2,065,023 A2, published June 3, 2009, as evidenced by the Google translation, of record).
The teachings of Chaumontet have been described supra.
Chaumontet further teaches the compositions may further comprise additional components inclusive of opacifiers such as glycol distearate or/and colorants as needed or desired (Table 1).
Chaumontet does not teach at least one cyclodextrin as required by claim 53.
This deficiency is made up for in the teachings of Proust.
Proust teaches hairstyling compositions comprising at least one pearlescent agent chosen from inter alia cyclodextrins and in particular beta-cyclodextrin or/and glycol distearate (title; abstract; claims; page 5, middle, “The pearlescent agents (ii) are preferably chosen from ...”). Pearlescent agents impart an iridescent or metallized appearance of effect (page 5, lower half).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute pearlescent agents inclusive of cyclodextrins as taught by Proust for the opacifiers or/and colorants of the hair treatment compositions of Chaumontet because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary.
Response to Arguments: Claim Rejections - 35 USC § 103
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant’s position that a non-elected species can be used to establish unexpected results of a claimed genus is acknowledged but not found persuasive because the mere fact that a singular composition is characterized by select properties upon circumscribed use is not evidence of unexpected results. See generally MPEP 716. It is also not seen where Applicant has articulated a rationale demonstrating the allegedly unexpected properties of compositions 1A-1E are extrapolatable across the genus of compositions claimed. See MPEP 716.02(b), 716.02(d) and 716.02(e).
Therefore, the rejections are properly maintained in modified form as necessitated by Applicant’s amendments.
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 41, 42, 44-47, 51-56 and 61 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable (1) over claims 30-47 of copending Application No. 17/852,729, (2) over claims 33-50 of copending Application No. 17/853,128 and (3) over claims 28-33 and 35-44 of copending Application No. 17/853,580 in view of Fack et al. (US 7,151,079, published December 19, 2006, of record) and Kadir et al. (WO 2019/200027, published October 17, 2019, of record).
Withdrawn composition claims of the copending Applications are included in this rejection because withdrawn claims are still pending
The instant claims are drawn to compositions comprising about 0.5 to 5 wt% of tannic acid, about 0.01 to 5 wt% of at least one nonionic polysaccharide polymer, about 0.01 to 10 wt% of at least one cationic surfactant, at least one emulsifier chosen from fatty alcohols, at least one solvent comprising water, optionally at least one silicone compound and optionally at least one oil. The tannic acid may be present from about 1 to 3 wt%, the polysaccharide may be starches or/and glucans or/and celluloses, the polysaccharide may be present from about 0.01 to 2 wt%, the cationic surfactant may comprise at least one quaternary ammonium salt of formula (I), the cationic surfactant may be present from about 0.1 to 3 wt%, the silicone may comprise amodimethicones, the silicone may be present from about 0.1 to 10 wt%, the compositions may further comprise a cyclodextrin or resveratrol, the compositions may comprise at least 50 wt% water, or the compositions may comprise greater than 0 up to 20 wt% of a non-aqueous solvent.
The copending ‘729 claims (1) are drawn to compositions, in the form of a lotion or a cream, comprising about 0.01 to 10 wt% of at least one polyphenol, about 0.01 to 5 wt% of at least one film former chosen from polysaccharides or/and gums, at least one emulsifier, at least one fatty alcohol, at least one solvent comprising water, optionally at least one oil and optionally at least one humectant. The polyphenol may be tannic acid, the fatty alcohol may be stearyl alcohol, the fatty alcohol may be present from about 0.01 to 10 wt%, the solvent comprises at least 50 wt% water, or the solvent may comprise less than 20 wt% of a non-aqueous solvent.
The copending ‘128 claims (2) are drawn to compositions comprising about 0.1 to 10 wt% of at least one polyphenol, about 0.1 to 3 wt% of at least one film former chosen from polysaccharides, about 0.1 to 3 wt% of at least one gum, at least one emulsifier, at least one fatty alcohol, at least one solvent comprising water and optionally at least one humectant. The polyphenol may be tannic acid, the fatty alcohol may be present from about 0.01 to 10 wt%, or the solvent may comprise at least 50 wt% water and optionally at least one non-aqueous solvent up to 20 wt%.
The copending ‘580 claims (3) are drawn to compositions comprising tannic acid, at least one first gum chosen from carrageenans, at least one second gum chosen from celluloses, at least one humectant, optionally at least one buffer and at least one solvent comprising water. The tannic acid may be present from about 0.01 to 10 wt%, the total amount of the first or/and second gum(s) may be about 0.01 to 5 wt%, the solvent may comprise at least 50 wt% water, or the solvent may comprise less than 20 wt% of a non-aqueous solvent.
The conflicting, copending claims differ from the instant claims with respect to the resveratrol polyphenol, with respect to the starch polysaccharide, with respect to the cationic surfactants and amount thereof, with respect to the silicones and the amount thereof, and with respect to the cyclodextrin. However, these differences are obvious in view of Fack and Kadir because as elaborated supra it is known to the prior art in view of Fack to combine beneficial agents inclusive of fatty alcohols or/and antioxidants selected from polyphenols or/and cationic surfactants inclusive of behenyltrimethylammonium chloride or/and silicones inclusive of amodimethicone or/and chelating agents, each present in amounts overlapping the amounts as instantly claimed, in aqueous or aqueous / alcoholic media with polysaccharides inclusive of starch in order to provide cosmetic compositions for hair and skin. In view of Kadir it would have been obvious to one of ordinary skill to employ antioxidants inclusive of resveratrol and chelating agents inclusive of cyclodextrin because the selection of a known material based on its suitability for its intended purpose is prima facie obvious. See MPEP 2144.07.
The conflicting ‘580 claims also differ with respect to the fatty alcohols and to the solvent. However, these differences are obvious in view of Fack and Kadir because as elaborated supra it is known to the prior art in view of Fack to combine beneficial agents inclusive of fatty alcohols, in aqueous or aqueous / alcoholic media comprising for example about 80 wt% water with polysaccharides inclusive of starch in order to provide cosmetic compositions for hair and skin. In view of Kadir it would have been obvious to one of ordinary skill to employ the alcohol component of the media in amounts up to 20 wt% because this amount of organic solvents inclusive of ethanol (alcohol) is suitable for water-based hair care compositions.
The instant claims are therefore an obvious variant of the conflicting, copending claims in view of the prior art.
This is a provisional nonstatutory double patenting rejection.
Claims 41, 42, 44-47, 51-56 and 61 are directed to an invention not patentably distinct from claims 30-47 of commonly assigned 17/852,729 and from claims 33-50 of commonly assigned 17/853,128. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 17/852,729 and 17/853,128, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Arguments: Double Patenting
Applicant’s request at page 10 of the Remarks to hold the double patenting rejections in abeyance is acknowledged but is denied because rejections cannot be held in abeyance. See page 23 of the Final Rejection mailed January 31, 2024. Applicant is reminded 37 CFR 1.111 requires a response in order to be entitled to reconsideration or further examination. Because Applicant’s Remarks remain non-responsive to these rejections, the provisional non-statutory double patenting rejections are properly maintained and made again.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McCall (US 5,277,899) teaches hair setting compositions comprising a thickening system comprising a non-ionic long-chain alkylated water-soluble polymer and a specific cationic quaternary ammonium surfactant; the compositions may further comprise a silicone-containing polymer (title; abstract; claims).
Sun et al. (US 2018/0344619) teaches aqueous compositions for the treatment of hair optionally comprising tannins inclusive of tannic acid (title; abstract; claims; paragraphs [0192]-[0198]).
Sato et al. (WO 2017/195841, as evidenced by the Google translation) teaches gallic acid and gallic acid derivatives such as tannic acid as hair pigment enhancers when used in amounts from 0.01 to 20 wt% when in solution or 0.05 to 50 wt% when in the form of a gel or cream (title; abstract; claims; page 2, middle; page 6, 1st full paragraph).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600