DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 29, 2025 has been entered.
Status of Claims
Claims 33-52 are pending in this application. Claims 33-34 are amended.
Claims 51-52 are withdrawn as being drawn to a non-elected invention or species. Claim 41 is withdrawn as being directed to an unelected species (a second gum).
Claims 33-40 and 42-50 are examined on their merits in light of the elected species of carrageenan as the film former, microcrystalline cellulose as the gum, polyacrylamide as the emulsifier, cetearyl alcohol as the fatty alcohol and inulin as the humectant.
Information Disclosure Statement
The Information Disclosure Statements filed 1/5/2026 has been reviewed.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn or reversed as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC §112
In light of the amendments to the claims the rejection of claim 34 under 35 U.S.C. 112, fourth paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is withdrawn.
Rejections Maintained
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.
The rejection of claims 33-40 and 42-50 under 35 U.S.C. 103 as being unpatentable over Gupta US 2009/0042846 (2/12/2009) as evidenced by the specification is maintained.
Gupta teaches a composition that contain sugar esters of phytosterols which are useful for topical application and for the treatment of skin conditions including age spots, acne, loss of cellulose antioxidants, skin wrinkles. (See Abstract). The hair composition can also treat damage from UV, dandruff and hair or scalp conditioning. (See Abstract).
The composition comprises flavonoids which can act on the capillary circulation. (See [0168]). Flavonoids are called for in instant claim 35. Flavonoids are polyphenols as called for in instant claim 33. Active agents such as flavonoids can be present in an amount of 2%. (See [0200] Example 16). 2% falls within the from about 0.01 to about 10% called for in instant claim 34.
Tannic acid may be present as an ozone trapping agent. An ozone trapping agent is an excipient and excipients can be present in an amount of from about 0.5 to 40 wt% in the composition. (See [0102]). Tannic acid is called for in instant claim 36. (See [0163]). Tannic acid is a polyphenol as called for in claim 33. 0.5 to 40 wt% overlaps with the from about 0.1 to about 10% called for in instant claim 33. 0.5 to 40 wt% also overlaps with the from about 0.5 to about 5% called for in instant claim 34. 0.5 to 40 wt% also overlaps with the from about 1 to about 7% called for in instant claim 42.
Polyacrylamide may be present as an emulsifier and a fixative polymer. (See [0131] and [0122-123]). An emulsifier is called for in instant claims 33 and 49-50. Emulsifiers are excipients, and excipients can be present in an amount of from about 0.5 to 40 wt% in the composition. (See [0102]). Emulsifiers are called for in instant claim 33 and 49-50. 0.5 to 40 wt% also overlaps with the from about 0.01 to about 5% emulsifier called for in instant claim 44.
The composition can comprise 79.5% water. (See Example 3). 79.5% falls within the range of at least 50% water called for in claims 48-49. 79.5% falls within the range of at least 60% water called for in claim 50.
Carrageenan can be present as a tensioning agent in the composition. (See [0160]). Carrageenan is called for in claims 38, 40, 42, and 49-50. Carrageenan is a film former as called for in instant claim 33. Carrageenan is an excipient and excipients can be present in an amount of from about 0.5 to 40 wt% in the composition. (See [0102]). 0.5 to 40 wt% overlaps with from about 0.1% to about 1% called for in claim 50. 0.5 to 40 wt% also overlaps with from about 0.1% to about 3% called for in claim 33. 0.5 to 40 wt% also overlaps with from about 0.1% to about 1% called for in claim 37.
Cetearyl alcohol is also taught to be a suitable additive in the composition. (See Example 3 [0187]). Cetearyl alcohol is a fatty alcohol called for in instant claim 33, 46, 49 and 50. Cetearyl alcohol is a mixture of cetyl alcohol (16 carbon chain fatty alcohol) and stearyl alcohol (18 carbon chain fatty alcohol). A 16 carbon chain fatty alcohol and 18 carbon chain fatty alcohol mixture reads on a strain chain fatty alcohol having from 8 to 30 carbon atoms called for in claim 45. (16 and 18 both fall within the 8 to 30 carbon atom range). Cetearyl alcohol is present in an amount of 5.0% or less. (See [0187]). 5.0% or less falls within the from about 0.01% to about 10% called for in claim 46. 5.0% or less also overlaps with the from about 1% to about 5% called for in claim 50. Fatty alcohols are taught to be desirable and suitable additives in the composition.
Microcrystalline cellulose (MCC) is taught as a suitable rheology modifier for the composition. (See [0111]). MCC is called for in claim 43, and 49-50. MCC is a gum as called for in claim 33, 39 and 40. Rheology modifiers such as MCC can be present in an amount of from 0.01 -12%. (See [0111]). 0.01%-12% overlaps with the from about 0.2% to about 2% called for in instant claim 39 and the from about 0.1% to about 2% called for in claim 50. Inulin is a saccharide that is taught to be a desirable excipient for the composition of Gupta. (See [0088-0089]). Inulin is called for in instant claim 47.
It would have been prima facie obvious for one of ordinary skill in the art making the Gupta hair cosmetic before the earliest effective filing date of the invention to combine 0.01 to 12% MCC in order to have a rheology modifier, 3% flavonoids in order to have active agents that affects capillary action, 2% tannic acid in order to have an ozone trapping agent, 5% cetearyl alcohol in order to have a suitable additive, polyacrylamide in order to have a suitable fixative polymer and inulin in order to have a desirable saccharide for the composition with 79.5% water and an emulsifier as well as sugar esters of phytosterols taught by Gupta in order to have a hair composition that can treat damage from UV, dandruff and hair or scalp conditioning as taught by Gupta.
With respect to claim 33’s property of effective to style hair, Gupta is silent as to this property. Gupta, however, teaches all of the claimed components in the claimed amounts (at the overlap of the ranges). Gupta teaches a composition that has 0.01 to 12% MCC, 3% flavonoids, 2% tannic acid, 5% cetearyl alcohol, polyacrylamide, inulin, 79.5% water, an emulsifier and sugar esters of phytosterols. A composition having the claimed amounts of the claimed components will be effective to straighten hair (which is styling since styling is defined to include shaping and straightening at [0098]) as evidenced by the instant specification at [0125].
Since Gupta teaches all of the claimed components in the claimed amounts (at the overlap of the ranges). Gupta teaches a composition that has 0.01 to 12% MCC, 3% flavonoids, 2% tannic acid, 5% cetearyl alcohol, polyacrylamide, inulin, 79.5% water, an emulsifier and sugar esters of phytosterols, the properties of effectiveness to straighten hair would be the natural result of the prior art elements. Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements. Therefore, the properties of being effective to straighten hair would necessarily follow as evidenced by the instant specification at [0125].
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The provisional rejection of claims 33-40, 42-50 on the ground of nonstatutory double patenting as being unpatentable over claims 28-40 of US Patent Application No. 17/853580 in view of Gupta US 2009/0042846 (2/12/2009) is maintained.
The instant claims are directed to a hair styling cosmetic composition comprising polyphenol of flavonoids and tannic acid, a carrageenan film former, a MCC gum, a polyacrylamide emulsifier, a cetearyl alcohol fatty alcohol and an inulin humectant and greater than 60% water.
The claims of US Patent Application No. 17/853580 teach a hair styling cosmetic composition comprising flavonoid and tannic acid polyphenols, a carrageenan gum, a second gum, an inulin humectant and at least 50% water. US Patent Application No. 17/853580 differs from the instant application in that it does not teach MCC, cetearyl alcohol, or polyacrylamide. These deficiencies are made up for with the teachings of Gupta.
The teachings of Gupta are described supra. It would be prima facie obvious for one of ordinary skill in the art making the hair cosmetic of US Patent Application No. 17/853580 to add 0.01 to 12% MCC in order to have a rheology modifier, 5% cetearyl alcohol in order to have a suitable additive, polyacrylamide as well as sugar esters of phytosterols taught by Gupta in order to have a suitable emulsifier and fixative polymer to form a hair cosmetic composition that can treat damage from UV, dandruff and hair or scalp conditioning as taught by Gupta.
This is a provisional rejection because the claims have not yet been patented.
Claims 33-40 and 42-50 are directed to an invention not patentably distinct from claims 28-40 of commonly assigned U.S. Patent Appn. No. 17/853580. 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 commonly assigned U.S. Patent Appn. No. 17/853580, discussed above, would be prior art to the noted claims under 35 U.S.C. 102(a)(2) if the patentably indistinct inventions were not commonly owned or deemed to be commonly owned as of 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 as of 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.
The provisional rejection of claims 33-40, 42-50 on the ground of nonstatutory double patenting as being unpatentable over claims 30-47 of US Patent Application No. 17/852729 in view of Gupta US 2009/0042846 (2/12/2009) is maintained.
The instant claims are directed to a hair styling cosmetic composition comprising polyphenol of flavonoids and tannic acid, a carrageenan film former, a MCC gum, a polyacrylamide emulsifier, a cetearyl alcohol fatty alcohol and an inulin humectant and greater than 60% water.
The claims of US Patent Application No. 17/852729 teach a hair styling cosmetic composition comprising flavonoid and tannic acid polyphenols, a carrageenan gum, cetearyl alcohol, carrageenan, an emulsifier, an inulin humectant and at least 50% water. US Patent Application No. 17/853580 differs from the instant application in that it does not teach MCC or polyacrylamide. These deficiencies are made up for with the teachings of Gupta.
The teachings of Gupta are described supra. It would be prima facie obvious for one of ordinary skill in the art making the hair cosmetic of US Patent Application No. 17/852729 to add 0.01 to 12% MCC in order to have a rheology modifier, polyacrylamide as well as sugar esters of phytosterols taught by Gupta in order to have a suitable emulsifier and fixative polymer to form a hair cosmetic composition that can treat damage from UV, dandruff and hair or scalp conditioning as taught by Gupta.
This is a provisional rejection because the claims have not yet been patented.
Response to Arguments
Applicants comments of November 20, 2025 have been considered carefully. Applicants note the amendments to the claims and where support can be found for the amendments in the originally filed claims. Applicants note the amendments to claim 34 to remedy the indefiniteness of the claim and the indefiniteness rejection is withdrawn above.
Applicants assert that the instant claims are patentable over Gupta because the Office has followed an improper pick and choose approach to Gupta. Specifically, Gupta provides no teaching or suggestion regarding the quantity of flavonoids one of ordinary skill in the art should employ, even though it discloses preferred amounts for many other additive classes including antioxidants. The Office Actions attempt to draw a flavonoid concentration from unrelated examples and additive categories in Gupta is unsupported.
Applicants also take issue with the use of the amounts of tannic acid as an excipient for tannic acid. Gupta provides no teaching or suggestion regarding the quantity of the ozone trapping agent one of ordinary skill in the art should employ, even though it discloses preferred amounts for many other additive classes including antioxidants.
Applicants further argue that Gupta does not teach the identical chemical structure required by in re Spada because all compositions described in Gupta require an active agent that is a sugar ester of a phytosterol compound which is absent from the instant claims. Additionally, Gupta is silent regarding composition that comprise specific ranges for flavonoids in general and tannic acid in particular.
Applicants request the obviousness-type double patenting rejections be held in abeyance.
Applicants’ arguments have been carefully considered and are found to be unpersuasive. Applicants’ argument that Gupta is silent regarding compositions that comprise specific ranges for flavonoids in general and tannic acid in particular is unpersuasive. As Applicants themselves say, Gupta discloses preferred amounts for many other additives including antioxidants. By Applicants own characterization, the additional components are additives and are relevant to the use of another additive, such as tannic acid. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP Sec. 2144.05. Applicants have not asserted that the amount of tannic acid is critical and there are many amount ranges of other additives that encompass the claimed amount of tannic acid.
Applicants’ argument that Gupta does not teach the identical chemical structure required by in re Spada because all compositions described in Gupta require an active agent that is a sugar ester of a phytosterol compound which is absent from the instant claims is not found to be persuasive because the claims are drafted with the open ended transitional phrase of “comprising” which indicates that other components may be present and still fall within the scope of the claim.
Since Gupta teaches all of the claimed components in the claimed amounts (at the overlap of the ranges). Gupta teaches a composition that has 0.01 to 12% MCC, 3% flavonoids, 2% tannic acid, 5% cetearyl alcohol, polyacrylamide, inulin, 79.5% water, an emulsifier and sugar esters of phytosterols, the properties of effectiveness to straighten hair would be the natural result of the prior art elements. Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements. Therefore, the properties of being effective to straighten hair would necessarily follow as evidenced by the instant specification at [0125]. Straightening is styling since styling is defined to include shaping and straightening at [0098] of the instant specification.
Specifically, as described in the rejection above, it would have been prima facie obvious for one of ordinary skill in the art making the Gupta hair cosmetic before the earliest effective filing date of the invention to combine 0.01 to 12% MCC in order to have a rheology modifier, 3% flavonoids in order to have active agents that affects capillary action, 2% tannic acid in order to have an ozone trapping agent, 5% cetearyl alcohol in order to have a suitable additive, polyacrylamide in order to have a suitable fixative polymer and inulin in order to have a desirable saccharide for the composition with 79.5% water and an emulsifier as well as sugar esters of phytosterols taught by Gupta in order to have a hair composition that can treat damage from UV, dandruff and hair or scalp conditioning as taught by Gupta.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Applicants request to hold the double patenting rejection in abeyance until there is an indication of allowability of claims is noted, however, Applicant is reminded that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the double patenting rejection is maintained for reasons of record as no action regarding this rejection has been taken by applicants at this time.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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/SARAH CHICKOS/
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619