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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, in the reply filed on January 9, 2026 is acknowledged. The traversal is on the ground(s) that there would not be an undue burden to search and examine all groups together. This is not found persuasive because the examiner still respectfully maintains that the three distinct inventions would require separate and distinct searches.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 9, 2026.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee, US 2021/0038527.
Lee, US 2021/0038527, discloses a lubricant comprising a ratio of raw materials of 42-76% of cyclopentasiloxane, 18-42% of dimethiconol and 6-16% of polydimethylsiloxane (i.e., dimethicone; see abstract and paragraph 14), per the requirements of the instant invention. Therefore, instant claims 1-2 and 5 are anticipated by Lee, US 2021/0038527.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann et al, EP 1,787,688.
Hoffmann et al, EP 1,787,688, discloses leave-in hair conditioning composition comprising 60-85% by weight of cyclopentasiloxane (see abstract and paragraphs 5-7) and 0.1-20% by weight of at least one further silicone compound, such as dimethicone and dimethiconol (see paragraph 9). Specifically, note Examples 1-4.
Although Hoffmann et al generally discloses a leave-in hair conditioning composition containing 60-85% by weight of cyclopentasiloxane and 0.1-20% by weight of at least one further silicone compound, such as dimethicone and dimethiconol, the reference does not require such leave-in hair conditioning compositions that contains 0.1-20% by weight of a mixture of dimethicone and dimethiconol with sufficient specificity to constitute anticipation.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have formulated a leave-in hair conditioning composition, as taught by Hoffmann et al, which contained 0.1-20% by weight of a mixture of dimethicone and dimethiconol, because such leave-in hair conditioning compositions fall within the scope of those taught by Hoffmann et al. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a leave-in hair conditioning composition containing 0.1-20% by weight of a mixture of dimethicone and dimethiconol is expressly suggested by the Hoffmann et al disclosure and therefore is an obvious formulation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
February 2, 2026
Prosecution Insights