DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 04/10/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Rejections - 35 USC § 103 (Maintained)
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 17-24, 26-28 and 31-36 are rejected under 35 U.S.C. 103 as being as being obvious over Cincotta et al. (US 2002/0155962 A1).
Regarding claims 17 and 36, Cincotta discloses an anhydrous (does not contain water [0031] [0033]), hair styling composition [abstract] which includes a first nonaqueous solvent, a second nonaqueous solvent, an antistatic agent, a humectant in an amount of 0.2-5 wt.%, and a viscosity controlling agent [0033]. Cincotta discloses the polyol, propylene glycol as a first nonaqueous solvent [0035], the monoalcohol, ethanol, as a second nonaqueous solvent [0036], the fatty amine, stearamidopropyl dimethylamine, as an antistatic agent [0048], the carboxylic acid, lactic acid, as a humectant [0043], and the fatty alcohol, cetyl alcohol, as a viscosity controlling agent [0041]-[0042]. Cincotta discloses that the compositions of the disclosure are clear mixtures [abstract] [0025]. The hair styling composition is applied to keratin fibers (hair) [abstract] [0024].
Cincotta is not believed to be anticipatory because Cincotta could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose propylene glycol as a first nonaqueous solvent [0035], the monoalcohol, ethanol, as a second nonaqueous solvent [0036], the fatty amine, stearamidopropyl dimethylamine, as an antistatic agent [0048], the carboxylic acid, lactic acid, as a humectant [0043], and the fatty alcohol, cetyl alcohol, as a viscosity controlling agent [0041]-[0042].
Nevertheless, claims 17 and 36 are rendered prima facie obvious over the teachings of Cincotta, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., polyols, monoalcohols comprising 2 to 6 carbon atoms, fatty amines, carboxylic acids comprising from 1 to 6 carbon atoms, and cetyl alcohol) were known in the prior art (e.g., Cincotta) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a composition for the hair) to one of ordinary skill in the art. MPEP 2143.A.
Regarding the limitation of “wherein the composition has a transmittance of at least 80%, measured at a wavelength of 600 nm”, a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art discloses that the compositions of the disclosure are clear mixtures [abstract] [0025] the properties the applicant discloses and/or claims (a transmittance of at least 80%, measured at a wavelength of 600 nm) are reasonably expected to be necessarily present.
Regarding the amounts of the individual components as recited in claims 17 and 36 (e.g., at least 0.1% by weight of one or more carboxylic acids), 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.
Claim 18 is rendered prima facie obvious because Cincotta discloses the polyol, propylene glycol as a first nonaqueous solvent [0035].
Claim 19 is rendered prima facie obvious because Cincotta discloses the first nonaqueous solvent (such as propylene glycol [0035]) is present in an amount of 40-97.5 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 20 is rendered prima facie obvious because Cincotta discloses the monoalcohol, ethanol, as a second nonaqueous solvent [0036].
Claim 21 is rendered prima facie obvious because Cincotta discloses the second nonaqueous solvent (such as ethanol, [0036]) is present in an amount of 0-40 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 22 is rendered prima facie obvious because Cincotta discloses the first nonaqueous solvent (such as propylene glycol [0035]) is present in an amount of 40-97.5 wt.% [0033] and the second nonaqueous solvent (such as ethanol [0036]) is present in an amount of 0-40 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed. Additionally, Cincotta teaches that the first nonaqueous solvent is capable of adding gloss to the hair and assisting in providing weight, flexibility and moisture retention to the hair [0035] and the second nonaqueous solvent is capable of controlling the viscosity and the dry-time of the hair composition [0036]. The ratio of the (i) polyols to the (ii) monoalcohols as claimed would be achieved by one of ordinary skill in the art through routine experimentation to achieve the desired properties (i.e., gloss, weight, flexibility, moisture retention, viscosity, dry-time) as taught by Cincotta [0035]-[0036]. See MPEP 2144.05(II)(A).
Claims 23-24 are rendered prima facie obvious because Cincotta discloses the fatty amidoamine, stearamidopropyl dimethylamine, as an antistatic agent [0048].
Claim 26 is rendered prima facie obvious because Cincotta discloses the antistatic agent (such as the fatty amine, stearamidopropyl dimethylamine [0048]) is present in an amount of 0.1-1 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 27 is rendered prima facie obvious because Cincotta discloses the carboxylic acid, lactic acid, as a humectant [0043].
Claim 28 is rendered prima facie obvious because Cincotta discloses the humectant (such as the carboxylic acid, lactic acid [0043]) is present in an amount of 0.2-5 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 31 is rendered prima facie obvious because Cincotta discloses the viscosity controlling agent (such as the fatty alcohol, cetyl alcohol [0041]-[0042]) is present in an amount of 0.1-1 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 32-33 are rendered prima facie obvious because Cincotta discloses the composition further includes an emollient, such as a triglyceride of plant origin, castor oil [0047], in an amount of 0.1-5 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 34 is rendered prima facie obvious because Cincotta discloses the first nonaqueous solvent (such as propylene glycol [0035]) is present in an amount of 40-97.5 wt.% [0033] and the second nonaqueous solvent (such as ethanol [0036]) is present in an amount of 0-40 wt.% [0033]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 35 is rendered prima facie obvious because Cincotta discloses the composition does not contain any water [abstract] [0031] [0033].
Claim 25 is rejected under 35 U.S.C. 103 as being as being obvious over Cincotta et al. (US 2002/0155962 A1) in view of Paul et al (WO 0247658 A2).
The 35 U.S.C. 103 rejection over Cincotta was previously discussed.
Cincotta does not disclose a tertiary fatty amine of formula (B), such as dimethyl stearamine, as recited in claim 25.
Paul discloses a composition for the hair (pg. 1, first paragraph) where the tertiary fatty amine, dimethyl stearamine, is disclosed as a cationic surfactant (pg. 30, first paragraph) which imparts low tackiness, ease of application and elegant feel to the composition (pg. 28, first paragraph).
Since Cincotta generally teaches a composition for the hair, it would have been prima facie obvious to one of ordinary skill in the art to include dimethyl stearamine, within the teachings of Cincotta, because Paul teaches dimethyl stearamine in a composition for the hair. An ordinarily skilled artisan would be motivated to use dimethyl stearamine because Paul teaches it as a cationic surfactant (pg. 30, first paragraph) which imparts low tackiness, ease of application and elegant feel to a composition (pg. 28, first paragraph).
Response to Arguments
Applicant’s arguments filed 04/10/2026 have been fully considered but are not persuasive.
Applicant argues at pg. 10-11 that the office has not identified any reason that would have prompted one of ordinary skill in the art to specifically combine the recited elements as claimed and that the rejection amounts to choosing from a vast, undifferentiated menu of optional ingredients. Applicant further argues that Cincotta provides no guidance for selecting the specific components recited in the claims from among the extensive lists spanning broad categories and combining them as claimed.
The Examiner disagrees and maintains that it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., polyols, monoalcohols comprising 2 to 6 carbon atoms, fatty amines, carboxylic acids comprising from 1 to 6 carbon atoms, and cetyl alcohol) were known in the prior art (e.g., Cincotta) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., a composition for the hair) to one of ordinary skill in the art. MPEP 2143.A.
Furthermore, patents are relevant as prior art for all that they contain and nonpreferred or alternative embodiments constitute prior art. See MPEP 2123. Therefore, although Cincotta has many teachings, the large number of teachings does not detract from teaching the claimed components (e.g., polyols, monoalcohols comprising 2 to 6 carbon atoms, fatty amines, carboxylic acids comprising from 1 to 6 carbon atoms, and cetyl alcohol) in a composition for the hair.
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 17-28 and 31-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,337,906 in view of Cincotta et al. (US 2002/0155962 A1).
Claims 17-28 and 31-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 11,723,849 in view of Cincotta et al. (US 2002/0155962 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for at least 0.1% by weight of one of more carboxylic acids comprising from 1 to 6 carbon atoms.
Cincotta discloses a composition for the hair [abstract] which includes the carboxylic acid, lactic acid, as a humectant [0043]. Cincotta discloses the humectant is present in an amount of 0.2-5 wt.% [0033] and aids the composition in holding or retaining moisture [0043].
It would have been prima facie obvious to one of ordinary skill in the art to include the carboxylic acid, lactic acid, as a humectant within the claims, as taught by Cincotta. The ordinarily skilled artisan would have been motivated to include lactic acid to aid the composition in holding or retaining moisture [0043].
The amounts of the individual components, as claimed, would be achieved by one of ordinary skill in the art through routine experimentation. See MPEP 2144.05(II)(A).
While the claims of U.S. Patent No. 11,337,906 or 11,723,849 do not recite “wherein the composition has a transmittance of at least 80%, measured at a wavelength of 600 nm” a chemical composition and its properties are inseparable (MPEP 2112.01 II.) and because the claims recite the composition is transparent (claim 1 in each case) the properties the applicant discloses and/or claims (a transmittance of at least 80%, measured at a wavelength of 600 nm) are reasonably expected to be necessarily present.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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