DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 05 May 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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
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 16-24, 26, and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Gawtrey et al. (US Patent Application Publication 2007/0154441) in view of Bermudez Agudelo et al. (US Patent Application Publication 2017/0273891).
Gawtrey et al. discloses cosmetic compositions comprising an amino silicone and at least one conditioner (abstract). The amino silicone has a total degree of polymerization between 1 and 1000 (claim 38). And thus this amino silicone reads upon the instantly recited element (b). And the cosmetic compositions were exemplified for use on hair (such as rinse-out conditioners (examples 2-4).
Gawtrey et al. does not disclose the inclusion of oligomeric element (a) as recited by independent instant claim 16.
Bermudez Agudelo et al. discloses cosmetic compositions for hair which comprises a copolymer composed of hydrogenated castor oil and an n-alkyl dicarboxylic acid with 4 to 10 carbon atoms (abstract). A preferred example copolymer is the oligoester of hydrogenated castor oil and sebacic acid (paragraph [22]), which is known for the use of repairing the cuticle layer in hair care products (paragraphs [7 & 22]). This ingredient is useful in from 0.1 to 2 wt% of the cosmetic (paragraph [23]). And this ingredient reads upon instantly recited oligomeric element (a).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have added the oligoester of hydrogenated castor oil and sebacic acid taught by Bermudez Agudelo et al. into the hair cosmetic taught by Gawtrey et al. Doing so would provide the additional benefit of repairing the cuticle layer, which would motivate one of ordinary skill in the art to include it in the hair cosmetic.
Instant claims 18-20 recite further limitations to the oligomer element (a) and the oligoester of hydrogenated castor oil and sebacic acid taught by Bermudez Agudelo et al. reads upon these limitations.
Instant claim 21 further limits the amount of the amino silicone, and Gawtrey et al. suggests including it in from 1.5 wt% (examples).
Instant claims 22-24 recite the further inclusion of an additional silicone. Gawtrey et al. suggests at least one amino silicone of either formula (I) or formula (II). Choosing both (which is suggested by the language “at least one”) would thus read upon these limitations.
Instant claim 26 recites the further inclusion of water, which is present in the compositions disclosed by Gawtrey et al. (see examples).
Instant claim 28 recites the further inclusion of a cationic surfactant, and Gawtrey et al. suggests such an additional ingredient (paragraph [348]).
Instant claim 29 further limits the form of the composition, and the rinse-out compositions exemplified by Gawtrey et al. read upon this limitation.
Claims 25, 27, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Gawtrey et al. (US Patent Application Publication 2007/0154441) and Bermudez Agudelo et al. (US Patent Application Publication 2017/0273891) as applied to claim 16 above, and further in view of Lebre et al. (US Patent Application Publication 2006/0165640).
Instant claim 25 recites the further inclusion of an ester of a polyol and of a fatty diacid dimer. Instant claim 27 recites the further inclusion of a fatty alcohol And instant claim 30 recites both. Gawtrey et al. does not suggest the inclusion of these ingredients, though the inclusion of oils is suggested (abstract).
Lebre et al. discloses cosmetic compositions (abstract), and oils useful therein (paragraph [183]). These include diol dimer esters such as the one sold under the trade name Lusplan DD-DA5 (paragraph [208]) and fatty alcohols (paragraph [186]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have added the oils taught by Lebre et al. into the cosmetic formulation disclosed by Gawtrey et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition (such as the fatty alcohol and diol dimer esters), based on its recognized suitability for its intended use (as an oil for hair care). See MPEP 2144.07.
Response to Arguments
The Applicant argues that the rejections are not proper. The Applicant states that references teach the oligomer solely for cuticle repair, and not for reducing heaviness of hair. Further, the evidence in the declaration concurrently filed under 37 CFR 1.132 as well as the specification shows that the claimed invention (combining the oligomer and aminosilicone) provides for the unexpected benefit of reducing heaviness.
The Examiner acknowledges the arguments presented, but does not consider them persuasive. With respect to the heaviness, this is a property not recited by the claimed invention, and thus the rejection can be proper regardless of whether this feature is disclosed.
As for unexpected results, the Examiner acknowledges the evidence presented, and agrees that the evidence does show an effect on heaviness of hair, and this beneficial effect is unexpected.
However, once unexpectedness has been established, the probative value of the evidence as compared to the invention as claimed must be determined, i.e., claims must be “commensurate in scope” with the showing. See MPEP 716.02(d). In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range or whether or not there is adequate basis for reasonably concluding that the number and variety of species included by the claims would behave in the same manner as those tested.
The evidence in both the specification and the declaration show that the combination of the oligomer hydrogenated castor oil/sebacic acid copolymer and the amino silicone sold under the trade name Belsil ADM 4000 E (example 1) has improved heaviness as compared to compositions with just the oligomer (comparative examples 1 and 2) and with just the amino silicone (comparative example 4). However, with respect to the scope of the claim, for example the claims are not so limited. There are many amino silicones within the scope of the instantly recited (structures A-L in the instant specification), and only one amino silicone with one specific structure was evaluated. It is unclear whether the unexpected effect would be present for other amino silicones.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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