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 .
Status of the Claims
Cancelled: 3, 11
Examined Herein: 1, 7, 10, 12-20
Priority
Priority to PRO 63/290,070 filed on 12/16/2021 and PCT/US22/81152 filed on 12/8/2022 is
acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/24/2023, 5/16/2023, 8/3/2023, 5/31/2024, 9/4/2024, and 7/18/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejections
All rejections of claims 3 and 11 are hereby withdrawn; their cancellation moots the rejection.
The rejections of claims 1, 3, 7, and 10-20 under 35 U.S.C. 112(b) is hereby withdrawn in view of Applicant’s amendments to claim 1, which now recites that the composition comprises “30 wt. % to 90 wt.% water,” thereby rendering the rejection moot. [Remarks 8/1/2025, Page 5]
The rejection of claims 1, 3, 15, 17, 18 and 20 under 35 U.S.C. 103 over Johncock and Coupel is hereby withdrawn in view of Applicant’s amendments to claim 1, which now recites that the composition comprises a fatty alcohol and a conditioning oil, and Applicant’s persuasive arguments that Johncock and Coupel do not teach the limitations of claim 1, as amended. [Remarks 8/1/2025, Page 5-6]
The rejection of claims 1, 3, 7, and 20 under 35 U.S.C. 103 over Gujraty is hereby withdrawn in view of Applicant’s amendments to claim 1, which now recites that the composition comprises a fatty alcohol and a conditioning oil, and Applicant’s persuasive arguments that Gujraty alone does not teach the limitations of claim 1, as amended. [Remarks 8/1/2025, Page 5-6]
The rejection of claims 1, 3, 7, 11-14, and 20 under 35 U.S.C. 103 over Matsouka ('703) is hereby withdrawn in view of Applicant’s proper invocation of 35 U.S.C. 102(b)(2)(C), thereby disqualifying Matsouka ('703) as prior art. [Remarks 8/1/2025, Page 6]
The rejection of claims 1, 3, 7, and 20 under 35 U.S.C. 103 over Matsouka ('679) is hereby withdrawn in view of Applicant’s proper invocation of 35 U.S.C. 102(b)(2)(C), thereby disqualifying Matsouka ('679) as prior art. [Remarks 8/1/2025, Page 6]
The rejection of claims 1, 3, 7, 10, 16, and 20 under 35 U.S.C. 103 over Matsouka ('679) and George is hereby withdrawn in view of Applicant’s proper invocation of 35 U.S.C. 102(b)(2)(C), thereby disqualifying Matsouka ('679) as prior art. [Remarks 8/1/2025, Page 6]
The rejection of claims 1, 3, 7, 19 and 20 under 35 U.S.C. 103 over Matsouka ('679), Bolich, and Wilson is hereby withdrawn in view of Applicant’s proper invocation of 35 U.S.C. 102(b)(2)(C), thereby disqualifying Matsouka ('679) as prior art. [Remarks 8/1/2025, Page 6]
The rejection of claims 1, 3, 10-14, 16 and 20 on the ground of non-statutory obviousness-type double patenting over claims 1, 2, 4-6, 8, 11-15, 17 and 18 of co-pending Application No. 17/350,069, in view of Matsuoka (US 2021/0401703 A1) is hereby withdrawn in view of Applicant’s proper invocation of 35 U.S.C. 102(b)(2)(C), thereby disqualifying Matsouka ('703) as prior art. [Remarks 8/1/2025, Page 6]
Claim Rejections - 35 USC § 112
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 12, 13, and 14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 12, 13, and 14 recite the limitation “the hair conditioner composition of claim 11.” However, claim 11 is cancelled. Thus, claims 12-14 depend on a cancelled claim. Appropriate correction is required. Dependent claims fall therewith. For examination purposes, claims 12-14 are interpreted as dependent on claim 1.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7, 12, and 20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Ueyama (US 2016/0235641 A1, Published 8/18/2016).
With respect to claim 1 and 20, Ueyama discloses a composition comprising;
A gel structure comprising:
0.1% a first material, arginine, and
1.7% a second material, stearic acid;
wherein the weight ratio of the total amount of first material to the total amount of second material in the composition is about 1:17;
about 88% water;
a fatty alcohol, cetostearyl alcohol, and
a conditioning oil, benzoic acid alkyl ester (C12-15);
wherein the composition is free of silicones; and
wherein the composition has a pH of 5.8 to 8.5, thus meeting the limitations of claim 1 and 20. [Ueyama, 0100 & Page 17, Table 7]
With respect to claim 7, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01 In the instant case, Ueyama teaches the identical chemical structure of the composition of instant claim 1. Therefore, the properties, including the pH, claimed are necessarily present. As a result, the composition disclosed by Ueyama inherently has an HLB range of 8 to 38.
With respect to claim 12, Ueyama discloses the conditioning oil is benzoic acid alkyl ester (C12-15). benzoic acid alkyl ester (C12-15) is a non-silicone, thus meeting the limitations of claim 12.
Claims 1, 7, 12, 14, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Matsouka (WO 2022/005759 A1, Filed 6/17/2021)
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With respect to claim 1 and 20, Matsouka discloses a hair conditioner composition comprising;
A gel structure comprising:
0.22% a first material, arginine, and
2.17% a second material, stearic acid;
wherein the weight ratio of the total amount of first material to the total amount of second material in the composition is about 1:1;
about 90% water;
a fatty alcohol, cetyl alcohol, and
a conditioning oil, glyceryl caprylate;
wherein the composition is free of silicones; and
wherein the composition has a pH of 6.0, thus meeting the limitations of claim 1 and 20. [Matsouka, Page 5-6, Table 4, Inventive Example 1 and Page 13, Paragraph 1]
With respect to claim 7, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. MPEP 2112.01 In the instant case, Matsouka teaches the identical chemical structure of the composition of instant claim 1. Therefore, the properties, including the pH, claimed are necessarily present. As a result, the composition disclosed by Matsouka inherently has an HLB range of 8 to 38.
With respect to claim 12, Matsouka discloses the conditioning oil is glyceryl caprylate. Glyceryl caprylate is a non-silicone, thus meeting the limitations of claim 12.
With respect to claim 14, Matsouka discloses the conditioning oil is glyceryl caprylate. Glyceryl caprylate has an HLB of less than 10 (~6), thus meeting the limitations of claim 14.
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.
Claims 1, 7, 12-14, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsouka, as applied to claim 1, 7, 12, 14, and 20 above.
With respect to claim 1, Matsouka discloses the teachings above.
Matsouka does not disclose the conditioning oil is in preformed emulsion form with a particle size of 500 nm or less.
However, with respect to claim 12 and 13, Matsouka discloses the composition may comprise a conditioning oil, Plantasil Micro (dicaprylyl ether in emulsion form (Dicaprylyl Ether (and) Decyl Glucoside (and) Glyceryl Oleate)). [Matsouka, Page 21, Paragraph 1] Plantasil Micro is in preformed emulsion form with a particle size of less than 10-100 nm, is a non-silicone oil and has an HLB of less than 10.
Modifying the composition disclosed by Matsouka by adding a conditioning oil, Plantasil Micro, in preformed emulsion form with a particle size of 100 nm or less, results in the composition of claim 12 and 13.
It would be obvious to one of ordinary skill in the art to modify the composition disclosed by Matsouka by adding a conditioning oil, Plantasil Micro, in preformed emulsion form with a particle size of 100 nm or less, and have a reasonable expectation of success because Matsouka discloses a hair conditioning composition. Matsouka further discloses the composition may comprise one or more conditioning oils, including Plantasil Micro from BASF, which is commercially available, in pre-emulsion form with a particle size of less than 10-100 nm. In view of this express teaching by Matsouka, it is reasonable to expect the composition disclosed by Matsouka may be modified by adding a conditioning oil, Plantasil Micro, in preformed emulsion form with a particle size of 100 nm. One would have been motivated to do so because Plantasil Micro comprises glyceryl oleate, which contains a C18 alkyl chain. [Matsouka, Page 21, Paragraph 1] Matsouka discloses longer fatty acid chains may provide a coated dry conditioning feel without a greasy residue feel, especially for highly damaged hair. [Matsouka, Page 14, Paragraph 4] Therefore, one would have been motivated by the expectation that the aforementioned modification would provide a coated dry conditioning feel without a greasy residue feel, especially for highly damaged hair.
Claims 1, 7, 10, 12, 14, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsouka, as applied to claim 1, 7, 12, 14, and 20 above, in view of George (US 6,239,088 B1, Patent 5/29/2001).
With respect to claim 1, Matsouka discloses the teachings above.
Matsouka does not disclose the first material is canavanine or the second material is lauric acid.
However, with respect to claim 10 and 16, Matsouka discloses the arginine present in the aforementioned inventive example functions as the basic amino acid of the composition. However, Matsouka discloses the basic amino acid may include but is not limited to, arginine, lysine, histidine, and poly-amino acids. Matsouka also discloses the stearic acid present in the aforementioned inventive example functions as the fatty acid of the composition. However, Matsouka discloses the fatty acid may be a fatty acid having C10-C22 alkyl chains. [Page 14, Paragraph 1] Matsouka discloses the use of fatty acids having C12-C14 alkyl chains may improve the wet detangling of the hair conditioning composition, while maintaining a clean feel. [Page 14, Paragraph 2]
Furthermore, with respect to claim 1, 10, and 16, George discloses lysine, histidine, arginine, and canavanine are basic amino acids. [George, Col. 4, Line 1-11]
Modifying the composition disclosed by Matsouka by replacing arginine with canavanine and stearic acid with lauric acid (a fatty acid having a C12 alkyl chain), results in the composition of claim 1, 10, and 16.
It would be obvious to one of ordinary skill in the art to modify the composition disclosed by Matsouka by replacing arginine with canavanine and have a reasonable expectation of success because Matsouka discloses a composition comprising arginine, which functions as the basic amino acid of the composition. However, Matsouka discloses the basic amino acid may be selected from any basic amino acid including, but not limited to, arginine, lysine, histidine, and poly-amino acids. George discloses lysine, histidine, arginine, and canavanine are basic amino acids. So, Matsouka discloses a composition comprising a basic amino acid and George discloses canavanine is a basic amino acid. Thus, the combined teachings of Matsouka and George suggest canavanine may function as the basic amino acid in the composition disclosed by Matsouka. Therefore, it is reasonable to expect the composition disclosed by Matsouka may be modified by replacing arginine with canavanine. One would have been motivated to do so because the selection of a known material based on its suitability for its intended use is prima facie obvious. In the instant case, Matsouka discloses the composition may comprise any basic amino acid. George discloses canavanine is a basic amino acid. Therefore, the selection of a known material, canavanine, based on its suitability, as a basic amino acid, for its intended use, as a basic amino acid in the composition disclosed by Matsouka, is prima facie obvious.
It would be obvious to one of ordinary skill in the art to modify the composition disclosed by Matsouka by replacing stearic acid with lauric acid, and have a reasonable expectation of success because Matsouka discloses a composition comprising stearic acid, which functions as the fatty acid of the composition. However, Matsouka also discloses the fatty acid of the composition may be selected from any fatty acid having C10-C22 alkyl chains, like lauric acid which has a C12 alkyl chain. Matsouka further discloses the use of fatty acids having C12-C14 alkyl chains may improve the wet detangling of the hair conditioning composition, while maintaining a clean feel. So, Matsouka discloses a composition comprising stearic acid, a fatty acid having C16/C18 fatty acid chains but discloses any fatty acid having C10-C22 alkyl chains may function as the fatty acid. In view of this express teaching, it is reasonable to expect the composition disclosed by Matsouka may be modified by replacing stearic acid with lauric acid, which is a fatty acid having a C12 alkyl chain. One would have been motivated to do so because Matsouka discloses the use of fatty acids having C12-C14 alkyl chains, like lauric acid, may improve the wet detangling of the hair conditioning composition, while maintaining a clean feel. [Page 14, Paragraph 2]
Claims 1, 7, 12, 14, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsouka, as applied to claim 1, 7, 12, 14, and 20 above, and further in view of Smith (US 2020/0048580 A1, 2/13/2020).
With respect to claim 1, Matsouka discloses the teachings above.
Matsouka does not disclose the first material is DMAPA or the second material is lauric acid.
However, with respect to claim 19, Matsouka discloses the arginine present in the aforementioned inventive example functions as the base that enables the composition to achieve the gel structure. However, Matsouka discloses the base may include but is not limited to, di-amines that are not basic amino acids. [Matsouks, Page 13, Paragraph 2] Matsouka also discloses the stearic acid present in the aforementioned inventive example functions as the fatty acid of the composition. However, Matsouka discloses the fatty acid may be a fatty acid having C10-C22 alkyl chains. [Page 14, Paragraph 1] Matsouka discloses the use of fatty acids having C12-C14 alkyl chains may improve the wet detangling of the hair conditioning composition, while maintaining a clean feel. [Page 14, Paragraph 2]
Furthermore, Smith discloses diamines known in the art of surfactant compositions for cosmetic applications include dimethylaminopropylamine (DMAPA), diethylene triamine (DETA), triethylene tetramine (TETA), tetraethylene pentaamine (TEPA), and more. [Smith, 0046, 0093]
Modifying the composition disclosed by Matsouka by replacing arginine with DMAPA and stearic acid with lauric acid, results in the composition of claim 1 and 19.
It would be obvious to one of ordinary skill in the art to modify the composition disclosed by Matsouka by replacing arginine with DMAPA and have a reasonable expectation of success because Matsouka discloses a composition comprising arginine, which functions as a base that enables the composition to achieve the gel structure. However, Matsouka discloses the base may include but is not limited to, di-amines that are not basic amino acids. Smith discloses known diamines include DMAPA, DETA, TETA, TEPA, and more. So, Matsouka discloses a composition comprising a base that enables the composition to achieve the gel structure, wherein the base may be a diamine, and Smith discloses DMAPA is a diamine. Thus, the combined teachings of Matsouka and Smith suggest DMAPA may function as the base in the composition disclosed by Matsouka. Therefore, it is reasonable to expect the composition disclosed by Matsouka may be modified by replacing arginine with DMAPA. One would have been motivated to do so because the selection of a known material based on its suitability for its intended use is prima facie obvious. In the instant case, Matsouka discloses the composition comprises a base that enables the composition to achieve the gel structure and said base may be a diamine. Smith discloses DMAPA is a diamine. Therefore, the selection of a known material, DMAPA, based on its suitability, as a diamine, for its intended use, as a base that enables the composition disclosed by Matsouka to achieve the gel structure is prima facie obvious.
It would be obvious to one of ordinary skill in the art to modify the composition disclosed by Matsouka by replacing stearic acid with lauric acid, and have a reasonable expectation of success because Matsouka discloses a composition comprising stearic acid, which functions as the fatty acid of the composition. However, Matsouka also discloses the fatty acid of the composition may be selected from any fatty acid having C10-C22 alkyl chains, like lauric acid which has a C12 alkyl chain. Matsouka further discloses the use of fatty acids having C12-C14 alkyl chains may improve the wet detangling of the hair conditioning composition, while maintaining a clean feel. So, Matsouka discloses a composition comprising stearic acid, a fatty acid having C16/C18 fatty acid chains but discloses any fatty acid having C10-C22 alkyl chains may function as the fatty acid. In view of this express teaching, it is reasonable to expect the composition disclosed by Matsouka may be modified by replacing stearic acid with lauric acid, a fatty acid having a C12 alkyl chain. One would have been motivated to do so because Matsouka discloses the use of fatty acids having C12-C14 alkyl chains, like lauric acid, may improve the wet detangling of the hair conditioning composition, while maintaining a clean feel. [Page 14, Paragraph 2]
Claims 1, 12, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Johncock (US 2010/0183531 A1, Published 7/22/2010).
With respect to claim 1 and 20, Johncock discloses a sunscreen composition, Formulation 1, comprising;
2.10% a first material, lysine, and
2.00% a second material, glyceryl stearate (glyceryl monostearate);
wherein the weight ratio of the total amount of first material to the total amount of second material in the composition is about 1:1;
about 60% water;
a fatty alcohol, cetyl alcohol, and
a conditioning oil, isostearic acid;
wherein the composition is free of silicones; and
wherein the composition has a pH of 6.2. [Johncock, 0304 – Formulation 1, 0307]
With respect to claim 12, Johncock discloses the conditioning oil is isostearic acid. [Johncock, 0304] Isostearic acid is a non-silicone.
Also, with respect to claim 1 and 20, Johncock discloses a sunscreen composition, Formulation 3, comprising;
3.50% a first material, arginine, and
2.50% a second material, glyceryl stearate (glyceryl monostearate);
wherein the weight ratio of the total amount of first material to the total amount of second material in the composition is about 1.4:1;
about 69% water;
a fatty alcohol, cetearyl alcohol, and
a conditioning oil, tocopheryl acetate;
wherein the composition is free of silicones; and
wherein the composition has a pH of 6.0. [Johncock, 0313 - Formulation A]
Johncock discloses the composition further comprises 1.95% PEG-30 glyceryl stearate. [Johncock, 0313 - Formulation A]
With respect to claim 12, Johncock discloses the conditioning oil is tocopheryl acetate. [Johncock, 0313 - Formulation A] Tocopheryl acetate is a non-silicone.
Johncock does not explicitly disclose Formulation 1 or 3 is a hair conditioner or has a gel structure.
However, the body of instant claim 1 fully and intrinsically sets forth all of the limitations of the claimed invention. The preamble, which contains the limitation "a hair conditioner," does not limit the structure of the composition and merely states an intended us of the composition rather than any distinct definition of the claimed invention. Therefore, this limitation is of no significance to the claim construction. MPЕР 2111.02 Nonetheless, Johncock discloses the sunscreen composition is suitable for protecting skin and hair. [Johncock, 0029] Johncock further discloses the composition can be used in cosmetic formulations for treatment, care, and cleansing of the hair including hair conditioners. [Johncock 0145]
Furthermore, Johncock discloses Formulation 1 and 3 comprises Carbopol ETD 2050. [Johncock, 0304] Carbopol ETD 2050 is a rheology modifier used in gel systems; specifically, in clear gels and hydroalcoholic gels. Johncock additionally discloses Formulation 1 and 3 may be in gel form. [Johncock, 0145]
Modifying Formulation 1 and 3 disclosed by Johncock so that the compositions have a gel structure results in the composition of claim 1.
It would be obvious to one of ordinary skill in the art to modify Formulation 1 and 3 so that the composition has a gel structure and have a reasonable expectation of success because Johncock discloses two compositions, Formulation 1 and 3, both comprising Carbopol ETD 2050, which is a rheology modifier used in gel systems; specifically, in clear gels and hydroalcoholic gels. Johncock further discloses both compositions may be in gel form. Thus, due to the presence of Carbopol ETD 2050, Formulation 1 and 3 both reasonably have the ability to be formulated into a gel. Thus, it is reasonable to expect Formulation 1 and 3 may be modified so that the composition has a gel structure. One would have been motivated to do so form hydrogels, hydrodispersion gels, or oil gels with the cosmetic formulations disclosed by Johncock. [Johncock, 0145]
Claims 1, 12, 15, 17, 18, and 20 rejected under 35 U.S.C. 103 as being unpatentable over Johncock, as applied to claim 1, 12, and 20 above, and further in view of George.
With respect to claim 1, Johncock discloses the teachings regarding Formulation 3 above.
Johncock does not disclose the first material is histidine or lysine or the second material is glyceryl monooleate or sucrose distearate.
However, with respect to claim 1, 15, 17, and 18, Johncock discloses the arginine present in Formulation 3 functions as the basic amino acid of the composition. However, Johncock discloses the basic amino acid may be selected from arginine, lysine, histidine, and ornithine. [Johncock, 0026] Furthermore, Johncock discloses the PEG-30 glyceryl stearate present in Formulation 3 functions as a nonionic surfactant of the composition. However, Johncock discloses the nonionic surfactant may be selected from sucrose esters. [Johncock, 0198]
Furthermore, with respect to claim 1, 15, 17, and 18, George discloses sucrose esters known in the art of emulsion compositions include sucrose stearate, sucrose distearate, and sucrose
cocoate. George discloses sucrose ester emulsifiers are more advantageous than glyceryl esters and ethoxylated fatty acids because they are gentle cleansing components and mild emulsifiers. [George, Col. 6, Line 28]
Further modifying Formulation 3 disclosed by Johncock by replacing arginine with histidine and PEG-30 glyceryl stearate with sucrose distearate, results in the composition of claim 1, 15, and 17, wherein the weight ratio of the total amount of first material, histidine, to the total amount of second material, glyceryl stearate and sucrose disterate, is about 1:1.3.
Further modifying Formulation 3 disclosed by Johncock by replacing arginine with lysine and PEG-30 glyceryl stearate with sucrose distearate, results in the composition of claim 1, 15, and 18, wherein the weight ratio of the total amount of first material, lysine, to the total amount of second material, glyceryl stearate and sucrose distearate, is about 1:1.3.
It would be obvious to one of ordinary skill in the art to modify Formulation 3 by replacing arginine with histidine or lysine and have a reasonable expectation of success because Johncock discloses a composition comprising arginine, which functions as a basic amino acid. However, Johncock discloses the basic amino acid in the composition may be selected from arginine, lysine, histidine, or ornithine. Thus, Johncock discloses Formulation 3 comprising a basic amino acid, arginine, may instead comprise histidine or lysine as the basic amino acid. In view of this express teaching, it is reasonable to expect Formulation 3 may be modified by replacing arginine with histidine or lysine. One would have been motivated to do so because the selection of a known material based on its suitability for its intended use is prima facie obvious. In the instant case, Johncock discloses the amino acid in the composition may be selected from arginine, lysine, histidine, or ornithine. Therefore, the selection of a known material, histidine or lysine, based on its suitability, as a basic amino acid, for its intended use, as a basic amino acid in the composition disclosed by Johncock, is prima facie obvious.
It would be obvious to one of ordinary skill in the art to modify Formulation 3 by replacing PEG-30 glyceryl stearate with sucrose distearate and have a reasonable expectation of success because Johncock discloses a composition comprising PEG-30 glyceryl stearate, which functions as a nonionic surfactant of the composition. However, Johncock also discloses the nonionic surfactant may be selected from sucrose esters. George discloses sucrose esters known in the art of emulsion compositions include sucrose stearate, sucrose distearate, and sucrose cocoate. So, Johncock discloses Formulation 3 comprising PEG-30 glyceryl stearate, which functions as a nonionic surfactant, but discloses a sucrose ester may function as the nonionic surfactant, and George discloses sucrose distearate is a sucrose ester. Thus, the combined teachings of Johncock and George suggest sucrose distearate may function as a nonionic surfactant in the composition disclosed by Johncock. Therefore, it is reasonable to expect Formulation 3 may be modified by replacing PEG-30 glyceryl stearate with sucrose distearate. One would have been motivated to do so because it is prima facie obvious to combine references when some advantage or expected beneficial result would have been produced by their combination. In the instant case, George discloses sucrose ester emulsifiers are more advantageous than glyceryl esters and ethoxylated fatty acids because they are gentle cleansing components and mild emulsifiers. [George, Col. 6, Line 28] Therefore, one would have been motivated by the expectation that the aforementioned modification would yield a composition comprising gentle cleansing components and exhibit the effects of mild emulsifiers.
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.
Claim 1, 10, 12-14, and 16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-6, 8, 12-15, 17, and 18 of copending Application No. 17/350,069, in view of Matsouka.
Claim 1 of the instant application is drawn to a hair conditioner comprising;
A gel structure comprising:
a first material selected from canavanine, lysine, methylarginine, ornithine, ethanomidoylornithine, n-dimethylarginine, argininamide, and propyl arginine, or a combination thereof;
a second material selected from behenic acid, stearic acid, oleic acid, linoleic acid, palmitic acid, ricinoleic acid, and lauric acid;
wherein the ratio of the total amount of first material to the total amount of second material in the composition is 1:10 to 20:1;
30 to 90 wt.% water;
a fatty alcohol;
a conditioning oil;
wherein the composition is free of silicones; and
wherein the composition has a pH of 5 to 11.
Claim 1 of the reference application is drawn to a hair conditioner composition comprising:
A gel network matrix with an Lβ phase, comprising:
a) a basic amino acid;
b) a fatty acid;
c) a high melting point fatty alcohol; and
d) an aqueous carrier; and
wherein the gel network matrix is free of cationic surfactant, anionic surfactant and amphoteric surfactant.
Claim 12 of the reference application is drawn to the same composition as claim 1 of the reference application, but further comprises a conditioning oil.
Instant claim 1 differs from reference claim 1 in that instant claim 1 recites additional limitations that reference claim 1 does not. Said limitations are; the composition further comprises a conditioning oil, the ratio of the total amount of first material (basic amino acid) to the total amount of second material (fatty acid) in the composition is 1:10 to 20:1, the water/aqueous carrier is present in the composition in the amount of 30-90 wt.%, and the composition has a pH of 5 to 11.
Instant claim 1 differs from reference claim 12 in that instant claim 1 recites additional limitations that reference claim 12 does not. Said limitations are; the ratio of the total amount of first material (basic amino acid) to the total amount of second material (fatty acid) in the composition is 1:10 to 20:1, the water/aqueous carrier is present in the composition in the amount of 30-90 wt.%, and the composition has a pH of 5 to 11.
However, Matsouka ('703) discloses several hair conditioner compositions comprising;
A gel structure comprising;
A first material/basic amino acid, L-arginine, and
A second material/fatty acid, stearic acid;
wherein the weight ratio of the total amount of first material to the total amount of second material in the composition is about 1:10;
about 89% an aqueous carrier/water;
a fatty alcohol, stearyl alcohol, and
a conditioning oil, glyceryl caprylate,
wherein the compositions are free of silicones; and
wherein the compositions have a pH of 5.9 to 6.2. [Matsouka, Page 4-7, Table 2, Table 3, Table 4]
Matsouka additionally discloses the ratio of basic amino acid to the fatty acid is preferably from about 1:10 to about 20:1. [Matsouka, Page 15, Paragraph 3] Matsouka further discloses the compositions preferably comprises 30% to 95% water. [Matsouka, Page 17, Paragraph 2]
Modifying the composition of reference claim 1 so that the composition further comprises a conditioning oil, the aqueous carrier present in the amount of 30 to 90 wt.%, the ratio of the total amount of basic amino acid to the total amount of fatty acid in the composition is from 1:10 to 20:1, and the composition has a pH of 5.9 to 6.2, results in the composition of instant claim 1.
This modification to claim 1 of the reference application also reads on claim 3, 4, and 8 of the reference application. Therefore, in view of the prima facie case of obviousness presented below, instant claim 1 is drawn to the same limitations as reference claim 3, 4, and 8.
Claim 1 of the instant application is drawn to the same limitations as claim 5 of the reference application when the amount of water present is 60 to 90 wt. %.
Claim 1 of the instant application falls within the scope of claim 6 of the reference application when the first material is lysine, arginine, or histidine because these amino acids comprise more than two amine groups.
Claim 1 of the instant application is drawn to the same limitations as claim 17 of the reference application when the first material is lysine, arginine, or histidine.
Claim 1 of the instant application falls within the scope of claim 18 of the reference application when the second material is behenic acid, stearic acid, oleic acid, linoleic acid, palmitic acid, ricinoleic acid, or lauric acid because these fatty acids have a C22, C18, C18:1, C18:2, C16, C18:1, and C12 alkyl chain, respectively.
Claim 10 of the instant application falls within the scope of claim 1 of the reference application because canavanine is a basic amino acid.
Claim 10 of the instant application falls within the scope of claim 6 of the reference application because canavanine is a basic amino acid that comprises more than two amine groups.
Claim 16 of the instant application falls within the scope of claim 1 and 18 of the reference application because canavanine is a basic amino acid and lauric acid is a fatty acid that has a C12 alkyl chain.
Claim 16 of the instant application falls within the scope of claim 1 and 6 of the reference application because canavanine is a basic amino acid that comprises more than two amine groups and lauric acid is a fatty acid.
Modifying the composition of reference claim 12 so that the amount of aqueous carrier is present in the amount of 30% to 90%, the ratio of the total amount of basic amino acid to the total amount of fatty acid in the composition is from 1:10 to 20:1, and the composition has a
pH of 5.9 to 6.2, results in the composition of instant claim 1.
Accordingly, in view of the prima facie case of obviousness presented below, instant claim 12-14 is drawn to the same limitations as reference claim 13-15, respectively.
It would be obvious to one of ordinary skill in the art to modify the composition of reference claim 1 and 12 by adding a conditioning oil, adjusting the amount of aqueous carrier present to 30% to 90 wt.%, adjusting the ratio of the total amount of basic amino acid to the total amount of fatty acid in the composition from 1:10 to 20:1, and adjusting the pH of the composition in the range of 5.9-6.2, and have a reasonable expectation of success because the reference application discloses a composition comprising a basic amino acid, a fatty acid, a high melting point fatty alcohol, and an aqueous carrier, wherein these components form a lamellar gel network matrix with a Lẞ phase. Similarly, Matsouka discloses several hair conditioner compositions comprising a basic amino acid, a fatty acid, a fatty alcohol, an aqueous carrier and a conditioning oil, wherein these components form a lamellar gel network matrix with a Lẞ phase. Matsouka additionally discloses the composition has a pH from 5.9 to 6.2, the aqueous carrier is preferably present in an amount of 30% to 95%, the ratio of basic amino acid to the fatty acid is preferably from about 1:10 to about 20:1. In view of the structural similarities between reference composition and the composition disclosed by Matsouka, it is reasonable to expect the reference application may be modified as described above. One would have been motivated to do so because Matsouka discloses the aforementioned compositions, which contain these limitations, provide a good rheology profile, phase stability and hair conditioning benefits. [Matsouka, Page 2, Paragraph 6]
This is a provisional nonstatutory double patenting rejection.
Claim 1, 10, 12-14, and 16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-6, 8, 12-15, 17, and 18 of copending Application No. 19/220,397, in view of Matsouka.
Claim 1 of the instant application is drawn to a hair conditioner comprising;
A gel structure comprising:
a first material selected from canavanine, lysine, methylarginine, ornithine, ethanomidoylornithine, n-dimethylarginine, argininamide, and propyl arginine, or a combination thereof;
a second material selected from behenic acid, stearic acid, oleic acid, linoleic acid, palmitic acid, ricinoleic acid, and lauric acid;
wherein the ratio of the total amount of first material to the total amount of second material in the composition is 1:10 to 20:1;
30 to 90 wt.% water;
a fatty alcohol;
a conditioning oil;
wherein the composition is free of silicones; and
wherein the composition has a pH of 5 to 11.
Claim 1 of the reference application is drawn to a hair conditioner composition comprising:
a) a basic amino acid;
b) a fatty acid;
c) a high melting point fatty alcohol; and
d) an aqueous carrier; and
wherein a) through d) form a lamellar gel network matrix.
Claim 12 of the reference application is drawn to the same composition as claim 1 of the reference application, but further comprises a conditioning oil.
Instant claim 1 differs from reference claim 1 in that instant claim 1 recites additional limitations that reference claim 1 does not. Said limitations are; the composition further comprises a conditioning oil, the ratio of the total amount of first material (basic amino acid) to the total amount of second material (fatty acid) in the composition is 1:10 to 20:1, the water/aqueous carrier is present in the composition in the amount of 30-90 wt.%, and the composition has a pH of 5 to 11.
Instant claim 1 differs from reference claim 12 in that instant claim 1 recites additional limitations that reference claim 12 does not. Said limitations are; the ratio of the total amount of first material (basic amino acid) to the total amount of second material (fatty acid) in the composition is 1:10 to 20:1, the water/aqueous carrier is present in the composition in the amount of 30-90 wt.%, and the composition has a pH of 5 to 11.
However, Matsouka ('703) discloses several hair conditioner compositions comprising;
A gel structure comprising;
A first material/basic amino acid, L-arginine, and
A second material/fatty acid, stearic acid;
wherein the weight ratio of the total amount of first material to the total amount of second material in the composition is about 1:10;
about 89% an aqueous carrier/water;
a fatty alcohol, stearyl alcohol, and
a conditioning oil, glyceryl caprylate,
wherein the compositions are free of silicones; and
wherein the compositions have a pH of 5.9 to 6.2. [Matsouka, Page 4-7, Table 2, Table 3, Table 4]
Matsouka additionally discloses the ratio of basic amino acid to the fatty acid is preferably from about 1:10 to about 20:1. [Matsouka, Page 15, Paragraph 3] Matsouka further discloses the compositions preferably comprises 30% to 95% water. [Matsouka, Page 17, Paragraph 2]
Modifying the composition of reference claim 1 so that the composition further comprises a conditioning oil, the aqueous carrier present in the amount of 30 to 90 wt.%, the ratio of the total amount of basic amino acid to the total amount of fatty acid in the composition is from 1:10 to 20:1, and the composition has a pH of 5.9 to 6.2, results in the composition of instant claim 1.This modification to claim 1 of the reference application also reads on claim 3, 4, and 8 of the reference application. Therefore, in view of the prima facie case of obviousness presented below, instant claim 1 is drawn to the same limitations as reference claim 3, 4, and 8.
Claim 1 of the instant application is drawn to the same limitations as claim 5 of the reference application when the amount of water present is 60 to 90 wt. %.
Claim 1 of the instant application falls within the scope of claim 6 of the reference application when the first material is lysine, arginine, or histidine because these amino acids comprise more than two amine groups.
Claim 1 of the instant application is drawn to the same limitations as claim 17 of the reference application when the first material is lysine, arginine, or histidine.
Claim 1 of the instant application falls within the scope of claim 18 of the reference application when the second material is behenic acid, stearic acid, oleic acid, linoleic acid, palmitic acid, ricinoleic acid, or lauric acid because these fatty acids have a C22, C18, C18:1, C18:2, C16, C18:1, and C12 alkyl chain, respectively.
Claim 10 of the instant application falls within the scope of claim 1 of the reference application because canavanine is a basic amino acid.
Claim 10 of the instant application falls within the scope of claim 6 of the reference application because canavanine is a basic amino acid that comprises more than two amine groups.
Claim 16 of the instant application falls within the scope of claim 1 and 18 of the reference application because canavanine is a basic amino acid and lauric acid is a fatty acid that has a C12 alkyl chain.
Claim 16 of the instant application falls within the scope of claim 1 and 6 of the reference application because canavanine is a basic amino acid that comprises more than two amine groups and lauric acid is a fatty acid.
Modifying the composition of reference claim 12 so that the aqueous carrier present in the amount of 30 to 90 wt.%, the ratio of the total amount of basic amino acid to the total amount of fatty acid in the composition is from 1:10 to 20:1, and the composition has a pH of 5.9 to 6.2, results in the composition of instant claim 1.
Accordingly, in view of the prima facie case of obviousness presented below, instant claim 12-14 is drawn to the same limitations as reference claim 13-15, respectively.
It would be obvious to one of ordinary skill in the art to modify the composition of reference claim 1 and 12 by adding a conditioning oil, adjusting the amount of aqueous carrier present to 30% to 90 wt.%, adjusting the ratio of the total amount of basic amino acid to the total amount of fatty acid in the composition from 1:10 to 20:1, and adjusting the pH of the composition in the range of 5.9-6.2, and have a reasonable expectation of success because the reference application discloses a composition comprising a basic amino acid, a fatty acid, a high melting point fatty alcohol, and an aqueous carrier, wherein these components form a lamellar gel network matrix with a Lẞ phase. Similarly, Matsouka discloses several hair conditioner compositions comprising a basic amino acid, a fatty acid, a fatty alcohol, an aqueous carrier and a conditioning oil, wherein these components form a lamellar gel network matrix with a Lẞ phase. Matsouka additionally discloses the composition has a pH from 5.9 to 6.2, the aqueous carrier is preferably present in an amount of 30% to 95%, the ratio of basic amino acid to the fatty acid is preferably from about 1:10 to about 20:1. In view of the structural similarities between reference composition and the composition disclosed by Matsouka, it is reasonable to expect the reference application may be modified as described above. One would have been motivated to do so because Matsouka discloses the aforementioned compositions, which contain these limitations, provide a good rheology profile, phase stability and hair conditioning benefits. [Matsouka, Page 2, Paragraph 6]
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments filed 8/1/2025, with respect to the rejections of claims 1, 3, 7, 10-20 under 35 U.S.C 103 have been fully considered and are persuasive. Applicant’s arguments essentially state the prior art does not teach the instant claims as amended or the prior art does not qualify as prior art under 102(b)(2)(c) Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of the references cited above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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