DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed October 20, 2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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.
Claims 40-50 and 52-58 are rejected under 35 U.S.C. 103 as being as being obvious over Brice et al. (US 2018/0271759 A1).
Regarding claims 40 and 49, Brice discloses a hair treatment composition [Abstract] with a surfactant, such as cocamidopropyl betaine, in an amount of 0.5-8 wt.% [0095]-[0097] and a suspending agent, such as the anionic polysaccharide, xanthan gum, in an amount of 0.1-10 wt.% [0118]-[0121]. The composition also includes a solvent such as water [0079][0152][0176].
Brice is not believed to be anticipatory because Brice 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 both cocamidopropyl betaine and xanthan gum to formulate the composition.
Nevertheless, claims 40 and 49 are rendered prima facie obvious over the teachings of Brice, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., cocamidopropyl betaine, xanthan gum, and water) were known in the prior art (e.g., Brice) 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 yielded nothing more than predictable results (e.g., a composition for the hair) to one of ordinary skill in the art. MPEP 2143.A.
The instant claim 40 recites, from about 0.01% to about 10% of at least one compound chosen from betaines, salts thereof, or mixtures thereof and from about 0.01% to about 10% of at least one polysaccharide.
The instant claim 49 recites, from about 0.1 % to about 5% of at least one compound chosen from betaines, salts thereof, or mixtures thereof and from about 0.1 % to about 5% of at least one anionic polysaccharide.
Brice taught cocamidopropyl betaine in an amount of 0.5-8 wt.% and the anionic polysaccharide, xanthan gum, in an amount of 0.1-10 wt.%. 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.
Further regarding claim 49, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general conditions of cocamidopropyl betaine in an amount of 0.5-8 wt.% and the anionic polysaccharide, xanthan gum, in an amount of 0.1-10 wt.% are known in the art, and as such, it would not have been inventive for the skilled artisan to have discovered the optimum weight ratio, as recited in claim 49, via routine experimentation.
Claims 41 and 53 are rendered prima facie obvious because Brice discloses a surfactant, such as cocamidopropyl betaine, in an amount of 0.5-8 wt.% [0095]-[0097] and a suspending agent, such as the anionic polysaccharide, xanthan gum, in an amount of 0.1-10 wt.% [0118]-[0121]. The weight ratio, as recited in claims 41 and 53, could be achieved by one of ordinary skill in the art through routine optimization, as previously discussed.
Claim 42 and 50 rendered prima facie obvious because Brice discloses cocamidopropyl betaine [0095]-[0097].
Claim 43 is rendered prima facie obvious because Brice discloses the anionic polysaccharide, xanthan gum [0118]-[0121].
Claims 44 and 54 are rendered prima facie obvious because Brice discloses the pH of the composition is from 3-6.5 [Abstract].
The instant claims 44 and 54 recite, the pH of the composition is less than about 8.
Brice taught a pH of the composition from 3-6.5. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claims 45 and 55 are rendered prima facie obvious because Brice discloses the composition includes pH adjusting agents [0163].
Claims 46-48 and 56-58 are rendered prima facie obvious because Brice discloses the composition includes a lactone, such as the delta lactone, gluconolactone, in an amount of 0.02 to 20 wt.%. [0056]-[0058].
The instant claims 48 and 58 recite, from about 0.05% to about 10% of gluconolactone.
Brice taught gluconolactone in an amount of 0.02 to 20 wt.%. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 52 is rendered prima facie obvious because Brice discloses a suspending agent, such as xanthan gum, in an amount of 0.1-10 wt.% [0118]-[0121].
The instant claim 52 recites, xanthan gum in an amount ranging from about 0.1% to about 5% by weight.
Brice taught xanthan gum in an amount of 0.1-10 wt.%. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive.
Applicant argues that although Brice mentions xanthan gum, it is disclosed as one example and while Brice mentions cocamidopropyl betaine, it is not a component essential to Brice’s hair treatment compositions and there is nothing in Brice to make the specific modifications (i.e., combining the polysaccharide and betaine at the claimed ratio) to arrive at the instantly claimed invention.
The Examiner disagrees. Patents are relevant as prior art for all that they contain and nonpreferred or alternative embodiments constitute prior art. See MPEP 2123. Therefore, although Brice has many teachings, the large number of teachings does not detract from teaching the claimed components (xanthan gum and cocamidopropyl betaine) in the composition in amounts that overlap with the claimed range. It is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., cocamidopropyl betaine, xanthan gum, and water) were known in the prior art (e.g., Brice) 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.
Analysis of Alleged Unexpected Results
Applicant argues at pg. 8, bottom that the as-filed examples demonstrate that the hair styling compositions according to the present application comprising betaines and polysaccharides in the claimed amount surprisingly provide better length retention, curl definition, and frizz control to curly hair then the treatment compositions not comprising this combination of components. The Examiner is directed to Examples 1-6 of the as-filed application.
The Examiner has fully reviewed and considered Examples 1-6 of the as-filed specification. Examples 1 and 3 show a comparison between compositions comprising xanthan gum and trimethyl glycine compared to compositions which contain only xanthan gum, trimethylglycine, or neither (only water). The results demonstrate that the xanthan gum in combination with trimethylglycine provides elongation, curl definition, and frizz control to the hair under normal [00123]-[00124] and high humidity conditions [00131]-[00132]. Example 2 shows compositions of 0.75 wt.% xanthan gum and 0.5 wt.% trimethyl glycine at varying pH vales (3.4, 4.0, 5.0, 6.1, and 7.1). The elongation, curl definition, and frizz control was seen across each of the pH values tested. In Example 4, compositions are prepared with xanthan gum and various betaines (trimethyl glycine, cocamidopropyl hydroxysultaine, cocamidopropyl betaine, and behenyl betaine) each of which provided better elongation, curl definition, and frizz control than the comparative compositions [00133]-[00136]. In Example 5, compositions are prepared with trimethyl glycine and various polysaccharides (xanthan gum, carrageenan, guar hydroxylpropyltrimonium, hydroxyethyl cellulose, and carbomer) each of which provided better elongation, curl definition, and frizz control than the comparative compositions [00137]-[00140]. In Example 6, the benefits were also seen when the compositions were prepared as serums [00141]-[00143].
However, it does not appear that these results are actually unexpected over the prior art. While Brice does not disclose that xanthan gum and betaines provide elongation, curl definition, and frizz control, the beneficial properties of xanthan gum and betaines in hair styling compositions are known in the art. Cao et al. (US 9,072,683 B2) discloses xanthan gum as a fixative in hair treatment compositions and that xanthan gum is advantageous in that it provides excellent anti-static, feel, and high humidity curl retention properties [abstract]. Tsuchiya (JP 2005/343831 A) discloses that glycine betaine is used to shape and straighten hair (English translation, abstract; pg. 2, paragraph 5). Therefore, these properties of the combination of xanthan gum and betaines (elongation, curl definition, and frizz control) do not appear to be unexpected over what is known in the art.
Finally, assuming purely arguendo that unexpected results have been established, (the Examiner does not believe at this time that they have), the claims would still not be “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has allegedly demonstrated “better length retention, curl definition, and frizz control”, but even if this is so then it would only have been shown for with the specific combination and amounts of particular betaines, polysaccharides and solvents. It is unclear that a comparative composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing other “betaines, salts therefore, or mixtures thereof”, other “polysaccharides” or other “solvents” (i.e., different than water used in the working examples), and in differing amounts, falling within the broader scope currently claimed.
Claim 51 is rejected under 35 U.S.C. 103 as being as being obvious over Brice et al. (US 2018/0271759 A1) in view of Jutila (US 2011/0196036 A1).
The 35 U.S.C. 103 rejection over Brice was previously discussed.
Brice does not disclose the composition comprises trimethylglycine in an amount ranging from about 0.3% to about 3% by weight, as recited in claim 51.
Jutila discloses betaine (synonym for trimethylglycine, [0013]) in a cosmetic preparation for the hair and scalp, in an amount of 0.1 to 20% by weight [0023]-[0025]. Jutila discloses that betaine protects the scalp from biological irritation [0007]-[0008] and prevents the symptoms of irritation, such as itching, stinging and/or burning [0017].
Since Brice generally teaches a composition for the hair, it would have been prima facie obvious to one of ordinary skill in the art to include betaine, in an amount of 0.1 to 20% by weight, within the teachings of Brice, because Jutila teaches this amount of betaine in a cosmetic preparation for the hair to protect the scalp from biological irritation. An ordinarily skilled artisan would be motivated to use betaine to protect the scalp from biological irritation and prevent symptoms of irritation, such as itching, stinging and/or burning [0007]-[0008] [0017].
The instant claim 51 recites, trimethylglycine in an amount ranging from about 0.3% to about 3% by weight.
Jutila taught trimethylglycine in an amount of 0.1 to 20% by weight. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive.
Applicant argues at pg. 11-12 that Jutila does not cure the deficiencies of Brice as “neither Brice nor Jutila recognizes the surprising and unexpected benefits of the claimed combination of betaines and polysaccharides in the claimed amounts”.
The Examiner disagrees because Brice is not deficient expect where Jutila teaches trimethylglycine in an amount of 0.1 to 20% by weight. In regards to the applicants’ allegations of “surprising and unexpected benefits” see “analysis of alleged unexpected results” section above.
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 40-58 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-13, 15-23, 25-31, and 33-34 of U.S. Patent Application 16/204,591.
Although the claims at issue are not identical, they are not patentably distinct from each other because the species (composition) recited in the claims of the copending application falls within the genus (composition) recited in the claims of the instant application, and thus read on the instant claims. The copending claims recite all of the features instantly recited for the composition including betaines, anionic polysaccharides, such as xanthan gum, and a solvent (water). The amounts and ratios of the components, as recited in the instant claims, could be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Claims 40-58 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,364,190 B2 in view of Brice et al. (US 2018/0271759 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claim of the U.S. patent recites all of the features instantly recited for the composition except for a solvent.
Brice discloses a hair treatment composition [Abstract] which includes a solvent such as water [0079][0152][0176].
It would have been prima facie obvious to one of ordinary skill in the art to include a solvent, such as water, within the claims. The ordinarily skilled artisan would have been motivated to formulate the composition, as taught by Brice [0079][0152][0176].
The amounts and ratios of the components, as recited in the instant claims, could be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
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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/ASHLEE E WERTZ/ Examiner , Art Unit 1612
/FREDERICK F KRASS/ Supervisory Patent Examiner, Art Unit 1612