DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/12/2026 has been entered.
Status of the Claims
Claims 49-68 are pending and under current examination.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 49-68 are rejected under 35 U.S.C. 103 as being unpatentable over Landa (U.S. Patent No. 7,816,310, issue date: 10/19/2010, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 49, Landa teaches a personal care composition that includes hydroxyalkylurea in combination with other moisturizing agents (col. 1 lines 50-51). The moisturizing agents may include citric acid (col. 4 line 16). When the hydroxyalkylurea is used in combination with a moisturizing agent, the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19). The moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, unsaturated fatty acids and their derivatives, and silicones (col. 4 lines 2-4). The personal care composition may also include a solvent (col. 4 line 34). The personal care composition can include hair conditioners and cream rinses, shampoos, hair styling products, and anti-frizz, volumizing, and bath and shower products (col. 5 lines 49-53). The Examiner considers the term “anti-frizz” to read on the “curl definition” limitation of the instant claim. Landa also teaches a curl defining cream with a final pH in the range of 4.0-5.0 (col. 16, Example 14).
Regarding claims 50 and 59, Landa teaches that when the hydroxyalkylurea is used in combination with a moisturizing agent, the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19).
Regarding claim 51, Landa teaches that the moisturizing agent is present in an amount of from about 0.1 to about 10% by weight (col. 5 line 7).
Regarding claim 52, Landa teaches that the composition may include N-2-hydroxyethylurea as the hydroxyalkylurea present in the composition (col. 3 line 57).
Regarding claim 53, Landa teaches that the hydroxyalkylurea of the invention is present in an amount of from about 0.25 to about 15% by weight of the personal care composition (col. 4 line 59).
Regarding claims 54 and 60, Landa teaches that the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19).
Regarding claim 55, Landa teaches that the moisturizing agent may include silicones (col. 4 line 4). Because silicones are not required by the disclosure of Landa, the Examiner considers the personal care composition of Landa to read on the “free of silicone compounds” limitation of the instant claim.
Regarding claim 56, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, and unsaturated fatty acids and their derivatives (col. 4 lines 2-4).
Regarding claim 57, Landa teaches that the personal care composition may include a surfactant (col. 4 line 36) and defines the term surfactant to include cationic surfactants (col. 2 line 64).
Regarding claim 58, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, unsaturated fatty acids and their derivatives, and silicones (col. 4 lines 2-4). The moisturizing agent is present in an amount of from about 0.1 to about 10% by weight (col. 5 line 7).
Regarding claim 61, Landa teaches that the moisturizing agents may include polyols (col. 4 line 7).
Regarding claim 62, Landa teaches that the personal care composition may include emulsifiers, surfactants, thickeners, moisturizers, and emollients (col. 4 lines 32-39). Landa defines the term surfactant to include cationic surfactants (col. 2 line 64).
Regarding claim 63, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, and unsaturated fatty acids and their derivatives (col. 4 lines 2-4).
Regarding claim 64, Landa teaches a personal care composition that includes hydroxyalkylurea in combination with other moisturizing agents (col. 1 lines 50-51). The moisturizing agents may include citric acid (col. 4 line 16). When the hydroxyalkylurea is used in combination with a moisturizing agent, the ratio of hydroxyalkylurea to moisturizing agent may be in a ratio of 0.5:15.0 to 15.0:0.05 (col. 5 line 19). The moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, unsaturated fatty acids and their derivatives, and silicones (col. 4 lines 2-4). The personal care composition may also include a solvent (col. 4 line 34). The moisturizing agent is present in an amount of from about 0.1 to about 10% by weight (col. 5 line 7) and the hydroxyalkylurea of the invention is present in an amount of from about 0.25 to about 15% by weight of the personal care composition (col. 4 line 59). The personal care composition can include hair conditioners and cream rinses, shampoos, hair styling products, and anti-frizz, volumizing, and bath and shower products (col. 5 lines 49-53). The Examiner considers the term “anti-frizz” to read on the “curl definition” limitation of the instant claim. Landa also teaches a curl defining cream that utilizes water as a solvent with a final pH in the range of 4.0-5.0 (col. 15-16, Example 14).
Regarding claim 65, Landa teaches that the moisturizing agents may also include petrolatum, mineral oils, vegetable oils, triglycerides, lanolins and their derivatives, and unsaturated fatty acids and their derivatives (col. 4 lines 2-4).
Regarding claim 66, Landa teaches that the composition may include N-2-hydroxyethylurea as the hydroxyalkylurea present in the composition (col. 3 line 57).
Regarding claim 67, Landa teaches that the personal care composition may include emulsifiers, surfactants, thickeners, moisturizers, emollients, and vitamins (col. 4 lines 32-39). Landa defines the term surfactant to include cationic surfactants (col. 2 line 64).
Regarding claim 68, Landa teaches the relevant limitations of claim 49 above. Landa also teaches that the terms “hair lotion” and “hair cream” includes compositions that are applied to hair to provide a cosmetic benefit (col. 3 lines 8-13).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 49-68, Landa does not teach a single embodiment or example meeting all limitations of the invention of claims 49-68.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Claims 49-68 are product-by-process claims. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. Therefore, the Examiner considers the teachings of Landa to read on the limitations of the instant claims.
Regarding claims 49-68, within the broader scope of Landa all of the limitations of the invention of claims 49-68 are met. It would have been prima facie obvious for one having ordinary skill in the art to choose the limitations in the instant claims from those disclosed by Landa and arrive at this conclusion because such was contemplated by Landa.
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive.
On page 9, Applicant argues that Landa fails to disclose or suggest any such composition prepared by forming a pre-phase mixture that is then combined with other ingredients. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2113 (I), which states: “ ‘even though product-by-process claims are limited by and defined the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process’. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).” As described in the obviousness rejection above, Landa teaches a personal care composition comprising the components recited by the instant claim 49, therefore the Examiner considers the teachings of Landa to read on the limitations of the instant claims.
On page 10, Applicant argues that the preparation steps described Landa fail to teach or suggest forming a pre-phase mixture as recited in the amended claims. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2113 (I), which states: “ ‘even though product-by-process claims are limited by and defined the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process’. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).” As described in the obviousness rejection above, Landa teaches a personal care composition comprising the components recited by the instant claim 49, therefore the Examiner considers the teachings of Landa to read on the limitations of the instant claims.
On page 10, Applicant argues that Exhibits A and B teach that “anti-frizz” and “curl definition” are separate and independent properties of hair sought by consumers that do not necessarily occur together. However, the references are not properly submitted on the record with an appropriate affidavit or declaration. MPEP 716.01(c) indicates that the arguments cannot take the place of evidence in the record. Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. MPEP 2145 further states that “[a]n assertion of what seems to follow from common experience is just argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness” (citing in re Geisler, 116 F.3d 1465,43 USPQ2d 1362 (Fed. Cir. 1997). However, in the interest of compact prosecution, the Examiner has considered the teachings of Exhibits A and B. While the Examiner agrees that “anti-frizz” and “curl definition” are separate and independent properties of hair, Landa teaches a curl defining cream comprising citric acid and hydroxyethyl urea. The Examiner considers “curl defining cream” to read on the “to provide one or more of curl definition” limitation of the instant claim, therefore the argument is not persuasive and the rejection is maintained.
On page 11, Applicant argues that the inventors surprisingly found that a specific combination of components when prepared as a pre-phase mixture following a specific process opens the combination of components to interact synergistically to provide curl elongation and retention of length of curly hair without loss of curl definition, and curl definition without frizzy appearance. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results amounts to superior curl definition, curl regularity, and/or curl elongation to curly hair when treated with a composition formed via a pre-phase mixture of citric acid and hydroxyethyl urea. However, the evidence does not clearly isolate the effect of using a pre-phase mixture because there is no comparison provided to a composition that contains both citric acid and hydroxyethyl urea but is not formed via a pre-phase mixture. Furthermore, Landa teaches that the combination of hydroxyalkylurea and moisturizer, which may include citric acid, produces a synergistic relative moisturization efficacy. Thus, the combination has an increased moisturization efficacy over that expected, even more than the added moisturization efficacy of the individual components alone (col. 5 lines 26-30 and col. 4 line 16a). Curlshop (Hydrating vs. Moisturizing the Hair…What’s the Difference?, available 6/1/2020) teaches that moisturizing your hair will bring more shine and definition to your curls (pg. 2). Therefore, it would have been obvious to one of ordinary skill in the art that a composition that contains both hydroxyalkylurea and citric acid, like compositions 2A and 3A, would be more moisturizing than a composition that contains neither or only one of the components individually, like the comparative compositions C1-C6, and would therefore provide increased curl definition. Therefore, the evidence of unexpected results is not unexpected or unobvious.
Differences are of both practical and statistical significance: The evidence of unexpected results amounts to superior curl definition, curl regularity, and/or curl elongation to curly hair when treated with a composition formed via a pre-phase mixture of citric acid and hydroxyethyl urea; therefore, the differences are of practical significance. However, the photographs provided in Figures 1 and 2 do not clearly demonstrate a significant difference in curl definition, curl regularity, and/or curl elongation between the inventive and comparative compositions and there is no corresponding numerical data or statistical analysis to demonstrate the claimed differences. Therefore, the evidence of unexpected results is not of statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The instant claim 49 embraces a composition comprising hydroxyalkyl urea and citric acid and any other fatty compound other than silicone compounds. The instant claim 63 further limits the fatty compound to any vegetable oil, fatty alcohol, or fatty ester. In order to be in commensurate scope with the claims, the evidence of unexpected properties must demonstrate superior curl definition, curl regularity, and/or curl elongation to curly hair when the composition contains any vegetable oil, fatty alcohol, or fatty ester. However, the inventive compositions 2A and 3A comprise only coconut oil, stearic acid, myristic acid, palmitic acid, stearyl alcohol, cetyl esters, or cetearyl alcohol. Therefore, the evidence of unexpected properties is not in commensurate scope with the claims.
Additionally, no side-by-side comparison to the closest prior art is provided to establish unexpectedly superior performance. There is no nexus between the purportedly unexpected property and the differences between the instant invention, as claimed, and the closest prior art. Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
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 49-57, 59, 60, 62, 63 and 68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,268,767.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘767 patent embrace a composition for treating hair comprising citric acid, at least one urea compound, at least one solvent and at least one component chosen from silicone compounds, non-silicon fatty compounds, thickening agents, cationic surfactants, or combinations thereof. The pH is less than 7 and the weight ratio of the total amount of citric acid to the total amount of urea ranges from about 1:1 to about 1:0.05. The mole ratio of citric acid to urea compounds ranges from about 0.4:1 to about 3:1. The amount of citric acid ranges from about 0.1% to about 50% by weight, relative to the total weight of the composition and the total amount of urea compounds ranges from about 0.1% to about 20% by weight relative to the total weight of the composition. The urea compound is chosen from urea, dimethyl urea, hydroxyethyl urea, or combinations of two or more thereof. The claims of the ‘767 patent also teach a method for treating hair comprising applying to the hair a composition comprising a combination of citric acid and at least one urea compound, at least one solvent and at least one additional component chosen from silicone compounds and non-silicone fatty compounds. The weight ratio of total citric acid to total urea in the method may range from 1:1 to 1:0.05. Instant claims 49-68 are product-by-process claims. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. Therefore, the Examiner considers the teachings of the claims of the ‘767 patent to read on the limitations of the instant claims.
The claims of the ‘767 patent do not teach the specific weight ratio of urea to citric acid or the weight percentage range of citric acid as embraced by the instant claims. It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight ratio of citric acid to urea in the composition embraced the claims of the ‘767 patent to match the range of the instant claim. One of ordinary skill would have been motivated to adjust the weight ratio of citric acid to urea in the composition in order to optimize the desired properties of the composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the composition embraced by the claims of the ‘767 patent significantly overlap with the range embraced by the instant claims. See MPEP 2144.05.
Claims 58, 61 and 64-67 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,268,767 as applied to claims 49-57, 59, 60, 62, 63 and 68 above, and further in view of Anderson (U.S. Patent No. 11,191,264, issue date: 12/7/2021, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘767 patent teach the relevant limitations as described above.
The claims of the ‘767 patent do not embrace a polyol or water within the composition. However, these deficiencies are cured by Anderson. Anderson teaches a solid rinsing, cleaning, and/or sanitizing composition that employs a matrix of urea and an acid (col. 14 line 2). The acid may include citric acid (col. 14 line 11). Anderson also teaches that the composition may include a polyethylene glycol compound of the general formula (H(OCH2CH2)nOH, where n is greater than 15 (col. 13 line 38). Furthermore, Anderson teaches that a solution may be prepared from the concentrate by diluting the concentrate with water at a dilution ratio that provides a use solution having desired rinsing, cleaning, and sanitizing properties (col. 33 line 28).
It would have been prima facie obvious to one of ordinary skill in the art of filing to include a polyol in the composition embraced by the claims of the ‘767 patent. One would have understood in view of Anderson that that a polyol may be included as a solidification agent in the composition. One of ordinary skill would have been motivated to include a polyol in the composition embraced by the claims of the ‘767 patent in order to add solidification properties to the composition. The artisan of ordinary skill would have had reasonable expectation of success because Anderson teaches that a polyol may be included in the composition.
Furthermore, it would have been prima facie obvious to one of ordinary skill in the art of filing that the composition embraced by the claims of the ‘767 patent may include water. One would have understood in view of Anderson that the solid compositions may be dissolved in water to create a working solution. It would have been obvious that this would create a composition that includes water along with the other limitations rendered obvious by Anderson. One of ordinary skill would have been motivated to include water in the composition embraced by the claims of the ‘767 patent in order to render a solution having desired rinsing, cleaning, and sanitizing properties (Anderson col. 33 line 28). The artisan of ordinary skill would have had reasonable expectation of success because Anderson teaches that the solid compositions may be diluted in water.
The claims of the ‘767 patent also do not teach a weight range of silicone compounds that may be present in the composition. However, this deficiency is cured by Anderson. Anderson teaches that silicones may be present in the composition in a concentration range from about 0.01-20wt% (col. 30 line 44). It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight percentage of silicone in the composition embraced by the claims of the ‘767 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight percentage of silicone in the composition in order to optimize the desired properties of the composition, such as foamability. The artisan of ordinary skill would have had reasonable expectation of success because the weight percentage of silicone in the composition embraced by Anderson encompasses the range of the instant claim. See MPEP 2144.05.
Claims 49-68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,083,207.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘207 patent embrace a cosmetic composition comprising 0.1 to about 25 wt.% of citric acid and 0.2 to 40 wt.% of hydroxyethyl urea, wherein the citric acid and hydroxyethyl urea are in a molar ratio of about 1:1 to 1:4. The composition contains at least 20wt% of water. The composition may also contain a fatty alcohol, fatty ester, fatty ether and a mixture thereof. The composition may also contain a silicone, a cationic surfactant, a thickening agent, a water-soluble solvent, and a polyol. The composition may be applied to the hair in a method for treating hair. Silicone may be present in a weight percentage of 0.1 to 10% by total weight of the composition. Instant claims 49-68 are product-by-process claims. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. Therefore, the Examiner considers the teachings of the claims of the ‘207 patent to read on the limitations of the instant claims.
The claims of the ‘207 patent do not teach the specific weight percentage range of urea embraced by the instant claims or the specific mole or weight ratio of citric acid and urea embraced by the instant claims. The claims of the ‘207 patent also do not teach a pH range for the composition.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight percentage of urea in the composition embraced by the claims of the ‘207 patent to match the range of the instant claim. One of ordinary skill would have been motivated to adjust the weight percentage of urea in the composition in order to optimize the desired properties of the composition, such as solidification. The artisan of ordinary skill would have had reasonable expectation of success because the weight percentage of urea in the composition embraced by the claims of the ‘207 patent has significant overlap with the range of the instant claims. See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight ratio of citric acid to urea in the composition embraced by the claims of the ‘207 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight ratio of citric acid to urea in the composition in order to optimize the desired properties of the composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the composition embraced by the claims of the ‘207 patent teaches a rage of weight percentages that have significant overlap to those embraced by the instant claims. See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘207 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the molar ratio of citric acid in the composition in order to optimize the desired properties of the solid composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘207 patent has significant overlap to those embraced by the instant claims . See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to adjust the pH of the composition embraced by the claims of the ‘207 patent to a level less than about 7. One of ordinary skill would have been motivated to adjust the pH of the composition in order to adjust the properties of the composition for the intended hair styling purpose or hair type. The artisan of ordinary skill would have had reasonable expectation of success because the claims of the ‘207 patent teaches the inclusion of citric acid, a buffering agent. See MPEP 2144.05.
Claims 49-57 and 69-68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,115,239.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘239 patent embrace a cosmetic composition comprising a polyol, one or more monoalcohols, a cationic surfactant, one or more fatty compounds and 1-15% by weight of the total weight of the composition a combination of citric acid and urea. The weight ratio of citric acid to urea is about 10:1 to about 1:10. The citric acid and urea compound are in a mole ratio of about 10:0.5 to 0.5 to 10. The urea compound is dimethyl urea, hydroxyethyl urea, urea or mixtures thereof. The fatty compound may be chosen from a fatty alcohol, fatty ester, fatty ether or mixtures. The claims of the ‘239 patent also embrace a method of treating hair comprising applying the cosmetic composition to hair. The composition also comprises lees that 5wt. % of water. Instant claims 49-68 are product-by-process claims. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. Therefore, the Examiner considers the teachings of the claims of the ‘239 patent to read on the limitations of the instant claims.
The claims of the ‘239 patent do not teach the specific weight percentage range of urea embraced by the instant claims or the specific mole or weight ratio of citric acid and urea embraced by the instant claims. The claims of the ‘239 patent also do not teach a pH range for the composition.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the weight ratio of citric acid to urea in the composition embraced by the claims of the ‘239 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight ratio of citric acid to urea in the composition in order to optimize the desired properties of the composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the composition embraced by the claims of the ‘239 patent teaches a rage of weight percentages that have significant overlap to those embraced by the instant claims. See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to optimize the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘239 patent to match the range of the instant claims. One of ordinary skill would have been motivated to adjust the molar ratio of citric acid in the composition in order to optimize the desired properties of the solid composition, such as pH or solidification. The artisan of ordinary skill would have had reasonable expectation of success because the molar ratio of citric acid to urea in the composition embraced by the claims of the ‘239 patent has significant overlap to those embraced by the instant claims . See MPEP 2144.05.
It would merely be a matter of routine for one having ordinary skill in the art to adjust the pH of the composition embraced by the claims of the ‘239 patent to a level less than about 7. One of ordinary skill would have been motivated to adjust the pH of the composition in order to adjust the properties of the composition for the intended hair styling purpose or hair type. The artisan of ordinary skill would have had reasonable expectation of success because the claims of the ‘239 patent teaches the inclusion of citric acid, a buffering agent. See MPEP 2144.05.
Claim 58 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,115,239 as applied to claims 49-57 and 69-68 above, and further in view of Anderson (U.S. Patent No. 11,191,264, issue date: 12/7/2021, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims render obvious the instant claims.
Inter alia, the claims of the ‘239 patent teach the relevant limitations as described above. The claims of the ‘239 patent do not teach the inclusion of a silicone or a weight percentage range of silicone that may be present in the composition. However, this deficiency is cured by Anderson. Anderson teaches a solid rinsing, cleaning, and/or sanitizing composition that employs a matrix of urea and an acid (col. 14 line 2). The acid may include citric acid (col. 14 line 11). Anderson also teaches that silicones may be present in the composition as a defoaming agent in a concentration range from about 0.01-20wt% (col. 30 line 44).
It would have been prima facie obvious to one of ordinary skill in the art of filing to include a silicone in the composition embraced by the claims of the ‘239 patent. One would have understood in view of Anderson that silicones may be present in the cleaning composition. It would have been obvious that the composition embraced by the claims of the ‘239 patent may also contain a silicone. One of ordinary skill in the art of filing would have been motivated to include a silicone in the composition in order to impart its defoaming properties to the composition. The artisan of ordinary skill would have had reasonable expectation of success because Anderson teaches that silicones may be present in the cleaning composition.
Furthermore, it would merely be a matter of routine for one having ordinary skill in the art to optimize the weight percentage of silicone in the composition embraced by the claims of the ‘239 patent match the range of the instant claims. One of ordinary skill would have been motivated to adjust the weight percentage of silicone in the composition in order to optimize the desired properties of the composition, such as foamability. The artisan of ordinary skill would have had reasonable expectation of success because the weight percentage of silicone in the composition embraced by Anderson encompasses the range of the instant claims. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive. Applicants’ request for the double patenting rejections of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejection will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejection.
Conclusion
No claims are allowed.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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