DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 08 July 2026, in response to the Office Correspondence dated 08 April 2026, are acknowledged.
The listing of Claims filed 08 July 2026, have been examined. Claims 1, 2, 4-11, and 13-20 are pending. Claims 3 and 12 are cancelled and claims 1, 4, 5, 8, 14, 16, 18 and 20 are amended.
Response to Amendment
The applicant's amendments have been entered.
The applicant's amendments have been reviewed and successfully overcome the previously issued formal objections and prior §112(b) rejections The applicant has corrected the previously identified informalities involving spacing of "100 cPs" and "100 Pa", correction of "pentylene glycol", addition of antecedent articles in claim 5, deletion of duplicate "succinic acid", correction of "acidifiers", amendment of claim 14, and antecedent basis in claims 18 and 20. Accordingly, the prior objections and 35 U.S.C. §112(b) rejections are withdrawn. Claim 12 has been canceled and therefore is moot.
The amendments do not overcome the outstanding rejection under 35 U.S.C. §103. Claims 1-20 remain rejected under 35 U.S.C. §103 over Lee in view of Kinoshita for the reasons previously stated and as further expanded as detailed below in the Response to Arguments. Additionally, the new amendments to claim 18 introduces a new typographical error that is objected to and the cancellation of claim 3 introduces a new improper dependent claim rejection of claim 5, as detailed below.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 08 April 2026, since the art which was previously cited continues to read on the amended/newly cited limitations.
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 1, 2, 4-11, and 13-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee (US20200206111A1; publication date: 02 July 2020) in view of Kinoshita (US9539444B2; publication date: 10 January 2017).
Lee teaches all the essential elements of instant claims including a 5-70 wt.% mono-alcohol solvent system (e.g., ethanol, isopropanol; ¶[0033]-[0036]), fully encompassing the limitation of instant claim 2 and the from about 40-65 wt.% of instant claims 1, 18 and 20 and at least about 50 wt.% limitation of instant claim 6; 20-95 wt.% of the sugar alcohol propylene glycol (¶[0029]-[0030]), encompassing the limitations of instant claims 3 and 4; 0.1-20 wt.% fatty alcohol (¶[0050]-[0059]), overlapping with the from about 5-40 wt.% limitations of instant claims 1, 18 and 20 and the from about 1-50 wt.% of instant claim 12; and including 0.1-5 wt.% cationic surfactant (¶[0037]-[0043]), below the from about 7-50 wt.% limitation of instant claims 1, 18 and 20 and the from about 7-40 wt.% of instant claim 10; ≤5 wt.% water (¶[0027]; anhydrous); and has a viscosity of about 10-10,000 mPa·s [10-10,000 cPs] at 25° C (claim 12) or 10-5000 mPa·s [10-5000 cPs] at 25° C (claim 16), which encompasses the <100 cP of the instant claims. Lee further teaches wherein the anhydrous cosmetic composition is in the form a hair conditioner (¶[0089]–[0099]), single-phase, solubilized systems (claim 1; meeting the limitation of instant claim 17) and the formation of lamellar structures upon dilution (¶[0013] and ¶[0089]; meeting the limitation of instant claim 19).
Regarding instant claim 5, Lee teaches 5-70 wt.% mono-alcohol and 20-95 wt.% propylene glycol (a sugar alcohol) and a weight ratio of the propylene glycol to the monoalcohol from 20:1 to 1:1 (claim 1). The ratio of 1:1 is equal to the instant claim limitation of about 50:50, thereby meeting the claim as recited. Lee further teaches the limitations of instant claims 7 and 8 (¶[0151]), instant claim 9 (claim 5), instant claim 11 (claim 1), and instant claim 13 (claim 13; ¶[0088]).
Regarding instant claim 14, the teachings of Lee are completely silent to the use of any parabens, thereby meeting the claim. Additionally, “sulfates” that are disclosed in the reference are presented as alternative species of the cationic surfactant, and therefore not required. The instant claim 15 transparency limitation is taught by Lee as claim 1. Lee also teaches including compositions containing oils (¶[0153] and [0164]) and examples of embodies of the invention include preservatives and fragrances (¶[0172]), thus meeting the limitation of instant claim 16. Lee further discloses the composition wherein the claimed shear stress of ≥100 Pa at 950 s⁻¹ is an implied and expected rheological property of such gel networks (¶[0028]).
While Lee shows adjustable surfactant levels in example formulations (¶[0172]), supporting routine experimentation to optimize performance, Lee does not explicitly teach the use of cationic surfactant from about 7-50 wt.% required by the limitations of instant claims 1, 18 and 20. Lee also does not explicitly teach the from about 7-40 wt.% of instant claim 10 or the full concentration range limitations of from about 40-65 wt.% fatty alcohol of instant claims 1, 18 and 20 and the from about 1-50 wt.% of instant claim 12. Nor does Lee explicitly teach the specific limitation of instant claims 18 and 20 of adding water to the composition in the ratio of composition to water of 1:1 to 1:20.
Kinoshita however, teaches a similar low-water/anhydrous hair conditioning preparations (≤10 wt.% water; Abstract) with an expanded cationic surfactant range of from 5-35 wt.% of the total composition (claim 1), strongly overlapping with the 7-40 or 50 wt.% of the instant claims. The example embodiments by Kinoshita teach cationic surfactant levels of 7.8-36 wt.% (Table 2, Test Examples 1-10), squarely within the instant claimed 7-40 or 50 wt.%. Kinoshita teaches fatty alcohol (higher alcohols) from 10-90 wt.% (column 2, line 65-column 3, line 1; preferably 20-50 wt.% in claim 1), fully encompassing the 1-50 wt.% of instant claim 12 and from about 40-65 wt.% fatty alcohol of instant claims 1, 18 and 20. Kinoshita also teaches dilutable concentrates forming conditioning structures, diluted with water ratios for 1:3-1:15 (claims 3 and 4), strongly overlapping with adding water to the composition in the ratio of composition to water of 1:1 to 1:20 of instant claims 18 and 20. The example embodiments by Kinoshita teach a 1:10 dilution with water (column 14, lines 54-57), squarely within the instant claimed dilution range.
Of note, the applicant has not demonstrated criticality of the upper limit of the instant claimed cationic surfactant range. In fact, the instant specification invention formulation example embodiments disclose the use of 7.2-15.6 wt.% SAPDMA (Table 1), no invention example embodiments use over 15.6 wt.% cationic surfactant. In addition, Example 1 contains no mono-alcohols, Example B contains 74% total solvent system Example 3, 5, 7, and 9 contain 75% total solvent system (Table 1), thus half (6/12) of the examples of embodiments of the invention do not meet the solvent system limitations of the instant claims.
It would have been prima facie obvious prior to the instant effective filing date to one of ordinary skill in the art seeking to improve conditioning performance of Lee’s composition to increase deposition would look to Kinoshita increasing cationic surfactants levels are effective in analogous anhydrous conditioning systems. Both references are directed to anhydrous, dilutable hair conditioning systems, both rely on cationic surfactant and fatty alcohol structuring systems and Kinoshita provides explicitly optimized concentration ranges for these same functional ingredients. The concentration range changes would be a matter of routine formulation known-parameter optimization of a result-effective variable, as the substances were known for the same purpose at different concentration ranges (see In re Aller, 220 F.2d 454 (CCPA 1955); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The combination would have yielded predictable results because both references use identical structuring chemistry (cationic surfactant and fatty alcohol), both disclose lamellar/gel phase formation upon dilution, and adjusting concentration within known ranges is routine formulation optimization (see In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)).
Kinoshita explicitly teaches diluting its anhydrous concentrate with water in a ratio of 1:3 to 1:15 (concentrate:water). Lee does not teach a specific dilution ratio. The skilled artisan would look to Kinoshita's explicit teaching for guidance on appropriate dilution parameters for an anhydrous conditioning concentrate, as both references serve the same purpose. Lee already teaches viscosities as low as 10 cP (¶[0028]), which is below the claimed <100 cP limit. The claimed viscosity range is merely a sub-range of Lee's disclosed operable range. Selecting a known, effective, and disclosed sub-range is prima facie obvious in the absence of unexpected results (see In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). Thus, the instant invention is a predictable optimization of known formulation variables within overlapping or encompassed ranges.
New Rejections
The following new rejections are made from the previous Office Correspondence dated 08 April 2026, as the applicant's amendment necessitated the new grounds of rejection presented below based on the amended/newly cited limitations.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18 is objected to for lack of proper spacing. The claim recites, “shear rate of 950s-1”, which lacks a space and should read “950 s⁻¹”.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. § 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. § 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5 is rejected under 35 U.S.C. § 112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 depends from claim 3, which has been canceled. A dependent claim that refers to a canceled claim fails to comply with the statutory requirement that a claim in dependent form shall incorporate by reference all the limitations of the claim to which it refers. No claim 3 exists to provide the required limitations. The applicant must amend claim 5 to depend from a pending claim (e.g., claim 1 or claim 4) and ensure that all recited terms have proper antecedent basis.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 08 July 2026, have been fully considered, but are unpersuasive for the reasons set forth below.
The applicant repeatedly argues that Lee alone fails to disclose the claimed invention and that Kinoshita alone fails to disclose the claimed invention. These arguments are not persuasive. The rejection is based upon the combined teachings of Lee and Kinoshita. Nonobviousness cannot be established by attacking references individually where the rejection relies upon their combination (see In re Keller, 642 F.2d 413 (CCPA 1981)).
Lee and Kinoshita both concern anhydrous, dilutable hair‑conditioning compositions that rely on a cationic‑surfactant/fatty‑alcohol structuring system to form lamellar/gel networks upon addition of water. The technical field and purpose are identical. Lee discloses a solvent‑heavy anhydrous base with low viscosity. Kinoshita teaches higher cationic surfactant ranges (5‑35 wt.%) and fatty alcohol ranges (10‑90 wt.%) effective in analogous anhydrous conditioning systems.
A person of ordinary skill, seeking to improve the conditioning performance of Lee’s composition, would have been motivated to incorporate Kinoshita’s elevated surfactant and fatty alcohol levels, which are known to enhance deposition and structuring (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The motivation is not generic but specifically grounded in the shared chemical architecture and function.
The applicant argues that Kinoshita’s disclosure of solid or paste compositions teaches away from a low‑viscosity liquid. This argument is not persuasive. Kinoshita’s solid/paste form is merely a preferred embodiment, the reference also explicitly teaches compositions in gel form and liquid form by replacing water with a polyhydric alcohol and/or polyethylene glycol. Thus, Kinoshita discloses gel systems, low-water systems, polyhydric alcohol systems, and liquid embodiments.
A mere preference for one physical form does not constitute teaching away from other forms achievable through routine adjustment of result‑effective variables (e.g., solvent ratio, surfactant level; see In re Gurley, 27 F.3d 551 (Fed. Cir. 1994)). Nothing in Kinoshita criticizes or discourages liquid concentrates. Lee already demonstrates that low‑viscosity liquids are operable. The skilled artisan would have recognized that Kinoshita’s component ranges can be applied to Lee’s liquid template, and would have had a reasonable expectation of success in obtaining a low‑viscosity anhydrous concentrate.
The applicant argues that Lee does not specifically emphasize viscosities below 100 cPs. This argument is not persuasive. Lee expressly teaches viscosities of 10-10,000 cPs. The claimed viscosity (<100 cPs) is entirely encompassed. Selection of an optimum value from a disclosed range is prima facie obvious absent evidence of criticality. The applicant has not demonstrated any sharp boundary at 100 cPs.
The applicant argues that the gel network, shear stress ≥100 Pa, and instant transformation limitations distinguish over Lee. These arguments are not persuasive. Lee already teaches lamellar phase formation after dilution. Lamellar gel networks inherently possess measurable shear stress. The applicant has not demonstrated that the claimed shear stress represents a structurally distinct state rather than the expected rheology of Lee's lamellar system. Furthermore, the claims merely recite a desired functional result rather than structural limitations distinguishing the composition.
The argument that the transformation from a water‑like liquid to a gel network is surprising is not supported by evidence beyond Lee’s own teaching that its liquid anhydrous compositions form lamellar phases upon dilution. The transition from a low‑viscosity liquid to a structured gel is the expected result of diluting a surfactant/fatty‑alcohol concentrate, wherein the applicant has provided no comparative data establish that this result is unique or unanticipated.
The applicant relies upon Comparative Examples C8-C10 to allege demonstration of unexpected gel network formation from the claimed combination. These examples merely demonstrate that certain compositions within the claimed ranges are operative while some outside the ranges are not (i.e., shows operability, not unexpectedness). To establish unexpected results sufficient to rebut a prima facie case of obviousness, the applicant must show that the claimed invention possesses properties that would have been surprising to one of ordinary skill in view of the closest prior art.
The lamellar phase/gel network formation upon dilution is already taught by Lee (¶[0013], claim 1). The data do not demonstrate that the claimed gel network has a shear stress qualitatively different from, or unexpectedly superior to, that of Lee’s diluted lamellar compositions. The comparisons are not made against the closest prior art compositions of Lee. Instead, the applicant compares selected embodiments against internally-created comparative examples. Unexpected results must be demonstrated against the closest prior art. These data are insufficient. No direct comparison to the combined teachings of Lee and Kinoshita is provided.
Moreover, the applicant has not established that any allegedly unexpected property is attributable to the entirety of the claimed ranges. For example, claim 1 encompasses 7-50 wt.% cationic surfactant, yet every working example contains only approximately 7-16 wt.%. No evidence demonstrates that compositions containing 20 wt.%, 30 wt.%, 40 wt.%, or 50 wt.% produce the alleged unexpected rheology. Accordingly, the evidence is not reasonably commensurate in scope with the claims and the proffered data do not overcome the obviousness rejection.
The applicant further argues that the claimed ranges are critical. The argument is not persuasive. The specification itself undermines this assertion. Several disclosed embodiments lie outside one or more presently claimed ranges. Examples include solvent levels exceeding 70 wt.%, embodiments containing no mono-alcohol, embodiments lacking the presently claimed solvent composition. Therefore, applicant's own disclosure demonstrates operability outside the claimed ranges. Accordingly, the presently claimed numerical limits appear to represent optimization rather than critical boundaries.
The amendments narrowing the lower limit of cationic surfactant to 7 wt.%, adjusting fatty alcohol to 5‑40 wt.%, and raising the solvent system to 40‑70 wt.% (claim 1) do not introduce any feature outside the scope of the prior art. Lee teaches a fatty alcohol range of 0.1‑20 wt.%; Kinoshita teaches 10‑90 wt.%, thus the claimed 5‑40 wt.% range overlaps both. The cationic surfactant range 7‑50 wt.% overlaps Kinoshita’s 5‑35 wt.% range (the upper end is adjacent and would be an obvious extension). Lee’s mono‑alcohol range of 5‑70 wt.% encompasses 40‑70 wt.%. The viscosity <100 cP is expressly disclosed by Lee (10‑10,000 cP).
Selecting particular sub‑ranges from these known, overlapping ranges is a matter of routine optimization of result‑effective variables (see In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). The applicant has not demonstrated that the chosen boundaries yield a new and unexpected property, nor that they are critical in a way not reasonably predicted from the prior art. Furthermore, optimization of solvent identity to obtain desired viscosity constitutes optimization of a result-effective variable.
The applicant repeatedly emphasizes ease of home dilution. This argument is not persuasive. The claims merely recite mixed with water at 1:1-1:20. No limitation requires manual mixing, consumer use, absence of mechanical agitation, tap water, and household conditions. Patentability is determined by the claim language rather than advantages discussed in the specification.
Conclusion
No claims are allowed.
The 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 (87 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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