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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 March 2026 has been entered.
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 19 March 2026, in response to the Office Correspondence dated 29 December 2025, are acknowledged.
The listing of Claims filed 19 March 2026, have been examined. Claims 1-20 are pending. Claims 1, 10, 18 and 20 are amended and no new claims have been added.
Response to Amendment
Amendments to the claims filed 19 March 2026, have been entered. Claims 1-20 remain rejected under 35 USC § 103 and new objections and 35 USC § 112 rejections have been issued for the claims as set forth below.
Claim Objections
Claim 1, 4, 5, 8, 16, 18 and 20 are objected to because of the following informalities:
Claims 1, 18, and 20 are objected to for the term “100cPs”, which lacks a space and should read “100 cPs”., similarly claim 18 recites”100Pa” and should read “100 Pa”. Claims 18 and 20 also recite "100cPs.;”, which contains an improper period and should be corrected to "100 cPs;".
Claim 4 is objected to for "penylene glycol" which is incorrectly spelled and should be corrected to "pentylene glycol".
Claim 5 recites, "wherein the ratio of mono-alcohol to sugar alcohol is from about 99:1 to about 50:50, by weight". While claim 1 introduces "a solvent system comprising a mono-alcohol" and claim 3 introduces that the solvent system "further comprises a sugar alcohol," the recitation of "mono-alcohol" and "sugar alcohol" in claim 5 without the definite articles "the" creates ambiguity as to whether these refer to the same mono-alcohol and sugar alcohol previously introduced. This is a minor formal defect, but correction is recommended for clarity to "the ratio of the mono-alcohol to the sugar alcohol".
Claim 8 is objected because “succinic acid” appears twice in the Markush group. The redundancy should be removed by deleting the second occurrence.
Claim 16 is objected to due to inconsistent form agreement. Claim 16 recites, "...selected from the group consisting of perfumes, preservatives, silicones, colorants, oils, acidifier, and combinations thereof". The listed terms "perfumes," "preservatives," "silicones," "colorants," and "oils" are all in plural form, while "acidifier" is in singular form. This inconsistency creates ambiguity as to whether the applicant intends to include only a single acidifier or multiple acidifiers. The claim should be amended for consistency, e.g., changing "acidifier" to "acidifiers."
Appropriate correction of the typographical errors is required.
Claim Rejections - 35 USC § 112(b)
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 Applicant regards as his invention.
Claims 12, 14, 18-20 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, regards as the invention.
Claim 12 is rejected for claim scope inconsistency. Claim 12 recites 1-50 wt.% fatty alcohol, which is broader than the 5-40 wt.% of claim 1. Thus, claim 12 is inconsistent in scope with its base claim. Correction is required by either amending the dependency or rewriting the claim as independent.
Claim 14 is rejected as indefinite because the phrase "free of any sulfate and/or paraben" is ambiguous. The ambiguity arises from two sources. First, it is unclear whether the term "any" modifies only "sulfate" or both "sulfate" and "paraben." Second, the use of "and/or" creates multiple possible interpretations: (i) free of sulfate and free of paraben; (ii) free of sulfate or free of paraben (but possibly not both). A person of ordinary skill in the art would not know with reasonable certainty which meaning is intended. The applicant should amend claim 14 to clarify the intended scope (e.g., "free of any sulfate and any paraben" if both must be absent; or "free of any sulfate or paraben" if either may be present but not both; or "free of sulfates and parabens" if both must be absent).
Claims 18 and 20 are rejected under as indefinite for failing to provide clear antecedent basis for the term "the hair conditioner". The term "the hair conditioner" appears nowhere else in the claims before the final clause. The method recites forming an "anhydrous composition" and adding water to "the composition," but never explicitly defines "the hair conditioner" as the resulting mixture. A claim is indefinite when it does not provide clear antecedent basis for a term. MPEP § 2173.05(e). To correct this deficiency, the applicant should amend the claims to provide proper antecedent basis (e.g., "...adding water to the composition to form a hair conditioner, wherein the hair conditioner has..." or "...adding water to the composition, wherein the resulting hair conditioner has...").
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 1-20 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.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 19 March 2026, have been fully considered but are not persuasive for the reasons set forth below.
The applicant asserts that neither Lee nor Kinoshita teaches or suggests the claimed compositional ranges of 7-50 wt.% cationic surfactant, 5-40 wt.% fatty alcohol, and 40-65 wt.% mono-alcohol solvent system in an anhydrous composition having viscosity <100 cP. This argument mischaracterizes the obviousness rejection, which relies on a combination of references, not a single reference teaching every limitation and attacks the references individually rather than the combination. As the Federal Circuit has consistently held, “[a]lthough a prior art reference must disclose each and every limitation of a claim to anticipate the claim, that is not the standard for obviousness.” (see In re Gleave, 560 F.3d 1331, 1336 (Fed. Cir. 2009)). The proper inquiry is whether the combined teachings of Lee and Kinoshita would have rendered the claimed invention obvious to one of ordinary skill in the art (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)).
Lee teaches an anhydrous hair conditioning composition containing a 0.1-5 wt.% cationic surfactant range (¶[0037]-[0043]) and Kinoshita teaches an anhydrous hair conditioning composition with cationic surfactant range from 5-35 wt.% (claim 1). The instant claimed lower bound of 7 wt.% and overlapping upper range fall within or adjacent to Kinoshita’s disclosed range, rendering the claimed range prima facie obvious (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)). Lee discloses a fatty alcohol range of 0.1-20 wt.% (¶[0050]-[0059]) and Kinoshita discloses a fatty alcohol range of 10-90 wt.% higher alcohols and a fatty alcohol range of 5-40 wt.%. The claimed range substantially overlaps both references, particularly Kinoshita. Optimization within overlapping ranges is routine (see In re Aller, 220 F.2d 454 (CCPA 1955)). Lee discloses a 5-70 wt.% mono-alcohol solvent range (¶[0033]-[0036]). Thus, all claimed ranges are either explicitly taught and fully encompassed by Lee or Kinoshita, or are an obvious selection of narrower sub-ranges thereof which is prima facie obvious (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)). Lee explicitly discloses anhydrous compositions (≤5% water) and a viscosity range of 10-10,000 cPs (¶[0028]), encompassing <100 cPs. The claimed viscosity is therefore expressly anticipated by Lee’s range.
The applicant’s amendments to independent claims 1, 18 and 20, raising the lower limit of cationic surfactant to from about 5 wt.% to from about 7 wt.%, adjusting the fatty alcohol content to from about 5-40 wt.%, and solvent system (mono-alcohol) to from about 40-65 wt.% in the anhydrous composition having a viscosity < 100 cP, does not overcome the obviousness rejection, rather, it highlights the arbitrary nature of the selection. The amendments narrow prior ranges but do not introduce features outside the scope of the prior art compositions.
Lee establishes a solvent-heavy anhydrous base with low viscosity. The phase behavior of lamellar gel formation is predictable in cationic surfactant/fatty alcohol systems. The surfactant level, fatty alcohol level and solvent composition are all known to control viscosity and phase behavior in the formation of stable gel networks in which a finite range of options yield predictable solutions and optimization is a matter of routine formulation for one of skill in the art. These are result-effective variables subject to routine optimization in which a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Lee’s formulation template with Kinoshita’s expanded surfactant ranges.
One of skill in the art at the time of the invention would be motivated to increase the surfactant to improve conditioning, adjust the alcohol to reduce viscosity, and tune the ratios to achieve gel formation. The applicant has not shown criticality of sharp boundary behavior or failure outside claimed ranges. The amendment to 7 wt.% therefore represents a predictable optimization, not a patentable distinction.
The applicant also asserts that there is no motivation to combine Lee and Kinoshita, arguing that Lee’s systems are liquid and Kinoshita’s systems are solid/paste systems, that are incompatible. This argument is not persuasive both systems rely on the chemical structuring mechanisms and no evidence of incompatibility or unpredictability is provided. The subject matter of both references is anhydrous hair conditioning compositions (i.e., shared technical field) using high solvent systems and cationic surfactant/fatty alcohol structuring (i.e., shared formulation architecture), establishing the references as analogous art, with a shared purpose in the desire to improve conditioning efficiency and structuring. Thus, a strong motivation to combine exists.
The form factor distinction is not persuasive because Kinoshita’s solid or paste form is a preferred embodiment, not a limitation. Kinoshita explicitly teaches wherein the composition may be in the form of a gel (column 4, lines 23-38) and in a liquid form by replacing water medium with a polyhydric alcohol and/or polyethylene glycol (column 4, lines 44-65). Under In re Gurley, disclosure of a different physical form does not constitute teaching away (see In re Gurley, 27 F.3d 551 (Fed. Cir. 1994), wherein a reference does not teach away if it merely expresses a general preference for one form over another). The skilled artisan would recognize that formulation parameters can be adjusted to achieve desired physical forms.
The form is a predictable formulation variable as a based on the concentration of result-effective variables (i.e., cationic surfactant, fatty alcohol, and solvent) in cosmetic formulation. Adjusting such parameters is routine optimization (see In re Aller, 220 F.2d 454 (CCPA 1955)). One of ordinary skill in the art at the time of the instant invention would have been motivated to increase conditioning efficacy by using higher cationic surfactant levels taught by Kinoshita (i.e., 5-35 wt.%) as effective in similar anhydrous hair conditioning systems, to optimize concentrate performance. Thus, consistent with the requirement for articulated reasoning established by KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), wherein when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options.
The applicant asserts that modifying Lee with Kinoshita would not yield low-viscosity compositions, therefore there is a lack of reasonable expectation of success. This argument is not persuasive. Lee already teaches low viscosity systems (<100 cP). Viscosity is a function of solvent ratio and structurant level, both known tunable parameters. Kinoshita demonstrates operability across broad composition space, thus a person of ordinary skill in the art at the time of the invention would reasonably expect success in achieving a composition within the claimed ranges (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)).
The applicant argues unexpected results of the lamellar gel network, relying on SAXS/WXRD data showing lamellar phase formation and reduced phase separation. However, the applicant has not provided any comparative data showing that the claimed ranges produce unexpected results compared to the closest prior art. The data shows that certain formulations within the claimed ranges form lamellar gel networks, while certain other formulations outside the claimed ranges do not. This merely demonstrates that the claimed ranges are operative, not that they are unexpected.
To establish unexpected results, the applicant must demonstrate that the claimed invention achieves properties that a person of ordinary skill would not have predicted from the prior art (see In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). Here, lamellar phase formation is already taught Lee as anhydrous compositions form “a lamellar phase in situ” upon dilution (claim 1). No criticality is demonstrated and no comparative data showing that the claimed gel network formation is qualitatively different from Lee’s disclosed lamellar phase formation. Accordingly, the alleged results are not unexpected in view of Lee and do not rebut obviousness.
The applicant cites In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) for the proposition that the applicant is entitled to a patent if the examiner fails to establish a prima facie case. However, as explained above, the examiner has established a prima facie case. The burden therefore shifts to applicant to rebut that case with objective evidence of non-obviousness. The applicant’s reliance on In re Oetiker does not relieve the applicant of that burden.
Conclusion
No claims are allowed.
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