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 .
Priority
Acknowledgement is made of the Applicant’s claim of foreign priority to foreign application EP22181216.7 filed 27 June 2022.
Election/Restrictions
Applicant’s election without traverse of Group 1 in the reply filed on 7 October 2025 is acknowledged. Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The Applicant further provided a response to the species election in an interview on 18 November 2025. The Applicant has elected N-alkyl dimethyl benzyl ammonium chloride (biocidal agent), polyimide of claim 1 wherein R is ethyl and R2 is ethanol, and amine oxide (surfactant). Claims 2, 10-11, and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Status of the Claims
Claims 1-20 are pending.
Claims 2, 10-11, 14-15, and 19-20 are withdrawn.
Claims 1, 3-9, 12-13, and 16-18 are rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 6, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The Applicant recites, in claims 3, 6, and 17, language using the indefinite term, “preferably.” The use of the word “preferably” renders the metes and bounds of the claim as indefinite.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6 and 8-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Stella et al. (US 2022/0401322).
Stella teaches leave on hair care treatment composition VV comprising polyquaternium-6 (a quaternary ammonium compound) in 0.6 wt%, polyimide-1 (aka AQUAFLEX XL-30) in 4.0 wt%, and water (q.s.) (Table 8). Polyimide-1 is identified in the instant specification at (pg 8, lns 8-10) as a suitable polyimide of the invention, and is thus presumed to comprise the required weight percentages and composition of instant claims 3-6. Accordingly, Stella anticipates instant claims 1, 3-6, and 8-9.
Claims 1 and 3-9 are rejected under 35 U.S.C. 102a1 as being anticipated by Hartwich et al. (US 2019/0159998).
Hartwich teaches a hair care composition comprising AQUAFLEX XL-30 (polyimide) in 0.7 wt%, CRODAZOSOFT DBQ (quaternary ammonium compound) in 0.2 wt%, and water (q.s.) [0082]. AQUAFLEX XL-30 is identified in the instant specification at (pg 8, lns 8-10) as a suitable polyimide of the invention, and is thus presumed to comprise the required weight percentages and composition of instant claims 3-6. Accordingly, Stella anticipates instant claims 1 and 3-9.
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, 3-9, 12-13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Stella et al. (US 2022/0401322) in view of Murad (US 2003/0007939) in view of Hawkins et al. (US 2011/0229430).
Stella teaches leave on hair care treatment composition VV comprising polyquaternium-6 (a quaternary ammonium compound) in 0.6 wt%, polyimide-1 (aka AQUAFLEX XL-30) in 4.0 wt%, and water (q.s.) (Table 8). Polyimide-1 is identified in the instant specification at (pg 8, lns 8-10) as a suitable polyimide of the invention, and is thus presumed to comprise the required weight percentages and composition of instant claims 3-6. The composition may comprise additional surfactants such as nonionic surfactants like alkyl polyglucoside or alkylamine oxides [0064, 0066] which may be included in amounts of from about 5% to about 50% [0014]. The polyquaternium, which is a QAC and thus considered a biocidal agent, can be included in the range of 0.01-10% [0156, 0160]. The pH of the composition can preferably range from 4.5-7 [0202]. Additional components, like pH adjusting agents, can be included in amounts of from 0.0001-10 wt% [0080-0081]. The composition of Stella can further comprise an anti-microbial agent, such as ketoconazole, in 0.01-5 wt% [0182].
Stella does not teach the elected species of biocidal agent or polyimide.
Murad teaches a composition that can be used in the hair [0032] and can comprise an antimicrobial agent selected from benzalkonium chloride or ketoconazole [0035].
Hawkins teaches personal care composition useful in the hair (abstract) which comprise styling/fixative aids to contribute a desired balance of flexibility/rigidity to the product [0070]. Suitable styling/fixative aids include AQUAFLEX XL-30 and AQUAFLEX FX-64 [0070].
It would have been prima facie obvious to prepare the composition of Stella comprising polyquaternium-6 (0.6 wt%), polyimide-1 (0.01-10 wt%), alkylamine oxides surfactants (5-50 wt%), pH adjusting agents (0.0001-10 wt%), an anti-microbial agent (0.01-5 wt%), and water wherein the pH is in the range of from 4.5-7. That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of actives, surfactants, pH adjusting agents, and other hair care components from within the disclosure of Stella, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Furthermore, it would have been prima facie obvious to replace the ketoconazole of Stela with benzalkonium chloride as the antimicrobial agent, which reads on the elected species of biocidal agent. Similarly, it would have been obvious to replace AQUAFLEX XL-30 with AQUAFLEX FX-64, which also reads on the elected species of polyimide, as both agents are taught as being useful for the same purpose in hair care compositions. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06).
Regarding the concentrations and the pH, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I).
The resulting composition accordingly renders obvious instant claims 1, 3-9, 12-13, and 16-18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613