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 .
Status of Claims
Receipt of Applicant’s response, dated 11/03/2025, is acknowledged.
Claims 1-20 are pending.
Claims 1-20 are amended.
Claims 1-20 are under consideration in the instant Office action.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections to claims 1-20 set forth in the Office action dated 09/08/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112
The indefiniteness rejections of claims 3-4, 10-11, and 16 set forth in the Office action dated 09/08/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
REJECTIONS MAINTAINED
Claim Rejections - 35 USC § 103
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 Zhou (CN 111888270 A, published 11/06/2020, cited in IDS dated 06/17/2024) in view of Pease et al ("Polyesteramine Performance: Improving Mildness in Rinse-off Cleansers", published 2021, cited in Notice of References Cited dated 09/08/2025) and Focus on Surfactants (“Inolex launches conditioning polymers with multifunctional benefits, opens Chinese technical centre”, published 2016, cited in IDS dated 06/17/2024).
Zhou teaches a hair care composition comprising 0.5-5wt% of isopentyl glycol (isopentyl glycol is synonymous with isopentyldiol, a polyol suitable as the at least one conditioning agent further comprised in the composition of the instant claims; See Par. [0037] of the instant specification), 0.5-5wt% of isoamyl laurate, and 0.5-5wt% of polyester-11 (See entire document, e.g., Abstract). The hair care composition may comprise 0.3-10 mass% of cationic conditioning agent (e.g., Abstract, claim 2).
The hair care composition of Zhou may be used in a hair care product such as a shampoo, conditioner, or a hair mask (e.g., claim 10).
The hair care composition reduces oil accumulation in the hair, keeping it light and smooth, and enhances hair gloss, reduces frizz, and improves combability (e.g., Par. 1 of “Disclosure of the Invention”). Isopentyl glycol increases the moisture content of hair, imparts a moisturizing effect to hair, enhances the strength of hair after perming and dyeing, repairs damaged hair scales, enhances hair smoothness, and reduces frizz, with superior effects, safety, and stability compared to other polyols (e.g., Par. 4 of “Disclosure of the Invention”). Isoamyl laurate provides hair with softness, lightness, and fluidity comparable to silicone oil, but with a lower cumulative effect, meaning that oil accumulation in the hair is reduced, thereby alleviating itching and dandruff, and can better balance conditioning and cleansing properties when applied to different damaged hair types (e.g., Par. 4 of “Disclosure of the Invention”). Polyester-11 has excellent covering and film-forming properties, its long-chain alkyl group provides excellent hydrophobic protection, the tertiary amine group cation provides primary adsorption, and the ester group provides secondary adsorption, effectively forming a protective film to prevent hair damage, and due to its polyesteramine properties, polyester-11 also exhibits excellent antistatic properties, improving combing and making hair healthier (e.g., Par. 4 of “Disclosure of the Invention”).
Zhou does not teach the hair care composition comprising polyester-37, an amount of polyester-37, or a ratio of polyester-11 to polyester-37.
These deficiencies are made up for in the teachings of Pease et al and Focus on Surfactants.
Pease et al teach that polyester-11 and polyester-37 were developed in the early 2000s as conditioning polymers for hair and skin care (See entire document, e.g., Page 50 Col. 1 Par. 2). Their combination of cationic and hydrophobic characteristics makes polyester-11 and polyester-37 especially useful as substantive conditioning agents in shampoos and conditioners, as well as for mitigation of surfactant skin irritation (e.g., Page 50 Col. 1 Par. 2). This is due to their structure, for which both of polyester-11 and polyester-37 are branched polyesteramines with a backbone of diethylmethylamino adipate repeat units, glyceryl adipate branch units, and end-capped with monofunctional fatty acids (e.g., Page 49 Col. 1 Par. 1-Col. 2 Par. 1, Page 50 Col. 1 Par. 2, Figure 1). Pease et al found that in addition to the documented performance of polyester-11 and polyester-37 as cationic conditioning polymers, these polyesteramines provide irritation mitigation, which allows for the formulation of gentler cleansers based on harsher commodity surfactants avoiding the need for additional mild specialty surfactants, and provide viscosity building characteristics, and these polyesteramines can serve as multifunctional ingredients to design cost-effective, high performance rinse-off cleansers (e.g., Page DM27 Col. 1 Par. 2-Col. 2 Par. 2).
Focus on Surfactants teaches that ClariSilk (i.e., commercially available polyester-37 as evidenced by Par. [0069] of the instant specification) is a new and next-generation conditioning polymer with exceptional conditioning, slip and gloss and provides an added protective layer and silky feel as well as clarity (See entire document, e.g., Par. 1).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use polyester-37, in the form of commercially available ClariSilk, as the cationic conditioning agent in the hair care composition of Zhou, i.e., provide a hair care composition comprising 0.5-5 wt% of isopentyl glycol, 0.5-5 wt% of isoamyl laurate, and 0.5-5 wt% of polyester-11, and 0.3-10 mass% of ClariSilk. One of ordinary skill in the art would have been motivated to use ClariSilk as the cationic conditioning agent in the hair care composition of Zhou because Pease et al teach that polyester-37 is a high-performing, multifunctional cationic conditioning polymer that has been used in hair care products for decades and Focus on Surfactants teaches a commercially available form of polyester-37 that imparts exceptional conditioning, slip and gloss and provides an added protective layer and silky feel as well as clarity. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). There would have been a reasonable expectation of success because Zhou teaches that the hair care composition is compatible with polyester-11 and Pease et al teach structural similarities of polyester-11 and polyester-37 implying compatibility of polyester-37 in the hair care composition of Zhou.
The modified hair care composition of Zhou in view of Pease et al and Focus on Surfactants comprising 0.5-5 wt% of isopentyl glycol, 0.5-5 wt% of isoamyl laurate, and 0.5-5 wt% of polyester-11, and 0.3-10 mass% of ClariSilk renders obvious the composition of instant claims 1-20.
The modified hair care composition of Zhou in view of Pease et al and Focus on Surfactants comprising 0.5-5 wt% of polyester-11 and 0.3-10 mass% of ClariSilk renders obvious the ranges of the instant claims. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Response to Applicant’s Arguments
Applicant’s arguments filed on 11/03/2025 have been considered.
Applicant argues that Pease does not disclose polyester-11 and polyester-37 combined together without a surfactant mixture. Applicant argues that the rejection set forth in the Office action dated 09/08/2025 provides no indication as to why one skilled in the art would combine the surfactant mixtures of Pease (having one of either polyester-11 or polyester-37) with the composition of Zhou, which itself requires polyester-11 in combination with at least isoprene glycol and isoamyl laurate. Applicant argues that one would not be motivated to combine the surfactant mixtures of Pease with the composition of Zhou and expect to arrive at Applicant’s claimed composition (and resulting performance), which does not require these specific ingredients combined with polyester-11 or polyester-37. Applicant argues that Zhou discloses behenyltrimethylammonium chloride, cetrimide, and distearyldimethylammonium chloride as its cationic conditioning agents which are all quaternary ammonium compounds used in an acidic solution, however polyester-11 and polyester-37 are not quaternary compounds. Applicant argues that one skilled in the art would not be motivated to substitute the cationic conditioning agents of Zhou with polyester-37 as there is no basis to expect that polyester-37 would perform similarly to the cationic conditioning agents of Zhou in an acidic solution, and that the disclosure of Pease suggests that polyester-37 would perform differently from the cationic conditioning agents of Zhou in an acidic solution and thus appears to teach away from such a substitution.
The arguments have been fully considered by the Examiner but are not found persuasive because, firstly, the art does not need to teach a composition comprising polyester-11 and polyester-37 without a surfactant mixture because the instant claims use ‘comprising’ language which is inclusive or open-ended and therefore does not exclude the presence of additional, unrecited elements. See MPEP 2111.03. Secondly, as can be seen in the maintained rejection under 35 USC 103 above, the teachings of Pease et al and Focus on Surfactants do provide motivation for one of ordinary skill in the art to use polyester-37, in the form of commercially available ClariSilk, as the cationic conditioning agent in the hair care composition of Zhou because Pease et al teach that polyester-37 is a high-performing, multifunctional cationic conditioning polymer that has been used in hair care products for decades and Focus on Surfactants teaches a commercially available form of polyester-37 that imparts exceptional conditioning, slip and gloss and provides an added protective layer and silky feel as well as clarity. Further, Zhou discloses behenyl trimethyl sodium chloride, cetrimide and distearyl dimethyl ammonium chloride as preferable cationic conditioning agents, but does not prohibit use of cationic conditioning agents other than those taught as preferable (See Middle of Page 2 of Zhou). As can be seen in the maintained rejection under 35 USC 103 above, Pease et al teach that each of polyester-11 and polyester-37 are a cationic conditioning polymer that also provide irritation mitigation, which allows for the formulation of gentler cleansers based on harsher commodity surfactants avoiding the need for additional mild specialty surfactants, provide viscosity building characteristics, and can serve as multifunctional ingredients to design cost-effective, high performance rinse-off cleansers. There would have been a reasonable expectation of success in using polyester-37, in the form of commercially available ClariSilk, as the cationic conditioning agent in the hair care composition of Zhou because Zhou teaches that the hair care composition is compatible with polyester-11 and Pease et al teach structural similarities of polyester-11 and polyester-37, which implies the compatibility of polyester-37 in the hair care composition of Zhou. Applicant is reminded that the reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). The art needs to provide a motivation and not the same motivation as Applicant or necessarily recognize the same problem/solution as Applicant. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex lnc., 550 U.S. 398,419 (2007). Instead, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Conclusion
No claims are allowable.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619