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 .
DETAILED ACTION
The Applicant’s reply filed on 6/5/26 is acknowledged. Claims 35-54 are pending. Claims 50-54 have been withdrawn. Claims 36, 37, 39, 40, 43, 46, 48 and 49 have been amended. Claims 35-49 are under consideration.
Rejections Withdrawn
The rejection of Claims 40, 43, 46 and 48 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claims.
The provisional rejection of Claims 35-49 on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18/355,526 in view of Van Gogh (US 2013/0149271; cited in IDS) is withdrawn in view of the canceled claim 20 in ‘526.
Rejections Maintained and New Grounds of Rejections
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 35-49 are rejected under 35 U.S.C. 103 as being unpatentable over Van Gogh (US 2013/0149271; cited in IDS).
Van Gogh teaches compositions that can be used as an adjunct to regular shampooing and conditioning products, wherein the disclosed compositions provide a means for repairing and restoring keratin-containing fibers to their original condition (e.g. abstract).
Van Gogh teach a composition for treating keratin fibers comprising:
(a) sodium citrate or citric acid (i.e. at least one carboxylic acid or salt thereof) (e.g. paragraph 0228, 0353, 0357, 0358);
(b) β-cyclodextrin (i.e. at least one cyclodextrin or derivative thereof) (e.g. paragraphs 0305, 0307, 0353, 0357 0358).
(c) xanthan or guar gums (i.e. at least one polysaccharide thickening agent) (e.g. paragraph 0185, 0190, 0193, 0303, 0307);
(d) propanediol (i.e. at least one polyol) (e.g. paragraphs 0353, 0357, 0358); and
(e) water (e.g. paragraph 0177, 0305, 0307, 0353, 0357, 0358);
wherein the composition has a pH 3.75 (i.e. of less than 7) (e.g. paragraph 0307).
Regarding Claims 35, 38, 39, 41, 42, 44, 45, and 47, while there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients and/or are present in separate examples. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 36, 37, 40, and 43, Van Gogh exemplify a composition comprising 2 wt% sodium citrate and 0.5 wt% β-cyclodextrin, which results in a ratio of 4:1, all of which are within the claimed ranges (e.g. paragraph 0353).
Regarding Claim 46, Van Gogh teach 0.05-5 wt% thickening polymers and exemplify a composition comprising 0.1 and 0.15 wt% guar hydroxypropyl triammonium chloride, which are within the claimed range (e.g. paragraph 0307).
Regarding Claim 48, Van Gogh exemplify 12.3, 12.6, 13, 11.8 and 12.1 wt% propanediol, which is within the claimed range (e.g. paragraph 0353).
Regarding Claim 49, Van Gogh teach a composition for treating keratin fibers comprising:
(a) 2 wt% sodium citrate (e.g. paragraph 0353);
(b) 0.5 wt% β-cyclodextrin (e.g. paragraphs 0353).
(c) 0.1 and 0.15 wt% guar hydroxypropyl triammonium chloride (e.g. paragraph 0307);
(d) 12.3, 12.6, 13, 11.8 and 12.1 wt% propanediol (e.g. paragraphs 0353); and
(e) water (e.g. paragraph 0307, 0353);
wherein the composition has a pH 3.75 (e.g. paragraph 0307).
While there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients and/or are present in separate examples. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 35-49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 65-69, 74, 76-81, 86-90 of copending Application No. 17/733,920 in view of Van Gogh (US 2013/0149271; cited in IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims recite a composition for treating keratin fibers, comprising:
(a) at least one carboxylic acid or salt thereof;
(b) at least one cyclodextrin or derivative thereof;
(c) at least one thickening agent;
(d) at least additional solvent, including polyols (e.g. claim 74); and
(e) water;
Wherein the pH is between 2 and 6 (e.g. claim 77).
Copending ‘920 does not claim that the thickening agent is a polysaccharide or gum. This is made up for by the teachings of Van Gogh.
Van Gogh teaches compositions that can be used as an adjunct to regular shampooing and conditioning products, wherein the disclosed compositions provide a means for repairing and restoring keratin-containing fibers to their original condition (e.g. abstract).
Van Gogh teach a composition for treating keratin fibers comprising:
(a) 2 wt% sodium citrate or citric acid (i.e. at least one carboxylic acid or salt thereof) (e.g. paragraph 0228, 0353, 0357, 0358);
(b) 0.5 wt% β-cyclodextrin (i.e. at least one cyclodextrin or derivative thereof) (e.g. paragraphs 0305, 0307, 0353, 0357 0358).
(c) 0.1 or 1.5 wt% xanthan or guar gums (i.e. at least one polysaccharide thickening agent) (e.g. paragraph 0185, 0190, 0193, 0303, 0307);
(d) 12.3, 12.6, 13, 11.8 and 12.1 propanediol (i.e. at least one polyol) (e.g. paragraphs 0353, 0357, 0358); and
(e) water (e.g. paragraph 0177, 0305, 0307, 0353, 0357, 0358);
wherein the composition has a pH 3.75 (i.e. of less than 7) (e.g. paragraph 0307).
Regarding Claims 35-49, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as xanthan and guar gums are disclosed by Van Gogh as suitable in a substantially similar hair treatment formulation. Simple substitution of one known element for another to obtain predictable results is obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 35-49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-18 and 21-32 of copending Application No. 18/355,442 in view of Van Gogh (US 2013/0149271; cited in IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims recite a composition for treating keratin fibers, comprising:
(a) at least one carboxylic acid or salt thereof;
(b) at least one cyclodextrin or derivative thereof;
(d) at least additional solvent, including polyols (e.g. claim 12); and
(e) water;
Wherein the pH is between 3 and 6 (e.g. claim 2).
Copending ‘442 does not claim the inclusion of a thickening agent which is a polysaccharide or gum. This is made up for by the teachings of Van Gogh.
Van Gogh teaches compositions that can be used as an adjunct to regular shampooing and conditioning products, wherein the disclosed compositions provide a means for repairing and restoring keratin-containing fibers to their original condition (e.g. abstract).
Van Gogh teach a composition for treating keratin fibers comprising:
(a) 2 wt% sodium citrate or citric acid (i.e. at least one carboxylic acid or salt thereof) (e.g. paragraph 0228, 0353, 0357, 0358);
(b) 0.5 wt% β-cyclodextrin (i.e. at least one cyclodextrin or derivative thereof) (e.g. paragraphs 0305, 0307, 0353, 0357 0358).
(c) 0.1 or 1.5 wt% xanthan or guar gums (i.e. at least one polysaccharide thickening agent) (e.g. paragraph 0185, 0190, 0193, 0303, 0307);
(d) 12.3, 12.6, 13, 11.8 and 12.1 propanediol (i.e. at least one polyol) (e.g. paragraphs 0353, 0357, 0358); and
(e) water (e.g. paragraph 0177, 0305, 0307, 0353, 0357, 0358);
wherein the composition has a pH 3.75 (i.e. 3-6) (e.g. paragraph 0307).
Regarding Claims 35-49, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as xanthan and guar gums are disclosed by Van Gogh as suitable in a substantially similar hair treatment formulation. Simple substitution of one known element for another to obtain predictable results is obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 35-49 are directed to an invention not patentably distinct from claims 1-18 of commonly assigned 18/355,442. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 18/355,442, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 35-49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 21-23 of copending Application No. 18/539,865 in view of Van Gogh (US 2013/0149271; cited in IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims recite a composition for treating keratin fibers, comprising:
(a) at least one carboxylic acid or salt thereof;
(b) at least one cyclodextrin or derivative thereof;
(c) at least one polysaccharide thickening agent -guar derivative;
(d) at least water soluble solvent; and
(e) water;
Wherein the pH is between 3 and 6 (e.g. claim 2).
Copending ‘865 does not claim the inclusion of a polyol as the water-soluble solvent. This is made up for by the teachings of Van Gogh.
Van Gogh teaches compositions that can be used as an adjunct to regular shampooing and conditioning products, wherein the disclosed compositions provide a means for repairing and restoring keratin-containing fibers to their original condition (e.g. abstract).
Van Gogh teach a composition for treating keratin fibers comprising:
(a) 2 wt% sodium citrate or citric acid (i.e. at least one carboxylic acid or salt thereof) (e.g. paragraph 0228, 0353, 0357, 0358);
(b) 0.5 wt% β-cyclodextrin (i.e. at least one cyclodextrin or derivative thereof) (e.g. paragraphs 0305, 0307, 0353, 0357 0358).
(c) 0.1 or 1.5 wt% xanthan or guar gums (i.e. at least one polysaccharide thickening agent) (e.g. paragraph 0185, 0190, 0193, 0303, 0307);
(d) 12.3, 12.6, 13, 11.8 and 12.1 propanediol (i.e. at least one polyol) (e.g. paragraphs 0353, 0357, 0358); and
(e) water (e.g. paragraph 0177, 0305, 0307, 0353, 0357, 0358);
wherein the composition has a pH 3.75 (i.e. 3-6) (e.g. paragraph 0307).
Regarding Claims 35-49, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as propanediol are disclosed by Van Gogh as suitable in a substantially similar hair treatment formulation. Simple substitution of one known element for another to obtain predictable results is obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 6/5/26 have been fully considered but they are not persuasive.
Regarding the provisional nonstatutory double patenting rejections, Applicant respectfully requests that it be held in abeyance until allowable subject matter is indicated. Applicant will consider the propriety of filing a Terminal Disclaimer at that point in time.
This is not found persuasive and the provisional rejections are maintained.
Applicant argues, beginning on page 9 that Van Gogh does not disclose a single composition containing all five components recited in claims 35 and 49.
This is not found persuasive. While there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients and/or are present in separate examples. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Applicant further argues, beginning on page 9, that the claimed five-component combination provides unexpected results. Applicant argues that Example 2 (paragraphs [00129]-[00149]) compares Composition 1A (containing all five components: xanthan gum, glycerin, citric acid, β-cyclodextrin, and water) against C1 (only xanthan gum and glycerin, no carboxylic acid or cyclodextrin), C2 (only citric acid and β-cyclodextrin, no polysaccharide thickening agent or polyol), and C3 (a commercial benchmark). The results show that "the hair treated with composition 1A had overall significant improvement in frizz control, curl definition, x-linking density, and durability, compared to the untreated hair and the hair treated with compositions C1, C2, or C3.
This is not found persuasive. First, Applicant has not compared to the closest prior art, which is Van Gogh, as none of C1, C2, C3, C4 or C5 are representative of the compositions of Van Gogh. Van Gogh in Examples A1-A5 in [0353] exemplifies compositions comprising (a) sodium citrate, (b) β-cyclodextrin, (d) propanediol and glycerin and (e) water, in addition to other emollients, moisturizers, anti-oxidants, amino acids, and humectants. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). Second, the claims are not commensurate in scope with the data provided. Claim 35 does not recite any amounts for ingredients (a)-(e) and are generic to the species. Claim 49, while narrower than claim 35, recites broad ranges for the concentration of ingredients and is broad with respect to the species of gum and polyol. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Accordingly, the rejection is maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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