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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/15/2026 has been entered.
Status of the Claims
Claims 21-40 are pending. Claims 21-39 are under current examination. Claim 40 is withdrawn. Claims 1-20 are cancelled.
Withdrawn Claim Rejections
All rejections pertaining to claims 1-10 and 12-20 are moot because the claims are cancelled in the amendments to the claims filed 7/15/2026.
All rejections not reiterated have been withdrawn.
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.
Claim 30 is 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.
Claim 30 recites the limitation “present in an amount ranging from about 0.1 to about 3 wt.%”. This renders the claim indefinite because it is not clear to what the weight percentage of branched fatty alcohol is relative to (i.e., total weight of the composition or to the weight of another component of the composition).
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.
Claims 21-39 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (U.S. Patent Application Publication No. 2021/0154116, publication date: 5/27/2021, cited in the IDS filed 7/3/2024, of record) in view of Batterman (DE102021121537, publication date: 2/23/2023, citations refer to machine translation), Rele et. al. (Journal of Cosmetic Science, pg. 175-192, publication year: 2003, of record), and Kaushik et. al. (Cosmetics and Toiletries, publication year: 2021, of record).
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 21, Lee teaches a composition comprising at least one first cationic compound chosen from esterquat compounds, at least one second cationic compound chosen from cationic surfactants other than esterquat compounds, at least one hydrocarbon oil, at least one fatty alcohol, and at least one glyceryl ester [0007]. The glyceryl ester can include glycerol fatty esters [0045]. The fatty alcohol may be a branched saturated alcohol [0064]. The hydrocarbon oil includes animal oils, plant oils, mineral oils, or synthetic oils [0040]. The composition may comprise from about 50 to about 95% water [0013]. The weight ratio of the total amount of the first and second cationic compounds to the total amount of hydrocarbon oil ranges from about 1:10 to about 10:1 [0014].
Regarding claims 22 and 23, Lee teaches that the first cationic compound is present in an amount of about 0.1% to about 5% based on the total weight of the composition [0008].
Regarding claim 24, Lee teaches that the at least one first cationic compound is distearoylethyl dimonium chloride [0008].
Regarding claims 25 and 26, Lee teaches that the second cationic surfactant typically ranges from 0.01% to about 6%, based on the total weight of the composition [0024].
Regarding claim 27, Lee teaches that the second cationic compound may be behentrimonium chloride [0029].
Regarding claims 28 and 29, Lee teaches that the fatty alcohol may be 2-ocyl-1-dodecanol [0064].
Regarding claim 30, Lee teaches that the total amount of fatty alcohol may be present from about 0.1% to about 3%, based on the total weight of the composition [0066].
Regarding claim 31, Lee teaches the relevant limitations of claim 21 above.
Regarding claim 32, Lee teaches the relevant limitations of claim 21 above.
Regarding claim 33, The weight ratio of the total amount of the first and second cationic compounds to the total amount of hydrocarbon oil ranges from about 1:10 to about 10:1 [0014].
Regarding claims 34 and 38, Lee teaches the relevant limitations of claim 21 above. Lee also teaches that the first cationic compound is present in an amount of about 0.1% to about 5% based on the total weight of the composition [0008] and the second cationic surfactant typically ranges from 0.01% to about 6%, based on the total weight of the composition [0024]. The fatty alcohol may be 2-ocyl-1-dodecanol [0064] and may be present from about 0.1% to about 3%, based on the total weight of the composition [0066]. The hydrocarbon oil may range from about 0.001% to about 20%, based on the total weight of the composition [0042].
Regarding claim 35 and 38, Lee teaches that the fatty alcohol may be 2-ocyl-1-dodecanol [0064].
Regarding claim 36 and 38, Lee teaches that the at least one first cationic compound is distearoylethyl dimonium chloride [0008].
Regarding claim 37 and 38, Lee teaches that the second cationic compound may be behentrimonium chloride [0029].
Regarding claim 39, Lee teaches that the composition may contain a cosmetic adjuvant or other ingredient commonly used in cosmetics for this type of application [0074].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 21 and 32, Lee does not teach a weight ratio of the total amount of the first and second cationic compounds to the total amount of the branched fatty alcohol.
Regarding claims 21 and 31, Lee does not teach the inclusion of coconut oil. However, this deficiency is cured by Batterman and Rele.
Batterman teaches a hair treatment composition that comprises at least one cationic surfactant selected from alkylquats, esterquats, and amidoamines and/or cationized amidoamines [0070]. Preferred alkylquats include behentrimonium chloride [0071] and esterquats include distearoylethyl dimonium chloride (pg. 100, Hair Conditioner Examples 10 and 11 in original document). The composition may also contain a fatty alcohol such as 2-octyl-dodecanol (Claim 66). The composition may also contain a natural oil such as olive oil, liquid components of coconut oil, and jojoba oil [0047]. Rele teaches that coconut oil has superior protective effects on hair damage in grooming processes when compared to mineral oil and other vegetable oils such as sunflower oil (pg. 191, Conclusion). Kaushik teaches that the diffusion blocking effect is weaker with soybean oil than with coconut oil. This may be due to lower amounts of soybean oil penetrating the fiber, thus blocking fewer pathways for the penetration of water (pg. 2, final paragraph).
Regarding claim 39, Lee does not teach the inclusion of sorbitol. However, this deficiency is cured by Batterman.
Batterman teaches that the hair treatment composition may contain an active ingredient such as sorbitol [0113].
Finding of a Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding the weight ratio of first and second cationic compounds to the branched fatty alcohol as specified in claims 21 and 32, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Lee teaches that the esterquat compounds may be present from about 0.001 to about 20% by weight [0023] and the second cationic compound may be present from 0.001 to about 10% by weight [0024], both based on the total weight of the composition. The fatty alcohol is present from about 0.5 to 10% by weight based on the total weight of the composition [0011]. The recited weight ratio is implicit in the ranges of the total amount of each ingredient which overlaps with claimed amounts. The Applicants' specification provides no evidence that the selected weight ratios in claims 21 and 32 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the synergistic effects of the cationic compounds with the hydrocarbon oil and glyceryl esters of the composition embraced by Lee, it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the amount of cationic compounds present so that the weight ratio of cationic compounds to fatty alcohols lies within the range of the instant claim. One of ordinary skill in the art would have been motivated to change the amount of cationic compounds present in the composition as this could be expected to be advantageous for the synergistic effects of the cationic compounds with the hydrocarbon oil and glyceryl esters.
Regarding claims 21 and 31, it would have been prima facie obvious to one of ordinary skill in the art of filing to utilize coconut oil as the hydrocarbon oil of Lee. One would have understood in view of Batterman that a hair conditioning composition comprising claimed cationic surfactants and fatty alcohol may also contain coconut oil as a natural oil. One would have also understood in view of Rele and Kaushik that coconut oil is better suited for hair conditioning compared to mineral, sunflower, and soybean oils. It would have been obvious to utilize coconut oil as the hydrocarbon oil of Lee. One of ordinary skill in the art of filing would have been motivated to utilize coconut oil in order to utilize its superior hair conditioning properties. The artisan of ordinary skill would have had reasonable expectation of success because Batterman teaches that coconut oil may be utilized in a nearly identical hair conditioner composition.
Regarding claim 39, the idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional polyol active ingredients in hair conditioner compositions comprising the cationic surfactants and fatty alcohols of the instant claims. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the teachings of Mini Monai have been considered but are moot because the new ground of rejection does not rely on Mini Monai for any teaching or matter specifically challenged in the argument.
On page 7, Applicant argues that Lee does not require a second cationic surfactant that is not an esterquat surfactant, does not require a branched fatty alcohol, and does not require the claimed ratios and that choosing from amongst Lee’s broad teachings use the claims as a guide. This is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Please also refer to MPEP 2123 (I), which states “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art” and MPEP 2123 (II), which states “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. In the instant case, as described in the obviousness rejection above, Lee, in view of Batterman, teaches that the composition may contain an esterquat surfactant, a second cationic non-esterquat surfactant, a branched fatty alcohol, coconut oil, and water within the cited weight percentages and ratios. Therefore, one of ordinary skill in the art could have reasonably chosen the elements recited by the instant claims from the disclosure of Lee.
On page 7, Applicant argues that the comparative compositions tested in the specification provides evidence of unexpected results. This is not found persuasive. In response, please refer to MPEP 716.02 (b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
Differences in results are in fact unexpected and unobvious: The evidence of unexpected results amounts to an improved hair texture rendered by the composition of the instant invention due to the presence of coconut oil rather than the mixture of oil in the recited comparative composition 3. However, Rele et. al. (Journal of Cosmetic Science, pg. 175-192, publication year: 2003, of record) teaches that coconut oil has superior protective effects on hair damage in grooming processes when compared to mineral oil and other vegetable oils such as sunflower oil (pg. 191, Conclusion). The high amount of triglycerides of lauric acid present in coconut oil has a high affinity for hair proteins and because of its low molecular weight and straight linear chain, is able to penetrate inside the hair shaft. Mineral oil has no affinity for proteins and sunflower oil cannot penetrate the hair fiber due to its bulky structure (pg. 175, Synopsis). Similarly, Kaushik et. al. (Cosmetics and Toiletries, publication year: 2021, of record) teaches that the diffusion blocking effect is weaker with soybean oil than with coconut oil. This may be due to lower amounts of soybean oil penetrating the fiber, thus blocking fewer pathways for the penetration of water (pg. 2, final paragraph). Thus, it is not unexpected that a composition containing only coconut oil (Inventive Composition 1) compared to a mixture of sunflower, soybean, and coconut oils (comparative composition 3) would provide superior hair conditioning performance. Furthermore, the inventive conditioner contains behentrimonium chloride, a known conditioning agent (Humblebee and Me, pg. 2, What is it?, of record), and octyldodecanol, a known emollient that smooths and softens hair (Bjornsson, pg. 2, Four Benefits of Using Octyldodecanol, of record), while the comparative conditioners do not. It would have been obvious that a composition that contains two conditioning ingredients that would have superior conditioning properties compared to a composition that does not contain those conditioning ingredients. The Applicant has also not provided any data demonstrating synergy between the cationic surfactants, branched fatty alcohols, and specific oils. Lee teaches that the compositions comprise synergistic combinations of cationic compounds and hydrocarbon oil [0018], thereby directing the artisan of ordinary skill to seek synergy. Therefore, the evidence of unexpected results are not unexpected or unobvious.
Differences are of both practical and statistical significance: The evidence of unexpected results are of practical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The instant claim 21 embraces any esterquat surfactant, any cationic surfactant that is not an esterquat surfactant, any branched fatty alcohol, and olive oil, coconut oil, or jojoba oil at any concentration. However, the evidence of unexpected results is limited to a single esterquat surfactant, a single second cationic surfactant, coconut oil, and a single branched fatty alcohol at one concentration. The example inventive composition also contains other specific ingredients that improve hair texture, whereas the claims embrace an enormous range of compositions not necessarily possessing the beneficial effects seen for the single example composition. Therefore, the evidence of unexpected results are not in commensurate scope with the claims.
Thus, the Applicant’s argument is not persuasive and the rejection is maintained.
On page 7, Applicant argues that the final office action discounts Applicant’s direct comparison by reconstructing a hypothetical formulation that is not actually disclosed in Lee and then faulting Applicant for not comparing the claimed invention to the hypothetical composition. This is not found persuasive. In response, the Examiner respectfully refers to MPEP 2123 (II), which states: “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. As described in the obviousness rejection above, Lee, in view of Batterman, teaches the recited components and ratios of claim 21, therefore it would have been obvious to one of ordinary skill in the art to select the components recited by the instant claim 21. Furthermore, the inventive composition comprises conditioning components such as behentrimonium chloride and octyldodecanol. Thus, the Applicant has not clearly demonstrated that the improved conditioning rendered by the inventive composition is due to the presence of coconut oil.
On page 9, Applicant argues that to reach the claimed composition, the Office must make several selections. It must choose particular ingredients from multiple lists in Lee and then place those ingredients within the claimed concentration ranges. This is not found persuasive. In response, the Examiner respectfully draws attention to MPEP 2123 (II), which states: “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” and MPEP 2123 (II), which states: “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”. As described in the obviousness rejection above, Lee, in view of Batterman, teaches the claimed components of the instant claim 21. Furthermore, behentrimonium chloride [0030], distearoylethyl dimonium chloride [0028], 2-octyl-1-dodoceanol [0064], coconut oil (Table 1), and water [0069] are all taught as the species for each respective genus in a preferred or exemplary embodiment. Therefore, one of ordinary skill in the art would have reasonably chosen the species recited by the instant claims from the broad disclosure of Lee.
Response to Declaration-Kazumitsu Kwakami
Declarant’s arguments filed 7/15/2026 have been fully considered but they are not persuasive.
On page 2, Declarant argues that the improved wet and dry-performance benefits rendered by the inventive conditioning composition constitute unexpected results. This is not found persuasive. As described in the response to arguments above, the results are not unexpected over the teachings of the prior art and are not in commensurate scope with the claims. Therefore, the arguments are not persuasive and the rejection is maintained.
On page 3, Declarant argues that the teachings of Rele and Kaushik would not have made the performance reported for Inventive Conditioner 1 expected or predictable and that they do not evaluate coconut oil in a complete rinse-off conditioner containing an esterquat compound, a non-esterquat cationic surfactant, and a branched fatty alcohol. This is not found persuasive. In response to Declarant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Since the instant rejection is an obviousness-type rejection, none of the references (i.e., Rele, Kaushik, Rayma, or Vinci Hair Clinic) has to teach each and every claim limitation. It is the combination of the prior art references that renders the instant claims prima facie obvious. In the instant case, the teachings of Rele and Kaushik establish that coconut oil has superior conditioning effects on hair than mineral, sunflower, or soybean oil and Rayma and Vinci Hair Clinic establish the conditioning effects of behentrimonium chloride and octyldodecanol. One of ordinary skill in the art of filing would have therefore reasonably concluded that a composition comprising only coconut oil would have superior conditioning properties than a composition that comprises a mixture of oils and that the superior conditioning properties of the inventive composition could not be attributed to the selection of coconut oil alone given the conditioning effects of the additional ingredients such as behentrimonium chloride and octyldodecanol.
On page 4, Declarant argues that the principles and results reported by O’Lenick are consistent with the opinion that the known general properties of coconut oil, behentrimonium chloride, and octyldodecanol, considered individually, would not have reliably predicted the overall wet and dry performance of inventive conditioner 1. This is not found persuasive. The Examiner agrees that O’Lenick does teach that a formulation of cosmetic products is always more complicated than studying the individual components in aqueous solution. However, the cited references discussing the properties of the oils, behentrimonium chloride, and octyldodecanol discuss the properties of these components within a hair care formulation. The O’Lenick reference does not provide any specific teaching or evidence that would suggest to one of ordinary skill in the art that the teachings regarding the properties of the cited, oils, behentrimonium chloride, and octyldodecanol would not be applicable to the instant invention. Therefore, the argument is not persuasive.
Response to Declaration-Jun Liang
Declarant’s arguments filed 7/15/2026 have been fully considered but they are not persuasive.
On page 4, Declarant argues that the superior performance of inventive composition 1 compared to the disclosure of Lee constitutes unexpected results. This is not found persuasive. As described in the response to arguments above, the evidence of unexpected results is not unexpected or unobvious and is not in commensurate scope with the claims.
On page 5, Declarant argues that the superior performance of inventive composition 1 cannot be explained merely be the presence of coconut oil, but instead reflects the performance of the formulation as a whole. This is not found persuasive. As described in the response to arguments above, it would have been obvious that a composition that contains two known conditioning ingredients would have a better conditioning effect than a composition that does not contain those ingredients.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 21-24 and 27-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 8-11, 13, 14, 16-18, 21, 24 and 26-27 of copending Application No. 17/101,206 in view of Typology (What You Need to Know About Coconut Oil, available 1/4/2022, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘206 application embrace a hair conditioning composition comprising from about 1 to about 2% of esterquat compounds, at least one second cationic compound chosen from cationic surfactants other than esterquat compounds or cationic polymers, at least one hydrocarbon oil, at least one glyceryl ester, and at least one fatty alcohol. The Examiner considers the “at least one fatty alcohol” limitation of the claims of the ‘206 application to encompass the at least one branched fatty alcohol of the instant claims. The first cationic compound is distearoylethyl dimonium chloride. The cationic polymer is present from about 0.05-about 1% by weight and the fatty alcohol is present from 0.5 to about 10% by weight. The weight ratio of the total amount of the first and second cationic compounds to total amount of the glyceryl esters ranges from about 1:10 to about 10:1. The composition comprises a solvent that comprises 50 to 95% water. The specification of the ‘206 application teaches that the second cationic surfactant may be behentrimonium chloride [0029] and that the fatty alcohol may be 2-ocyl-1-dodecanol [0064]. The Examiner has relied upon the specification to delineate the scope of the invention embraced by the claims of the ‘206 application, consistent with the decision in Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co. U.S. Court of Appeals Federal Circuit, 95 USPQ2d 1797.
The claims of the ‘206 application do not embrace coconut oil or a weight ratio of cationic components to fatty alcohol. However, this deficiency is cured by Typology. Typology teaches that coconut oil is mainly comprised of triglycerides and has a strong affinity for hair proteins, easily penetrates the hair shaft, and provides a pleasant fragrance to the hair (pg. 4, The benefits of coconut oil for hair).
It would have been prima facie obvious to include coconut oil as the glyceryl ester present in the composition embraced by the claims of the ‘206 application. One would have understood in view of Typology that coconut oil is comprised mostly of glyceryl esters in the form of triglycerides and that coconut oil can easily penetrate the hair shaft and provide a pleasant fragrance to the hair (pg. 4, The benefits of coconut oil for hair). It would have been obvious to include coconut oil the glyceryl ester in the composition embraced by the claims of the ’206 application. One of ordinary skill in the art of filing would have been motivated to include coconut oil as the glyceryl ester in order to easily penetrate the hair shaft and provide a pleasant fragrance to the hair. The artisan of ordinary skill would have had reasonable expectation of success because the claims of the ‘206 application broadly embrace the inclusion of glyceryl esters.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 25-26 and 34-38 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 8-11, 13, 14, 16-18, 21, 24 and 26-27 of copending Application No. 17/101,206 in view of Typology (What You Need to Know About Coconut Oil, available 1/4/2022, of record), as applied to claims 21-24 and 27-33 above, and further in view of Science-y Hair Blog (Cationic Compounds in Cosmetics, available 7/30/2011, of record).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘206 application embrace the relevant limitations as described above. The claims of the ‘206 application do not teach a weight percentage of cationic surfactant present in the composition. However, this deficiency is cured by Science-y Hair Blog. Science-y Hair Blog teaches that both cationic surfactants, such as behentrimonium chloride, and cationic polymers are used in hair conditioning compositions to bond to hair and provide conditioning which results in silky, smooth, lustrous hair that holds a style (pg. 1 and pg. 2 Quaternary Cationic Surfactants).
The weight percentage of cationic surfactant is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentage of cationic surfactant in order to best achieve the desired results as such would provide advantageous conditioning effect. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Science-y Hair Blog teaches that cationic surfactants in a hair conditioning composition bind to the hair and provide a conditioning effect (pg. 1). The Examiner considers it prima facie obvious to optimize the weight percentage of cationic surfactant, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of cationic surfactant present would have a direct effect on the conditioning properties of the composition and therefore be an optimizable variable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 39 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 8-11, 13, 14, 16-18, 21, 24 and 26-27 of copending Application No. 17/101,206 in view of Typology (What You Need to Know About Coconut Oil, available 1/4/2022, of record) and Science-y Hair Blog (Cationic Compounds in Cosmetics, available 7/30/2011, of record), as applied to claims 25-26 and 34-38 above, and further in view of Modi (U.S. Patent No. 6,905,694, issue date: 6/14/2005).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘206 application embrace the relevant limitations as described above. The claims of the ‘206 application embrace a solvent that comprises 50-95% water. The specification of the ‘206 application teach that the solvent may be a mixture of water and at least one cosmetically acceptable solvent, such a polyols containing from 2 to 6 carbon atoms [0068]. The Examiner has relied upon the specification to delineate the scope of the invention embraced by the ‘206 application, consistent with the decision in Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co. U.S. Court of Appeals Federal Circuit, 95 USPQ2d 1797.
The claims of the ‘206 application do not embrace the inclusion of sorbitol. However, this deficiency is cured by Modi. Modi teaches a hair conditioner that comprises a suitable solvent system (Claims 4, 5, and 13). The solvent used in the vehicle system may be a mixture of water and polyhydric alcohols having from 3 to 6 carbon atoms, such as sorbitol-water (col. 4 lines 21-28).
The idea for combining compounds each of which is known to be useful for the same purpose, in order to form a composition which is to be used for the same purpose, flows logically from their having been used individually in the prior art. See In re Kerkhoven 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). As shown by the recited teachings, the instant claims define nothing more than the concomitant use of conventional polyhydric alcohol solvents used in hair conditioner formulation. It would follow that the recited claims define prima facie obvious subject matter. See MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but they are not persuasive.
On page 9, Applicant argues that the provisional obviousness-type double patenting rejection should be withdrawn for the same reasons as argued against the obviousness rejections. This is not found persuasive for the same reasons as described in the response to arguments above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH ANNE MEYERS whose telephone number is (571)272-2271. The examiner can normally be reached Monday-Friday 8am-5pm ET.
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, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
Prosecution Insights