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 the Claims
Claims 1-10 and 12-20 are pending and under current examination.
Withdrawn Claim Rejections
All rejections under 35 U.S.C. 102 are withdrawn in view of the amendments to the claims filed 1/28/2026.
All rejections pertaining to claim 11 are moot because the claim in cancelled in the amendments to the claims filed 1/28/2026.
All rejections not reiterated have been withdrawn.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 10 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 10 contains a percentage range within the claim but fails to define what property the percentage is describing (e.g. weight or volume). This renders the claim indefinite because it is not clear what property of the respective composition component is encompassed by the claim.
Response to Arguments
The rejection of claim 10 under 35 U.S.C 112(b) over the indefiniteness of the phrase “about .1% to about 3%” has been withdrawn in view of the amendments to the claims filed 1/28/2026. However, the amendments to the claims have not addressed the indefiniteness concerns over the property described by the percentage range recited by the claim. Therefore, the rejection of claim 10 is maintained.
Claim Rejections - 35 USC § 103
Applicant’s amendments to the claims filed 1/28/2026 have necessitated the new grounds of rejection.
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 1-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (U.S. Patent Application No. 2021/0154116, publication date: 5/27/2021, cited in the IDS filed 7/3/2024, of record) in view of Mini Monai (Caprylic/capric triglycerides, available 7/20/2023, of record).
Applicant’s Invention
Applicant’s claim 1 is drawn to a composition comprising: (a) at least one first cationic compound chosen from esterquat compounds; (b) optionally at least one second cationic compound chosen from cationic surfactants other than esterquat compounds; (c) at least one branched fatty alcohol; and (d) at least one fatty ester. Applicant’s claim 19 is drawn to a method for treating hair, said method comprising: (1) applying to the hair a composition comprising: at least one first cationic compound chosen from esterquat compounds; optionally at least one second cationic compound chosen from cationic surfactants other than esterquat compounds; at least one branched fatty alcohol; and at least one fatty ester; and (2) rinsing the hair.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Lee discloses 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].
Regarding claim 2, Lee teaches that the esterquat compound may be present from about 0.1 to about 6% by weight based on the total weight of the composition [0023].
Regarding claim 3, Lee teaches that the esterquat compound may be present from about 1 to about 3% by weight based on the total weight of the composition [0023].
Regarding claim 4, Lee teaches that the esterquat compound may be distearoylethyl dimonium chloride [0027].
Regarding claims 5 and 6, Lee teaches that the second cationic compound may be present from about 0.001-about 10% by weight based on the total weight of the composition, including all ranges and subranges there between [0024].
Regarding claim 7, Lee teaches that the second cationic compound may be behentrimonium chloride [0029].
Regarding claims 8 and 9, Lee teaches that the branched fatty alcohol may be isocetyl alcohol, isostearyl alcohol, 2-octyl-1-dodecanol, 2-butyloctanol, 2-hexyl-1-decanol, 2-decyl-1-tetradecanol, 2-tetradecyl-1-cetanol or mixtures thereof [0064].
Regarding claim 10, Lee teaches that the fatty alcohol is present from about 0.1-about 3% by weight based on the total weight of the composition [0066].
Regarding claims 12 and 18, Lee teaches that the glycerol ester may include caprylic/capric triglyceride [0045].
Regarding claims 13 and 14, 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]. Lee also teaches that the compositions comprise synergistic combinations of cationic compounds and hydrocarbon oils and synergistic combinations of cationic compounds and glyceryl esters, which separately or in combination lead to improved properties [0020].
Regarding claim 15, Lee teaches that the weight ratio of the total amount of first and second cationic compounds to the total amount of glyceryl esters ranges from about 1:10 to about 10:1 [0015].
Regarding claim 16, Lee teaches that the weight ratio of the total amount of first and second cationic compounds to the total amount of glyceryl esters ranges from about 1:5 to about 5:1 [0015].
Regarding claim 17, Lee discloses 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]. Lee teaches that the esterquat compound may be present from about 1 to about 3% by weight based on the total weight of the composition [0023], the second cationic compound may be present from about 0.001-about 10% by weight based on the total weight of the composition, including all ranges and subranges there between [0024], the fatty alcohol is present from about 0.1-about 3% by weight based on the total weight of the composition [0066], the glyceryl ester is present from about 0.001 to about 10% by weight based on the total weight of the composition, including all ranges and sub-ranges there between [0055], and the weight ratio of the total amount of first and second cationic compounds to the total amount of glyceryl ester ranges from about 1:10 to about 10:1 [0015]. Lee also teaches that the glycerol ester may include caprylic/capric triglyceride [0045].
Regarding claim 19, Lee teaches a method for treating hair, said method comprising: 1) applying to the hair a composition comprising : (a) at least one first cationic compound chosen from esterquat compounds ; (b) at least one second cationic compound chosen from (i) cationic surfactants other than esterquat compounds , or (ii) cationic polymers; ; (c) at least one hydrocarbon oil ; (d) optionally at least one glyceryl ester; and (e) at least one fatty alcohol and 2) rinsing the hair [0017].
Regarding claim 20, Lee teaches that in certain embodiments, step 1 is conducted after treating the hair with a shampoo [0017].
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.02)
Regarding claims 1, 12, 17, 18, and 19, Lee does not teach the inclusion of coconut oil in the composition. However, this deficiency is cured by Mini Monai.
Mini Monai teaches that caprylic/capric triglycerides have a similar effect as pure coconut oil in hair care, leaving the hair smooth and may help with tangling (pg. 2, What is Caprylic/Capric Triglycerides and why to use it?).
Regarding claims 13 and 14, 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.
Finding of a Prima Facia Obviousness Rationale and Motivation
(MPEP §2142-2143)
Regarding claims 1, 12, 17, 18, and 19, based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (caprylic/capric triglycerides and coconut oil for forming a hair conditioner composition that leaves the hair smooth and helps with tangling). See MPEP 2144.06 (II).
Regarding the weight ratio of first and second cationic compounds to the branched fatty alcohol as specified in claims 13 and 14, 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 Applicants' specification provides no evidence that the selected weight ratios in claims 13 and 14 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.
Response to Arguments
Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive.
On page 7, Applicant argues that the composition of the instant invention is unexpectedly superior over the disclosure of Lee. 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 examples of Lee. However, Rele et. al. (Journal of Cosmetic Science, pg. 175-192, publication year: 2003) 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) 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 (the compositions of Lee) would provide superior hair conditioning performance. Furthermore, the evidence of unexpected results does not clearly isolate the effect of coconut oil compared to other ingredients in the composition. The inventive conditioner contains behentrimonium chloride, a known conditioning agent (Humblebee and Me, pg. 2, What is it?), and octyldodecanol, a known emollient that smooths and softens hair (Bjornsson, pg. 2, Four Benefits of Using Octyldodecanol), while the comparative conditioners do not. 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 and statistical significance.
Evidence of unexpected properties must be in commensurate scope with the claims: The evidence of unexpected results amounts to 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 examples of Lee. However, the instant claim 1 embraces a fatty ester chosen from olive oil, coconut oil, jojoba oil, and shea butter oil. In order to be in commensurate scope with the claims, the evidence of unexpected results must demonstrate an improved hair texture for compositions that contain each and every fatty ester embraced by the instant claim. The example 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 10, Applicant argues that the art does not suggest using olive oil, jojoba oil, and shea butter oil, and therefore fails to account for what is claimed. This is not found persuasive. In response, the examiner respectfully refers to the language of the amended claims which requires at least one of the listed species of fatty ester and does not require each and every species listed to be present in the claim. The teachings of Lee in view of Mini Monai therefore render obvious the limitations of the instant claims.
Double Patenting
Applicants amendments to the claims filed 1/28/2026 have necessitated the new grounds of rejection.
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 1-4, 10, 12, 15, 16, 19, and 20 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 claims of the ‘206 application also embrace a method for treating hair comprising applying the composition to the hair and rinsing, optionally with a preceding step of shampooing the hair.
The claims of the ‘206 application do not embrace a fatty ester encompassed by the instant claims 1 and 12. 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 5-7, 13, and 14 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 1-4, 10, 12, 15, 16, 19, and 20 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 of claim 1 above. The claims of the ‘206 application do not embrace a 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).
Based on these teachings, it would have been prima facie, obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (cationic surfactants and cationic polymers for the purpose of conditioning hair). See MPEP 2144.06 (II).
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.
Regarding the weight ratio of first and second cationic compounds to the branched fatty alcohol as specified in the instant claims 13 and 14, 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, the claims of the ‘206 application embrace a hair conditioning composition comprising from about 1 to about 2% of esterquat compounds, from about 0.05-about 1% by weight of cationic polymer, and from 0.5 to about 10% by weight fatty alcohol. The Applicants' specification provides no evidence that the selected weight ratios in the instant claims 13 and 14 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to the overlapping weight ranges of cationic compounds and fatty alcohols embraced by the claims of the ‘206 application, 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 claims. 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 render advantageous formulation effects.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8 and 9 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 1-4, 10, 12, 15, 16, 19, and 20 above, and further in view of Cosmetics Info (Octyldodecanol, available 9/2/2013, 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 of claim 1 above. The claims of the ‘206 application also embrace fatty alcohols such as stearyl alcohol. The claims of the ‘206 application do not embrace the branched fatty alcohols encompassed by the instant claims 8 and 9. However, this deficiency is cured by Cosmetics Info. Cosmetics Info teaches that stearyl alcohol, oleyl alcohol, and octyldodecanol are used in hair conditioners to help form emulsions or prevent and emulsion from separating. They also reduce the tendency of finished products to generate foam when shaken (pg. 1, Why is it used in cosmetics and personal care products?).
Based on these teachings, it would have been prima facie, obvious to one of ordinary skill in the art, at the time the invention was made, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (linear fatty alcohols and 2-octyl-1-dodecanol for the purpose of forming emulsions and reducing foaming). See MPEP 2144.06 (II). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 17 and 18 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), Science-y Hair Blog (Cationic Compounds in Cosmetics, available 7/30/2011, of record), and Cosmetics Info (Octyldodecanol, available 9/2/2013, 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 in the double patenting rejection of the instant claim 1. The claims of the ‘206 application do not embrace behentrimonium chloride, 2-octyl-1-dodecanol, coconut oil as a fatty ester, or a weight ratio of cationic compounds to fatty ester. These limitations have been rendered obvious in the double patenting rejections of claims 1-4, 10, 12, 15, 16, 19, and 20, 5-7, 13, and 14, and 8 and 9 as set forth above.
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 1/28/2026 have been fully considered but they are not persuasive.
On page 11, Applicant argues that the double-patenting rejections are based on co-pending application 17/101,206, the same reference (Lee) applied in the obviousness rejections above and therefore should be withdrawn for the same reasons as argued for the obviousness rejections. This is not found persuasive for the same reasons as stated above in the response to arguments against the obviousness rejections under 35 U.S.C. 103.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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.
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.
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ELIZABETH ANNE MEYERSExaminer, Art Unit 1617
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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