DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after April 27, 2023, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 04/27/2023 in the matter of Application N° 18/250,901. Said documents are entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after April 27, 2023, is being examined under the first inventor to file provisions of the AIA .
Thus, claims 1-14, represent all claims currently under consideration.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US20200206111), and Stevens et al. (US4891214)., and Kasprzak (US5300667), and Constantine et al. (US2018110702).
Lee et al. teach how to use a measurement device and a hair care and conditioning composition. Because of their simplicity and efficacy, oils have become more and more popular for dry hair treatments. olive oil, mineral oil, avocado oil, apricot kernel oil, rice bran oil, and coconut oil are among the frequently used oils. Conditioning chemicals, such as cationic surfactants and polymers, high melting point fatty compounds, low melting point oils, silicone compounds, and their combinations, are frequently used to provide conditioning benefits. Triglyceride oils of plant synthetic origin, such as liquid fatty triglycerides, can be referenced as examples of oils of plant or synthetic origin that may be utilized in the invention’s composition as liquid fatty esters (See 0004, 0005, and 0164). Lee et al. teach an oily composition, which is inherently emulsifiable. Additionally, Lee teaches hair conditioning and composition management. Propylene glycol and one or more monoalcohols with two to six carbon atoms are among the composition that are significantly anhydrous. A few fatty substances; and a few cationic surfactants (See abstract).
Lee et al. teach it is possible to combine the components of the instant disclosure into a kit. For instance, the kits might contain one or more other compositions, like shampoo, conditioner, etc. in addition to the minimum composition specified in the instant disclosure. The kits contain the different compositions separately. In certain cases, the kits come with a shampoo, conditioner, and one or more compositions based on the instant disclosure. The kits may additionally optionally include gloves, brushes, measuring instruments, mixing materials, instructions, etc. (See 0092). Various containers, including ready-to-use containers, may be used to package the mixtures. Tubes, jars, caps, unit dose packages, and bottles including squeezable bottles and tubes are non-limiting examples of practical packaging. For instance, a composition may be contained in the other tube. Examples of such compositions include shampoo, conditioner, and all in one shampoo/conditioner (also known as a conditioning shampoo or “co-wash”) (See 0093).
Regarding claims 1, 9, and 10, Stevens et al. teach a single-phase hair care product (“particulate emulsifiable hair conditioning that contains 40-80% by weight of aliphatic alcohol with eight or more carbons, or mixtures thereof; 20-60% of a quaternary ammonium compound, or mixtures of these, that are miscible with the alcohol mixture; and 2-10% of a fatty alkylamido, alkyldialkylamine of the general formula STR3, where n is 1-6. The product that can be emulsified with water before use (“emulsifiable”, claim 1): example 2. Guidelines based on example 3 that enable one to measure the required amounts: “adding 8 parts of the particulate product of example 2 (DPSC 131-130-1) to 92 parts of water”. It included around 0.5 parts of citric acid, enough to raise the pH to between 4 and 5. Almost instantly after stirring, an emulsion developed. This emulsion seemed stable and was kept at room temperature. Thus, an emulsion is created by metered water coming into contact with the emulsifiable hair care composition in a vessel, closing the vessel, and shaking it (“upon stirring”). Since the final mixture is liquid at 70 degrees Celsius (a “molten mixture”), it is an emulsion rather than a dispersion. Naturally, it makes no difference in this case whether the corporation or a customer does the emulsification. The emulsion is applied to human or animal hair to maintain it (“hair conditioning”) (See claim 1, example 2, and 3).
Lee et al. teach a one-step hair care method that may be applied after diluting it with water. Ethanol, or isopropyl alcohol, or at least one monovalent alcohol. The polyvalent alcohol propylene glycol is one example. An emollient that is at least one medium-chain triglyceride: Caprylic and capric triglycerides (See 0033, and 0172).
Lee et al. teach although it is not required to leave the composition on the hair for a long time, the compositions of the instant disclosure may be left on the hair for a minimal length of time before being washed off. For instance, the composition can be applied to the hair and left there for a few seconds (1-5 seconds) to up to 20 minutes, depending on whether it is mixed with another hair treatment product like shampoo or conditioner (See 0098).
Regarding claims 1, and 9, Kasprzak et al. teach a single phase hair care product (“Blend VIII was a smooth clear thick mixture”) that can be emulsified with water before application (“water dispersible”), as well as a measuring vessel for metering the product and/or water for application; the latter being a device with a scale or marking or having a correspondingly limited size that enables the application of the product and/or water, or instructions that enable an individual to meter the desired quantities (column 3, line 66 to column 4, line 2: “water solutions containing varying amounts of Blends I-VIII and up to about sixty-five percent by weight of water were prepared”).
Lee et al. teach a one-step hair care routine that can be diluted with water before application. A minimum of one monovalent alcohol, like ethanol or isopropyl alcohol. One polyvalent alcohol is propylene glycol. At least one medium-chain triglyceride that serves as an emollient: Caprylic/capric triglycerides (See 0033, and 0172).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the instant effective filing date to incorporate the teachings of Lee et al. into the teachings of Kasprzak et al. in which Lee demonstrates the application of a hair care and conditioning component. Since Lee et al. teach an oily composition, it is naturally emulsifiable, and Kasprzak et al. teach a measuring vessel for metering the product and/or water for application. The latter is a device that has a scale, marking, or a small size that allows the product and/or water to be applied, or instructions that allow a person to measure the amounts they want.
Regarding claims 1, 9, and 10, Constantine et al. teach the product is dissolved in a specific volume of water in one aspect. In one aspect, the unit dose of the current invention is distributed in 200-750 milliliters of water, or 200-500 milliliters of water, or roughly 250 milliliters of water (See 0102).
You can dilute Lee et al. one-step hair care method with water before using it. One monovalent alcohol, such as isopropyl or ethanol, at the very least. For example, propylene glycol is a polyvalent alcohol. At least one emollient-acting medium-chain triglyceride: Caprylic and capric triglycerides (See 0033, and 0172). It is not required to let the compositions of the instant disclosure stay on the hair for a long time; they can stay on the hair for a minimum amount of time before being rinsed off. For example, the composition can be applied to the hair and left there for a few seconds (1-5 seconds) to about 20 minutes, depending on whether it is mixed with another hair treatment composition like shampoo or conditioner (See 0098).
Regarding claim 2, Lee et al. teach a one-step hair care formula that can be diluted with water before use. A minimum of one monovalent alcohol, such as isopropyl alcohol, such as isopropyl or ethanol. Propylene glycol is at least one polyvalent alcohol. Myristyl alcohol is at least one long chain fatty alcohol. A minimum of one medium-chain triglyceride that also functions as an emollient: Triglycerides that are caprylic/capric (See 0033, and 0172).
Regarding claim 3, Lee et al. teach the one or more monoalcohols may be selected from ethanol, propanol, and butanol, and a mixture thereof. The total amount of monoalcohols can vary but is typically from about 5 to about 70 wt. %, based on the total weight of the composition (See 0033 and 0034).
Regarding claim 4, Lee et al. teach the compositions of the instant disclosure may optionally include additional glycols, for example, one or more glycols selected from ethylene glycol, and glycerin, and the total amount of additional glycols can vary but in some instances is from about 0.1 to about 50 wt. %, based on the total weight of the composition (See 0127).
Regarding claim 5, Lee et al. teach non-limiting examples of fatty compounds including fatty alcohols, and mixtures thereof. The total amount of fatty compounds in the compositions may vary but is typically from about 0.1 to about 20 wt. %, based on the total weight of the composition (See 0043 and 0044).
Regarding claim 6, Lee et al. teach among the quaternary ammonium salts of formula (III), those that are preferred are, on the one hand, alkyltrimethylammonium salts (See 0136).
However, in Lee et al. teaching there is no mention of 0.5 wt.% - 5 wt.% based on the total weight of the hair care composition therein.
Regarding claim 7, Lee et al. teach about 0.1 to about 10 wt. % of one or more fatty carbonate esters selected from dialkyl carbonates (See 0045, and claim 16).
Regarding claim 8, Lee et al. teach oils of plant origin or synthetic triglycerides that may be used in the composition of the invention as liquid fatty esters, the following can be cited, for example, triglyceride oils of plant or synthetic origin, such as liquid fatty acid triglycerides containing from 6 to 30 carbon atoms and present in a concentration 0.5-1 wt. % (See 0164 and 0172).
Regarding claims 11, 12, 13 and 14, Lee et al. teach the compositions include one or more monoalcohols having from 2 to 6 carbon atoms. For example, the one or more monoalcohols may be selected from ethanol, propanol, and butanol. The total amount of monoalcohols can vary but is typically from about 5 to about 70 wt. % (See 0033 and 0034). In addition to propylene glycol, the compositions may optionally include about 0.1 to about 50 wt. %, of one or more glycols selected from ethylene glycol, butylene glycol, and glycerin (See 0127).
However, in Lee et al. teaching there is no mention of polyhydric alcohol, but glycerin s a polyhydric alcohol.
In an embodiment, the solid fatty alcohol is chosen from myristyl alcohol. The total amount of the fatty alcohols in the composition, if present, may vary but is typically from about 0.1 to about 15 wt. %, based on the total weight of the composition (See 0055 and 0059).
About 0.1 to about 10 wt. % of one or more fatty alcohols selected from cetyl alcohol, myristyl alcohol, and lauryl alcohol, and a mixture thereof (See claim 14).
On the one hand, alkyltrimethylammonium salts are the most preferred of the quaternary ammonium salts of formula (III) (See 0136).
However, in Lee et al. teaching there is no mention of 0.5 wt.% - 5 wt.% based on the total weight of the hair care composition therein.
About 0.1 to about 10 wt. % of one or more fatty carbonate esters selected from dialkyl carbonates of formula: R1O(C═O)R2 (See claim 16).
Triglyceride oils of plant or synthetic origin, such as liquid fatty acid triglycerides with 6 to 30 carbon atoms and present in a concentration of 0.5-1 weight percent, are examples of the triglyceride oils of plant or synthetic origin that Lee teaches and that may be used in the composition of the invention as liquid fatty esters ((See 0164 and 0172).
About 0.1 to about 5 wt. % one or more cationic surfactants selected from cetrimonium chloride, and a mixture thereof; (See claim 16).
The composition comprising one or more fatty carbonate esters selected from dialkyl carbonates of formula: R1O(C═O)R2, preferably one or more fatty carbonates selected from C14-15 dicaprylyl carbonate, and a mixture thereof. About 0.1 to about 10 wt. % of one or more fatty esters selected from fatty carbonate esters and glycerol fatty esters (See claim 9 and 14). The composition comprising one or more glycerol fatty esters selected from caprylic/capric trigylcerides, and a mixture thereof (See claim 11).
Response to Arguments
Applicant's arguments filed June 9, 2025 have been fully considered but they are not persuasive.
Lee et al. teach oily hair conditioning compositions comprising fatty substances in combination with cationic surfactants, and further disclose that the compositions may be substantially anhydrous, comprising propylene glycol, one or more monoalcohols having two to six carbon atoms, fatty substances, and cationic surfactants. The presence of surfactants in combination with oily components renders the disclosed compositions inherently emulsifiable, meaning capable of forming an emulsion upon contact or mixing with water. As set forth in MPEP 2112, inherency does not require that the prior art expressly disclose the inherent property; it is sufficient that the property necessarily flows from the disclosure. Applicant argues that Lee et al. describe a hair conditioning product that is applied as a non-emulsified composition and that forms a lamellar phase in situ, which applicant asserts is distinct from an emulsion. Applicant further argues that Lee defines a lamellar phase as the packing of polar-head, long-chain nonpolar-tail molecules in an environment of bulk polar liquid (i.e. water from the hair), arranged as sheets of bilayers separated by bulk liquid, rather than spherical droplets.
This argument is not persuasive.
First, the claims do not exclude lamellar structures, nor do they require that the emulsion be present prior to application. A lamellar phase formed in the presence of water is a well-recognized structural arrangement of surfactant-oil-water systems, and such systems fall within the broader category of dispersed oil/surfactant structures formed upon contact with water. Second, the fact that Lee et al. describe in situ formation of lamellar structures does not negate emulsifiability. To the contrary, the ability of a surfactant-containing oily composition to recognize into Lamellar structures upon exposure to water demonstrates that the composition is capable of dispersion and organization within an aqueous environment, which is consistent with emulsifiable behavior. Third, applicant’s distinction between spherical emulsions and lamellar phases is a difference in microstructure, not a difference in functional capability. The claims are directed to compositions that are emulsifiable or usable in the presence of water, not to a specific droplet geometry. Absent claim language limiting the invention to spherical oil droplets, this distinction is non-limiting.
Accordingly, Lee et al. disclose or inherently teach the claimed emulsifiability, and applicant has not shown that the claimed subject matter yields unexpected results or a functional difference over the prior art.
In view of the teachings of Lee et al. it would have been obvious to one of ordinary skill in the art at the time of the invention to arrive at the claimed compositions, kits, and methods. Any differences between the claimed invention and Lee et al. amount to routine formulation choices or inherent properties that would have been reasonably expected to function as intended.
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 AlA. 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 |.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 1-14, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, and 13-20, of copending Application No. 18/044,187(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims disclose the hair care product, wherein the hair care composition comprises at least one monohydric alcohol, at least one polyhydric alcohol, at least one long-chain fatty alcohol, at least one quaternary ammonium salt, at least one emollient, and at least one medium-chain triglyceride.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Conclusion
No claim is allowed.
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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615