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 .
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.
Claim Status
Applicant’s amendment of 06/25/2025 is acknowledged. Claims 16, 20, 30-31, and 34-35 are amended, and claim 29 is cancelled. Claims 16-28 and 30-35 are currently pending and are examined on the merits herein.
Priority
The instant application is a 371 of PCT/JP2021/044601 filed on 11/30/2021 and claims foreign priority to JP2020-199437 filed on 12/01/2020 and FR2100202 filed on 01/11/2021 as reflected in the filing receipt dated on 12/13/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Declaration Under 37 CFR 1.132
Kazumitsu Kawakami provided a Declaration under 37 CFR 1.132, filed 09/24/2025. The Declaration meets the formal requirements. In the most relevant part, the Declaration presents results of a composition for treating keratin fibers comprising citric acid (i.e. the representative hydroxyl acid or salt thereof) in an amount of 1 wt.% compared to the same composition comprising only 0.5 wt.% citric acid. A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5) whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)).
The Declaration under 37 CFR 1.132 filed 09/24/2025 is insufficient to overcome the rejection of claims 16-35 based upon Cho applied under 35 U.S.C. 103 as set forth in the last Office action for the following reasons:
The relevant criteria here are No. 1 and 5, whether the Declaration presents a nexus such as a side-by-side or single-variable comparison and whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness. The Examiner has carefully reviewed the Declaration, including the data presented in the Declaration. The data show a comparison, wherein a composition for treating keratin fibers comprising 1 wt.% citric acid, which lies within the instantly claimed ranges of amended independent claims 16, 30, and 35, provides allegedly superior sensory feeling effects, whereas a composition comprising 0.5 wt.% citric acid provides allegedly inferior effects.
In providing a single-variable comparison, Applicant fails to provide sufficient evidence to establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). For example, the Smoothness (COF) and sensory assessments of smoothness, combing, and softness provided by both compositions appear to be very similar, absent any showing that there is a statistically significant difference between the values achieved by each composition. Based on the reported scores, wherein a score of “3” is considered “Parity to benchmark” and “4” is considered “Better than benchmark” (Instant Specification, Page 25), and given that both compositions received scores within the “3” to “4” range, it is unclear whether Example 4 provides statistically superior effects compared to Comparative Example 4.
Even if Applicant’s results were shown to be statistically significant, in view of Kleen (discussed in prior art rejections below), it is unclear whether Applicant’s allegedly unexpected results are actually unexpected. For example, Kleen, whose compositions do comprise both the claimed amounts of hydroxy acid(s) or salt(s) thereof and the claimed amount of cationic polyamino acid, teaches that the use of short-chain carboxylic acids as active ingredients can significantly restructure keratinic fibers, wherein restructured fibers are characterized by improved sheen, easier handling, and easier combining (Page 80). Thus, in view of the prior art, at least some benefits Applicant alleges are unexpected like combing, and arguably smoothness and softness, are actually not unexpected.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Withdrawn Objections and Rejections
Applicant’s amendment to claim 31 has overcome the previous objection to the claim. Thus, the objections are hereby withdrawn.
Applicant’s cancellation of claim 29 has rendered moot the previous 112(b) rejection. Thus, the rejections are hereby withdrawn.
Applicant’s amendments to the claims and cancellation of claim 29 have overcome/rendered moot the previous 102 rejections. Thus, the rejections are hereby withdrawn. Applicant’s amendment to the claims has prompted the new/revised grounds of rejection presented herein.
Applicant’s cancellation of claim 29 has rendered moot the previous 103 rejection over this claim. Thus, the rejection is hereby withdrawn.
Applicant’s cancellation of claim 29 has rendered moot the previous nonstatutory double patenting rejection over this claim. Thus, the rejection is hereby withdrawn.
Applicant’s amendment to the claims has prompted the new/revised grounds of rejection presented herein under 112(a), 102, 103, and nonstatutory double patenting. Applicant’s arguments insofar as they pertain to the revised grounds of rejection are addressed herein.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
New Matter Rejection
Claims 16, 30, and 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “wherein the amount of hydroxy acid(s) or salt(s) thereof (a) is 1% by weight or more, relative to the total weight of the composition” has been added to independent claims 16, 30, and 35 in the amendment filed on 09/24/2025. However, the instant disclosure does not provide support for the claimed amount “or more” as recited in the amended claims. In particular, the instant specification and claims as originally filed do not disclose amounts of hydroxy acid(s) or salt(s) thereof of greater than 20% by weight, relative to the total weight of the composition.
If Applicant believes this rejection is in error, Applicant must disclose where in the specification support for the entire scope of the amendment(s) and/or new claims can be found. As a result, claims 16, 30, and 35 represent new matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16-24, 27-28, and 30-34 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kleen (WO0232383A2; published: 04/25/2002; indicates US as a Designated State; PTO-892 of instant action).
Kleen teaches use of short-chain carboxylic acids for restructuring keratin fibers and as a component of an active ingredient combination in skin and hair treatment compositions (Abstract and Page 78).
Regarding claim 16: At least four compositions disclosed by Kleen, in which all quantities are parts by weight (Page 104, Examples), read on the instantly claimed composition.
Kleen’s Example 1 is a hair conditioner comprising: 2.0% Gluadin® WQ; 0.4% citric acid; 0.7% tartic acid; and water, among other ingredients (Page 105). Gluadin® WQ is taught as 31% active substance laurdimonium hydroxypropyl hydrolyzed wheat protein and thus equates to 0.62% laurdimonium hydroxypropyl hydrolyzed wheat protein by weight of the composition, which lies within and thus anticipates the claimed amount of cationic polyamino acid. The combined amount of citric acid and tartic acid equates to 1.1% by weight of the composition, which lies within and thus anticipates the claimed amount of hydroxy acid. Water reads on the same as instantly claimed.
Kleen’s Example 5 is a hair treatment composition comprising: 3.0% Gluadin® WQ; 1.5% glyceric acid; and water, among other ingredients (Pages 107-108). The amount of Gluadin® W20 equates to 0.93% laurdimonium hydroxypropyl hydrolyzed wheat protein by weight of the composition, which lies within and thus anticipates the claimed amount of cationic polyamino acid. The amount of glyceric acid lies within and thus anticipates the claimed amount of hydroxy acid. Water reads on the same as instantly claimed.
Kleen’s Example 6 is a hair treatment composition comprising: 3.0% Promois® Milk Q; 1.8% glycolic acid; and water, among other ingredients (Page 108). Promois® Milk Q is taught as 30% active substance hydroxypropyltrimonium hydrolyzed casein and thus equates to 0.9% hydroxypropyltrimonium hydrolyzed casein by weight of the composition, which lies within and thus anticipates the claimed amount of cationic polyamino acid. The amount of glycolic acid lies within and thus anticipates the claimed amount of hydroxy acid. Water reads on the same as instantly claimed.
Kleen’s Example 8 is a shampoo composition comprising: 4.0% Gluadin® WQ; 0.5% lactic acid; 0.5% malic acid; and water, among other ingredients (Page 109). The amount of Gluadin® W20 equates to 1.24% laurdimonium hydroxypropyl hydrolyzed wheat protein by weight of the composition, which lies within and thus anticipates the claimed amount of cationic polyamino acid. The combined amount of lactic acid and malic acid equates to 1% by weight of the composition, which lies within and thus anticipates the claimed amount of hydroxy acid. Water reads on the same as instantly claimed.
Regarding claim 17: The citric and tartaric acids of Kleen’s Example 1 each comprise two carboxylic acid groups, as evidenced by their chemical structures, and thus meet the claim.
Regarding claim 18: The citric and tartaric acids of Kleen’s Example 1, the glyceric acid of Kleen’s Example 5, the glycolic acid of Kleen’s Example 6, and the lactic and malic acids of Kleen’s Example 8 are alpha-hydroxy acids, as evidenced by their chemical structures, and thus meet the claim.
Regarding claim 19: The citric and tartaric acids of Kleen’s Example 1, the glycolic acid of Kleen’s Example 6, and the lactic and malic acids of Kleen’s Example 8 read on the same, or mixtures of two or more thereof, as instantly claimed.
Regarding claim 20: The amounts of the citric and tartaric acids of Kleen’s Example 1, the glyceric acid of Kleen’s Example 5, the glycolic acid of Kleen’s Example 6, and the lactic and malic acids of Kleen s Example 8 lie within and thus anticipated the claimed range.
Regarding claim 21: The laurdimonium hydroxypropyl hydrolyzed wheat protein of Kleen’s Examples 1, 5, and 8 are derived from plants and thus meet the claim.
Regarding claim 22: The laurdimonium hydroxypropyl hydrolyzed wheat protein of Kleen’s Examples 1, 5, and 8 and the hydroxypropyltrimonium hydrolyzed casein of Kleen’s Example 6 each comprise at least one quaternary ammonium group, as evidenced by their “dimonium” and “trimonium” chemical structures, respectively, and thus meet the claim.
Regarding claim 23: Kleen teaches a limited list of suitable cationic protein hydrolysates for use in its compositions—including cocodimonium hydroxypropyl hydrolyzed soy protein, cocodimonium hydroxypropyl hydrolyzed wheat protein, hydroxypropyltrimonium hydrolyzed conchiolin protein, hydroxypropyltrimonium hydrolyzed soy protein, hydroxypropyltrimonium hydrolyzed wheat protein, steardimonium hydroxypropyl hydrolyzed soy protein, and steardimonium hydroxypropyl hydrolyzed wheat protein, as well as several forms of cationized collagen and cationized gelatin—as suitable alternatives to laurdimonium hydroxypropyl hydrolyzed wheat protein and/or hydroxypropyltrimonium hydrolyzed casein (Pages 39 and 95). Kleen further teaches that plant-based cationic protein hydrolysates are particularly preferred (Page 96). Therefore, an ordinarily skilled artisan could at once envisage an embodiment wherein the laurdimonium hydroxypropyl hydrolyzed wheat protein of Kleen’s Examples 1, 5, and 8 or the hydroxypropyltrimonium hydrolyzed casein of Kleen s Example 6 is, alternatively, any of the above recited plant-based cationic polyamino acids, or mixtures thereof, which read on the same as instantly claimed.
Regarding claim 24: The amount of laurdimonium hydroxypropyl hydrolyzed wheat protein of Kleen’s Examples 1, 5, and 8 and the amount of hydroxypropyltrimonium hydrolyzed casein of Kleen’s Example 6 each lie within and thus anticipate the claimed range.
Regarding claim 27: Kleen’s Example 1 further comprises Dehyquart® AC-A, Example 5 further comprises Dehyquart® F75, Example 6 further comprises Genamin® DSAC (taught in footnotes as distearyldimethylammonium chloride), and Example 8 further comprises Arquad® 31 (taught in footnotes as tri-C16-alkylmethylammonium chloride). Kleen teaches that trialkylmethylammonium chlorides, distearyldimethylammonium chloride, and esterquats sold under the trademark Dehyquart® are all cationic surfactants (Page 92) and, therefore, read on the claimed cationic surfactant different from the cationic polyamino acid.
Regarding claim 28: Kleen s Example 1 further comprises Eumulgin® B2 (taught in footnotes as cetylstearyl alcohol + 20EO), which is a nonionic surfactant (Pages 89-90) and, therefore, reads on the claimed nonionic surfactant.
Regarding claim 30: Kleen teaches that the active ingredient (e.g. the hydroxycarboxylic acids, see Page 82), according to the invention is applied to keratin fiber in the form of, for example, creams, lotions, solutions, emulsions, etc. (Page 102). Thus, the method disclosed by Kleen whereby its compositions, which as discussed above comprise all claimed ingredients in the claimed amounts, are applied to the hair reads on the instantly claimed method. It is noted that the recitation “for treating keratin fibers” is an intended outcome of applying the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the hair conditioning composition of Kleen is capable of performing the intended use, and the prior art further discloses the same application step as claimed, then it meets the claim. Note: MPEP 2111.02.
Regarding claims 31-34: Kleen’s method further reads on these claims because the applied compositions of Kleen comprise the claimed ingredients in the claimed amounts, as discussed in detail above as related to claims 17-20.
Response to Arguments
Applicant’s arguments submitted on 09/24/2025 with respect to rejections under 35 U.S.C. 102 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-28 and 30-35 are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US6620410B1; 09/16/2003; PTO-892 of 06/25/2025).
Cho discloses methods and materials for improving or maintaining hair care which provide protection against sun exposure and repeated chemical treatment (Abstract).
In an exemplary embodiment (Col. 11-12, Example 4), a hair conditioning composition comprises: 0.1% w/w citric acid; 0.25% w/w cocodimonium hydroxypropyl hydrolyzed wheat protein; 3% behentrimmonium methosulfate, lanolinamidopropyldimonium ethosulfate, and cetearyl alcohol; 1.1% w/w cetyl alcohol; 0.75% w/w stearyl alcohol; and 80.62% w/w water; among other ingredients.
Citric acid reads on the at least one hydroxy acid recited in instant claims 16-20 and 30-35 as evidenced by the structure of citric acid and the instant specification, which states that it is preferable that the hydroxy acid have two or more carboxylic groups and be selected from α-hydroxy acid and even more preferable that the hydroxy acid be selected from citric acid, among others (Instant Specification, Page 7, lines 35-48).
Regarding the amount of hydroxy acid recited in instant claims 16, 20, 30, 34, and 35: Cho teaches citric acid as a chelator, wherein the chelator can be, by weight from about 0.05% to about 2.5% of the composition (Col. 2, lines 23-30). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of citric acid by using 2.5 wt.%, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization in order to achieve a composition that effectively binds transition metals or other metals that act as catalysts for auto-oxidation (Col. 7, lines 3-31).
Cocodimonium hydroxypropyl hydrolyzed wheat protein reads on the at least one cationic polyamino acid recited in instant claims 16, 21-24, 30, and 35 as evidenced by the instant specification, which states that cocodimonium hydroxypropyl hydrolyzed wheat protein is a preferable cationic polyamino acid derived from plant proteins and comprising at least one quaternary ammonium group (Instant Specification, Page 9, lines 1-36). The amount of cocodimonium hydroxypropyl hydrolyzed wheat protein disclosed by Cho lies within and thus renders obvious the ranges recited in instant claims 16, 24, 30, and 35.
Water reads on the same recited in instant claims 16, 30, and 35.
It is noted that the recitation “for treating keratin fibers” in instant claim 16 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the hair conditioning composition of Cho is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02.
Regarding the amount of water recited in instant claim 25, the amount of water disclosed by Cho, 80.62% w/w, closely approaches the instantly claimed range of 50% to 80% by weight relative to the total weight of the composition. Cho further teaches the use of cellulose analogs, such as the hydroxypropylmethylcellulose in the hair conditioning composition of Example 4 (Col. 11-12, Example 4), as thickeners in hair care compositions and suggests that in some cases, the ratio of a thixotropic thickener to water can be high (Col. 7, lines 33-64). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Cho by adjusting the amount of water in the composition relative to the amount of hydroxypropylmethylcellulose, as taught by Cho. One of ordinary skill in the art would have been motivated to manipulate the ratio of water to thickener through routine experimentation in order to yield the predictable result of a hair conditioning composition with an optimal viscosity. One of ordinary skill in the art would have a reasonable expectation of success because Cho teaches that the ratio of thickener to water can be adjusted and, specifically, the ratio of thickener to water can be high, which would require lowering the concentration of water, and that other variations may be employed to prepare the hair care compositions (Col. 8, lines 1-2).
Further, it is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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). Given that applicant did not point out the criticality of the water concentration of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
Regarding instant claim 26, while Cho is silent as to the exact pH of the composition, Cho also teaches that the final pH of the product should be between 4.0 and 8.5, as hair care compositions having a pH within this range have improved stability and are aesthetically pleasing and compatible with skin or hair, and that a pH-adjusting agent can be used to adjust the pH (Col. 9, lines 65-67 and Col. 10, lines 1-13). Thus, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH using 4.0, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization since the reference teaches that any pH between 4.0 to 8.5 is suitable for producing a hair care composition.
Regarding instant claim 27, Cho discloses that behentrimmonium methosulfate and lanolinamidopropyldimonium ethosulfate are cationic surfactants (Col. 8, lines 58-67). Thus, the ingredients meet the claim, which allows for more than one cationic surfactant different from the cationic polyamino acid by reciting the limitation “at least one”.
Regarding instant claim 28, Cho discloses that cetyl alcohol and stearyl alcohol are nonionic surfactants (Col. 8, lines 34-48). Thus, the ingredients meet the claim, which allows for more than one nonionic surfactant by reciting the limitation “at least one”.
Regarding instant claim 30, the conditioning composition of Example 4 was evaluated for ease of application (Col. 15, Example 8, lines 15-33 and Table 5), indicating that the conditioning composition of Example 4 was applied to the hair of respondents. Cho also specifically discloses a method for treating hair, comprising applying the composition to said hair (Claim 13). Hair is an example of keratin fibers as evidenced by the instant specification (Page 3, lines 3-5). Thus, the method of Cho reads on the instantly claimed method. It is noted that the recitation “for treating keratin fibers” is an intended outcome of applying the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the hair conditioning composition of Cho is capable of performing the intended use, and the prior art further discloses the same application step as claimed, then it meets the claim. Note: MPEP 2111.02.
Regarding instant claim 35, Cho further discloses that the conditioning composition of Example 4 was prepared by mixing the ingredients (Col. 11, lines 45-50), which reads on the claimed method. It is noted that the recitation “wherein the composition enhances or improves the smoothness of keratin fibers when applied onto the keratin fibers,” is an intended use of the composition obtained by the claimed active method steps. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the hair conditioning composition of Cho is capable of performing the intended use then it meets the claim. Note: MPEP 2111.02. Cho specifically discloses that respondents who used, i.e. applied, the composition reported improved silky feel, i.e. smoothness, compared to the leading salon brand conditioner, which further supports that applying the composition of Cho enhances or improves the smoothness of keratin fibers.
Claims 16-28 and 30-35 are rejected under 35 U.S.C. 103 as being unpatentable over Kleen (WO0232383A2; published: 04/25/2002; indicates US as a Designated State; PTO-892 of instant action), as applied to claims 16-24, 27-28, and 30-34 above, and further in view of Silverson (webpage <https://www.silverson.com/us/resource-library/application-reports/manufacture-of-shampoos>; published: 06/29/2017).
Claims 16-28 and 30-35 are rejected above as being unpatentable over Cho. The claims are further rejected herein to demonstrate that claims 25-26 and 35 are also obvious in view of Kleen and Silverson.
Kleen teaches the invention(s) of claims 16-24, 27-28, and 30-34 as discussed in detail above and further incorporated herein.
However, Kleen is silent as to the exact pH of the compositions and does not expressly teach the amount of water recited in claim 25 or the active step of mixing as recited in the method of claim 35.
Silverson, throughout the reference, teaches the manufacturing of shampoos, wherein formulations typically comprise 50 – 60% water to dilute ingredients and a pH of 5 – 6 (Page 2).
Regarding claim 25: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of water in the composition of Kleen, for example Kleen’s Example 8 shampoo composition, using 50 – 60 wt.%, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization because Silverson teaches that this amount is routinely used to sufficiently diluent all other ingredients in shampoo compositions.
Further, it is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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). Given that applicant did not point out the criticality of the water concentration of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
Regarding claim 26: While Kleen is silent as to the pH of its exemplary compositions, the reference further teaches that the pH of the preparations is preferably between 2 and 11, and that virtually any acid or base for cosmetic use, including the active hydroxycarboxylic acids, can be used to adjust the pH (Page 102). Thus, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH of the composition of Kleen, for example Kleen’s Example 8 shampoo composition, using 5 – 6, which lies within and thus renders obvious the instantly claimed range, as a starting point for routine optimization since Silverson teaches this pH is most commonly used to formulate shampoos.
Regarding claim 35: Silverson further teaches that high shear mixers, which dramatically reduce mixing times (Pages 3-5), are used to manufacture shampoos, wherein water is first added to the vessel followed by surfactants and other additives and ingredients (Page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of Silverson, which involves mixing all ingredients in water, to formulate the composition of Kleen, for example Kleen’s Example 8 shampoo composition, because Silverson teaches that this method is routinely used to manufacture shampoos of widely differing viscosities (Page 4). It is noted that the recitation “wherein the composition enhances or improves the smoothness of keratin fibers when applied onto the keratin fibers,” is an intended use of the composition obtained by the claimed active method steps. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of Kleen and Silverson is capable of performing the intended use then it meets the claim. Note: MPEP 2111.02.
An ordinarily skilled artisan would have a reasonable expectation of success in modifying the prior art composition as proposed because all ingredients, concentrations, and parameters are taught as routine in the prior art for manufacturing shampoos, and Kleen teaches that any pH between 2 to 11 is suitable to formulate its compositions (Abstract).
Response to Arguments
Applicant’s arguments submitted on 09/24/2025 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but were not found to be persuasive.
Regarding Applicant’s argument of allegedly unexpected results, the Examiner reiterates that, as discussed in detail above under “Declaration under 37 CFR 1.132”, the Declaration is insufficient to overcome the rejection of the instant claims in view of Cho because Applicant fails to provide sufficient evidence to establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Even if Applicant’s results were shown to be statistically significant, in view of Kleen (discussed in prior art rejections above), it is unclear whether Applicant’s allegedly unexpected results are actually unexpected. For example, Kleen, whose compositions do comprise both the claimed amounts of hydroxy acid(s) or salt(s) thereof and the claimed amount of cationic polyamino acid, teaches that the use of short-chain carboxylic acids as active ingredients can significantly restructure keratinic fibers, wherein restructured fibers are characterized by improved sheen, easier handling, and easier combining (Page 80), suggesting that at least some benefits Applicant alleges are unexpected like combing, and arguably smoothness and softness, are actually not unexpected in view of the prior art.
The Examiner notes that Applicant’s arguments regarding the criticality of the claimed amount of polyamino acid are unpersuasive in view of Cho and/or Kleen, whose compositions each read on the claimed amount of polyamino acid.
In view of the foregoing, the prior art rejections of record are maintained.
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 16-28 and 30-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 15-16, and 18-20 of copending Application No. 18/355442 in view of Cho (US6620410B1; 09/16/2003; PTO-892 of 06/25/2025).
App. ‘442 claim 1 recites a hair treatment composition comprising: (a) about 1 to about 8 wt.% of citric acid, a salt thereof, or a mixture thereof; about 1 to 10 wt.% of one or more cationic surfactants; optionally, about 0.1 to about 5 wt.% of one or more nonionic surfactants or emulsifiers; and about 60 to about 85 wt.% of water; among other ingredients, wherein all weight percentages are based on a total weight of the composition. Citric acid reads on the at least one hydroxy acid or salt thereof recited in instant claims 16-20 and 30-35. The amount of citric acid overlaps and thus renders obvious the ranges recited in instant claims 16, 20, 30, 34, and 35. Water reads on the same recited in instant claims 16, 25, 30, and 35. The amount of water lies within and thus anticipates the range recited in instant claim 25. The one or more cationic surfactants and one or more nonionic surfactants reads on instant claims 27 and 28, respectively. App. ‘442 claim 2 recites that the composition has a pH of about 3 to about 6, which lies within and thus anticipates the range recited in instant claim 26. App. ‘442 claim 15 recites that the composition comprises about 0.01 to about 5 wt.% of one or more cationic conditioning polymers, and claim 16 recites that the cationic conditioning polymers are selected from cocodimonium hydroxypropyl hydrolyzed soy protein, hydroxypropyltrimonium hydrolyzed soy protein, cocodimonium hydroxypropyl hydrolyzed wheat protein, hydroxypropyltrimonium hydrolyzed wheat protein, stearyldimonium hydroxypropyl hydrolyzed wheat protein, among others, which reads on 5 out of 9 possible cationic polyamino acid species recited in instant claim 23 and thus renders obvious the cationic polyamino acid recited in instant claims 16, 21-24, 30, and 35.
Regarding the amount of cationic polyamino acid recited in instant claims 16, 24, 30, and 35, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of cationic conditioning polymer within the range recited in App. ‘442 claim 15, which overlaps the instantly claimed range, since the reference teaches that any amount between about 0.01 to about 5 wt.% is suitable for producing a hair treatment composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
App. ‘442 claim 18 recites a hair care composition comprising all limitations of claims 1 and 15. App. ‘442 claim 19 recites a method for treating hair comprising applying the composition to the hair, which together with the composition of App. ‘442 claim 16 renders obvious the method recited in instant claim 30.
It is noted that the recitation “for treating keratin fibers” in instant claims 16 and 30 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the hair treatment composition recited in the claims of App. ‘442 is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02.
The claims of App. ‘442 differ from the instant claims in that the claims of App. ‘442 do not recite a method comprising a mixing step as recited in instant claim 35.
The teachings of Cho are as set forth above and further incorporated herein.
Regarding instant claim 35, it would have been obvious to one of ordinary skill in the art to use the method of Cho in order to prepare the hair treatment composition recited in the claims of App. ‘442. It would have been obvious and there is a reasonable expectation of success because Cho teaches that the active step of mixing the ingredients is known in the art to produce hair care compositions comprising similar ingredients that result in improved silky feel upon application to hair.
It is noted that the recitation “wherein the composition enhances or improves the smoothness of keratin fibers when applied onto the keratin fibers,” recited in instant claim 35 is an intended use of the composition obtained by the claimed method. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of App. ‘442 claims and Cho is capable of performing the intended use then it meets the claim. Note: MPEP 2111.02.
This is a provisional nonstatutory double patenting rejection.
Claims 16-28 and 30-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, 12, and 14-15 of copending Application No. 18/721076 in view of SLK Clinic (06/19/2018; PTO-892 of 06/25/2025) and Cho (US6620410B1; 09/16/2003; PTO-892 of 06/25/2025).
App. ‘076 claims 1 and 15 recite a composition comprising: at least one cationic polymer, at least one monovalent non-polymeric acid or a salt thereof, and water, among other ingredients. Water reads on the same recited in instant claims 16, 25, 30, and 35. App. ‘076 claim 3 recites exemplary cationic polymers, including cationic (co)polyaminoacids such as collagen, among four others. Therefore, one of ordinary skill in the art could immediately envision an embodiment wherein the cationic polymer of choice cationic collagen, which anticipates the cationic polyamino acid recited in instant claims 16, 22-24, 30, and 35. Claim 4 recites that the amount of the cationic polymer is preferably from 0.1% to 5% by weight relative to the total weight of the composition.
Regarding the amount of cationic polyamino acid recited in instant claims 16, 24, 30, and 35, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of cationic conditioning polymer within the range recited in App. ‘076 claim 4, which overlaps the instantly claimed range, since the reference teaches that any amount between 0.1% to 5% by weight relative to the total weight of the composition is suitable for producing a hair treatment composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
App. ‘076 claim 5 recites that the monovalent non-polymeric acid is preferably lactic acid, which reads on the at least one hydroxy acid or salt thereof recited in instant claims 16, 18-20, and 30-35. App. ‘076 claim 6 recites that the amount of monovalent non-polymeric acid or salt thereof is preferably from 0.1% to 10% by weight of the total composition, which overlaps and thus renders obvious the ranges recited in instant claims 16, 20, 30, 34, and 35. App. ‘076 claim 7 recites that the amount of water is preferably from 50% to 80% by weight of the total composition, which lies within and thus anticipates the range recited in instant claim 25. App. ‘076 claim 12 recites that the composition comprises an aqueous phase comprising the cationic polymer, the monovalent non-polymeric acid or a salt thereof, and water. US ‘076 claim 14 recites a cosmetic process for a keratin substance: applying to the keratin substance the composition, which together with the composition of App. ‘076 claims 3 and 5 renders obvious the method recited in instant claim 30.
It is noted that the recitation “for treating keratin fibers” in instant claims 16 and 30 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition recited in the claims of App. ‘076 is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02.
The claims of App. ‘076 differ from the instant claims in that the claims of App. ‘076 do not recite that the hydroxy acid comprises two or more carboxylic groups as recited in instant claim 17, the cationic polyamino acid is derived from plants as recited in instant claim 21, that the pH of the composition is less than 7 as recited in instant claim 26, that the composition further comprises at least one cationic surfactant different from the cationic polyamino acid as recited in instant claim 27, or that the composition further comprises at least one nonionic surfactant as recited in instant claim 28. Further, the claims of App. ‘076 do not recite a method comprising a mixing step as recited in instant claim 35.
SLK Clinic teaches that alpha-hydroxy acids (AHAs) are a group of nontoxic organic compounds, including glycolic acid, lactic acid, malic acid, tartaric acid, and citric acid, that have been used throughout history as beauty aids (Page 2, What are fruit acids?). They are often used to remove the outermost layer of skin of dull cells to reveal a newer layer of skin beneath, causing the skin to appear luminous (Page 2, How do fruit acids work?).
The teachings of Cho are as set forth above and further incorporated herein.
Regarding instant claim 17, it would have been obvious to one of ordinary skill in the art to substitute the lactic acid recited in the claims of App. ‘076 with the citric acid, malic acid, or tartaric acid, which are taught by SLK Clinic as suitable alternatives to lactic acid and comprise two or more carboxylic groups, according to known methods to yield the result of a composition that improves the appearance of a keratin surface, such as skin or scalp.
Regarding instant claim 21, it would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of SLK Clinic and App. ‘076 claims by further including the cocodimonium hydroxypropyl hydrolyzed wheat protein of Cho, which is derived from plants. One of ordinary skill in the art would have been motivated to include cocodimonium hydroxypropyl hydrolyzed wheat protein because Cho teaches that it is a useful conditioning agent when present in the amount from about 0.05% to about 6% by weight of the composition (Cho, Col. 9, lines 1-45), which overlaps the amount recited in instant claim 16, from which instant claim 21 depends. It would have been obvious to one of ordinary skill in the art to adjust the amount of cocodimonium hydroxypropyl hydrolyzed wheat protein within the range taught by Cho because the reference teaches that any amount within the above range is suitable for producing a composition for application to hair, which is a keratin substance as evidenced by the instant specification (Page 3, lines 3-5). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
Regarding instant claim 26, it would have been obvious to one of ordinary skill in the art to adjust the pH of the composition taught by the combination of SLK Clinic and App. ‘076 claims within the range taught by Cho. One of ordinary skill in the art would have been motivated to adjust the pH within the range of 4.0 to 8.5, which overlaps the instantly claimed range, because Cho teaches that compositions having a pH within this range have improved stability and are aesthetically pleasing and compatible with skin or hair.
Regarding instant claims 27 and 28, it would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of SLK Clinic and App. ‘076 claims by further including a cationic surfactant different from the cocodimonium hydroxypropyl hydrolyzed wheat protein and/or a nonionic surfactant because Cho teaches a variety of cationic surfactants and nonionic surfactants that are routinely used in art to produce formulations that are applied to keratin surfaces, i.e. hair (Cho, Col. 8, lines 5-67).
One of ordinary skill in the art would reasonably expect success in modifying the composition recited in the claims of App. ‘076 with the teachings of SLK Clinic and Cho as proposed because the references teach that all ingredients and parameters, such as pH, are known in the art to be useful in compositions intended for application to keratin substances.
Regarding instant claim 35, it would have been obvious to one of ordinary skill in the art to use the method of Cho in order to prepare the composition taught by the combination of SLK Clinic and App. ‘076 claims. It would have been obvious and there is a reasonable expectation of success because Cho teaches that the active step of mixing the ingredients is known in the art to produce compositions intended to be applied to keratin substances, i.e. hair, comprising similar ingredients that result in improved silky feel upon application to hair.
It is noted that the recitation “wherein the composition enhances or improves the smoothness of keratin fibers when applied onto the keratin fibers,” recited in instant claim 35 is an intended use of the composition obtained by the claimed method. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of App. ‘076 claims, SLK Clinic, and Cho is capable of performing the intended use then it meets the claim. Note: MPEP 2111.02.
This is a provisional nonstatutory double patenting rejection.
Claims 16-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-11, 15, 17-18, 22, and 25 of copending Application No. 17/401722 in view of Cho (US6620410B1; 09/16/2003; PTO-892 of 06/25/2025).
App. ‘722 claim 1 recites a brightness enhancing scalp hair treatment composition comprising about 60 to about 86 wt.% water, among other ingredients. Water reads on the same recited in instant claims 16, 25, 30, and 35.
Regarding the amount of water recited in instant claim 25, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of water within the range recited in App. ‘722 claim 1, which overlaps the instantly claimed range, since the reference teaches that any amount between 60 to about 86 wt.% is suitable for producing a hair treatment composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
App. ‘722 claim 2 requires an amount of water within the range of about 80 to about 96 wt.%, which also overlaps the range recited in instant claim 25.
App. ‘722 claim 7 recites that the composition further comprises one or more cationic conditioning polymers, claim 8 recites that the amount of cationic conditioning polymers is about 0.1 to about 5 wt.% based on the total weight of the composition, and claim 9 recites that the cationic conditioning polymers are selected from cationic proteins and cationic protein hydrolysates, quaternary diammonium polymers, and polyquaterniums, among others. App. ‘722 claim 10 recites that the composition further comprises a pH adjuster selected from an organic acid, and claim 11 recites that the organic acid is in an amount of about 0.1 to about 5 wt.% based on the total weight of the composition and is chosen from glycolic acid, lactic acid, malic acid, tartaric acid, mandelic acid, citric acid, gluconic acid, and among others.
Regarding the at least one hydroxy acid recited in instant claims 16-20 and 30-35, it would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘722 by selecting malic acid, tartaric acid, or citric acid, which comprise two or more carboxylic acids, as the organic acid because the claims recite that any of the acids are suitable for adjusting the pH of the composition.
Regarding the amount of hydroxy acid recited in instant claims 16, 20, 30, 34, and 35, the amount of organic acid recited in App. ‘722 claim 11 lies within and thus renders obvious the instantly claimed ranges.
App. ‘722 claims 16 and 22 recite that the composition can further comprise nonionic surfactants among other ingredients, which reads on the same recited in instant claim 28. App. ‘722 claim 15 recites a composition incorporating the limitations of claims 7-9 and requires an amount of water within the range of about 80 to about 94 wt.%, which also overlaps the range recited in instant claim 25. App. ‘722 claims 17 and 18 recite a method for treating hair comprising: applying the hair treatment composition of claim 1, which reads on the method step of applying the composition to keratin fibers, i.e. hair, recited in instant claim 30.
The claims of App. ‘722 differ from the instant claims in that the claims of App. ‘722 do not explicitly recite the at least one cationic polyamino acid recited in instant claims 16, 21-24, 30, or 35, that the pH of the composition is less than 7 as recited in instant claim 26, or that the composition further comprises at least one cationic surfactant different from the cationic polyamino acid as recited in instant claim 27. Further, the claims of App. ‘076 do not recite a method comprising a mixing step as recited in instant claim 35.
The teachings of Cho are as set forth above and further incorporated herein.
Regarding the at least one cationic polyamino acid recited in instant claims 16, 21-24, 30, and 35, it would have been obvious to one of ordinary skill in the art to modify the composition recited in the claims of App. ‘722 by selecting the cocodimonium hydroxypropyl hydrolyzed wheat protein of Cho, which is a quaternary diammonium polymer derived from plants, as the cationic conditioning polymer. One of ordinary skill in the art would have been motivated to include cocodimonium hydroxypropyl hydrolyzed wheat protein because Cho teaches that it is a useful conditioning agent in hair care compositions when present in the amount from about 0.05% to about 6% by weight of the composition (Cho, Col. 9, lines 1-45), which overlaps the amount recited in instant claims 16, 24, 30, and 35. It would have been obvious to one of ordinary skill in the art to adjust the amount of cocodimonium hydroxypropyl hydrolyzed wheat protein within the range taught by Cho because the reference teaches that any amount within the above range is suitable for producing a composition for application to hair, which is a keratinous substance. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05.
Regarding instant claim 26, it would have been obvious to one of ordinary skill in the art to adjust the pH of the composition taught by the combination of App. ‘722 claims and Cho within the range taught by Cho. One of ordinary skill in the art would have been motivated to adjust the pH within the range of 4.0 to 8.5, which overlaps the instantly claimed range, because Cho teaches that compositions having a pH within this range have improved stability and are aesthetically pleasing and compatible with skin or hair.
Regarding instant claim 27, it would have been obvious to one of ordinary skill in the art to modify the composition taught by the combination of App. ‘722 claims and Cho by further including a cationic surfactant different from the cocodimonium hydroxypropyl hydrolyzed wheat protein because Cho teaches a variety of other cationic surfactants that are routinely used in art to produce hair care formulations (Cho, Col. 8, lines 5-67).
One of ordinary skill in the art would reasonably expect success in modifying the composition recited in the claims of App. ‘722 with the teachings of Cho as proposed because the reference teaches that all ingredients and parameters, such as pH, are known in the art to be useful in compositions intended for application to the hair.
It is noted that the recitation “for treating keratin fibers” in instant claims 16 and 30 is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of App. ‘722 and Cho is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02.
Regarding instant claim 35, it would have been obvious to one of ordinary skill in the art to use the method of Cho in order to prepare the composition taught by the combination of App. ‘722 claims and Cho. It would have been obvious and there is a reasonable expectation of success because Cho teaches that the active step of mixing the ingredients is known in the art to produce compositions that result in improved silky feel upon application to hair.
It is noted that the recitation “wherein the composition enhances or improves the smoothness of keratin fibers when applied onto the keratin fibers,” recited in instant claim 35 is an intended use of the composition obtained by the claimed method. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the structure of the composition taught by the combination of App. ‘722 and Cho is capable of performing the intended use then it meets the claim. Note: MPEP 2111.02.
Response to Arguments
Applicant’s request in the Remarks filed 09/24/2025 for the double patenting rejections of record to be held in abeyance is acknowledged. However, this request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Accordingly, the rejections will be maintained until a terminal disclaimer is filed or claims are amended to obviate the rejections.
Conclusion
No claim is 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 SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH C WISTNER/ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
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