DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/26/2026 has been entered.
Claim Status
Applicant’s amendment of 03/26/2026 is acknowledged. Claims 16, 20, 30, 34, and 35 are amended, and claims 1-15, 17-19, 29, and 31-33 are cancelled. Claims 16, 20-28, 30, and 34-35 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/22/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Declaration Under 37 CFR 1.132
Kazumitsu Kawakami provided a Declaration under 37 CFR 1.132, filed 03/26/2026. 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 in an amount of 2.95 wt.% compared to the same composition comprising 2.95 wt.% tartaric 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 03/26/2026 has been fully considered but is irrelevant in view of the new grounds of rejection presented herein, whereby Applicant’s instantly claimed composition is anticipated by Schulze Zur Wiesche et al. (WO2012055582A2) as discussed in detail below. As such, the rejection cannot be overcome by presenting allegedly unexpected results.
Withdrawn Objections and Rejections
The previous 112(a) rejection and provisional non-statutory double patenting rejections of the instant claims over the claims of copending Application Nos. 18/355,442 and 18/721,076 are modified in view of Applicant’s amendment to the claims.
The previous provisional rejection of the instant claims over the claims of copending Application No. 17/401,722 is hereby withdrawn in view of Applicant’s abandonment of the copending application on 02/23/2026.
The previous 102 and 103 rejections are hereby withdrawn in favor of the new grounds of rejection presented herein. Applicant’s arguments insofar as they pertain to any revised grounds of rejection are addressed herein.
Claim Rejections - 35 USC § 112(b)
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.
Claims 16, 20-28, 30, and 34-35 are 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.
Claims 16, 30, and 35 each recite the limitations “at least 1% by weight” (or, “1% by weight or more” in claim 35) and “at least 0.2% by weight” in relation to the claimed citric acid or salt(s) thereof and cationic polyamino acid(s), respectively. It is unclear how the composition can comprise citric acid or salt(s) thereof in a range of at least 1% by weight, which encompasses embodiments wherein the citric acid or salt(s) is present in an amount of 100% by weight, while also comprising cationic polyamino acid(s) in a range of at least 0.2% by weight, which encompasses embodiments wherein the cationic polyamino acid(s) is present in an amount of 100% by weight. Both components, along with water, are required features of the claimed composition. Therefore, the scope of the claim is indefinite. Claims 20-28 are rejected by virtue of their dependence on parent claim 16, and claim 34 is rejected by virtue of its dependence on parent claim 30, as they fail to resolve the ambiguity in question.
Claim 24 recites the limitation “up to 20% by weight”, which includes embodiments wherein the cationic polyamino acid(s) is present in an amount of 0% by weight. It is unclear how the composition can comprise at least 0.2% by weight cationic polyamino acid(s), as required by parent claim 1, and also comprise 0% by weight cationic polyamino acid(s). Therefore, the scope of the claim is indefinite.
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 “1% by weight or more” was added to independent claims 16, 30, and 35 in the amendment filed on 09/24/2025 in relation to the previously claimed hydroxy acid(s). In the amendment filed on 03/26/2026, claims 16 and 30 were amended to recite the limitation “at least 1% by weight” in relation to the instantly claimed citric acid or salt(s) thereof. However, the instant disclosure does not provide support for either limitation “at least 1% by weight” or “1% by weight 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.
Response to Arguments
Applicant’s arguments submitted on 03/26/2026 with respect to rejections under 35 U.S.C. 112(a) have been fully considered but were not found to be persuasive.
Applicant argues that the instant specification [pg. 8, lines 19-22] expressly discloses “1% by weight or more” as it relates to the amended claims. However, Applicant’s disclosure does not reasonably convey that the inventor(s), at the time the application was filed, had possession of the broad scope of embodiments encompassed by the claimed range. For example, the recited range of “at least 1%” encompasses embodiments wherein the citric acid is present at a concentration of 100% by weight, which cannot be simultaneously achieved while requiring at least one cationic polyamino acid and water as claimed. Applicant’s original disclosure only provides clear support for a composition comprising hydroxy acid(s), e.g., citric acid or salt(s) thereof, in an amount ranging from 0.1% to 20% by weight, relative to the total wight of the composition [see pg. 8, lines 28-31]. Therefore, the claimed range represents new matter, even as amended, and the 112(a) rejections of record are maintained.
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, 20-25, 27-28, 30, and 34 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Schulze Zur Wiesche et al. (WO2012055582A2; published: 05/03/2012; indicates US as a Designated State; PTO-892 of instant action) as evidenced by My Skin Recipes (webpage, <myskinrecipes.com>, pg. 1-3; published: 08/18/2014; PTO-892 of instant action).
Schulze Zur Wiesche, throughout the reference, teaches hair cleaning products which improve softness, suppleness, and shine of the hair [abstract; claims].
Regarding claim 16: At least two compositions disclosed by Schulze Zur Wiesche, in which all quantities are based on weight of the composition [abstract; claims], read on the instantly claimed composition.
The reference discloses hair shampoo C, which comprises 1.0 wt.% citric acid, 0.5 wt.% laurdimonium hydroxypropyl hydrolyzed wheat protein, and 77.6 wt.% water, among other ingredients [see table “c. Haarshampoo” on pg. 34 of original patent document]. The amounts of citric acid and laurdimonium hydroxypropyl hydrolyzed wheat protein lie within and thus read on the instantly claimed amounts of citric acid and cationic polyamino acid, respectively. Water reads on the same as instantly claimed.
The reference discloses hair shampoo D, which comprises 1.0 wt.% citric acid, 0.5 wt.% laurdimonium hydroxypropyl hydrolyzed wheat protein, and 76.9 wt.% water, among other ingredients [see table “d. Haarshampoo” on pg. 34-35 of original patent document]. The amounts of citric acid and laurdimonium hydroxypropyl hydrolyzed wheat protein lie within and thus read on the instantly claimed amounts of citric acid and cationic polyamino acid, respectively. Water reads on the same as instantly claimed.
Regarding claim 20: The amounts of citric acid in the reference shampoos C and D each lie within and thus read on the instantly claimed range.
Regarding claim 21: The laurdimonium hydroxypropyl hydrolyzed wheat protein in the reference shampoos C and D is derived from plants and thus meets the claim.
Regarding claim 22: The laurdimonium hydroxypropyl hydrolyzed wheat protein in the reference shampoos C and D comprises at least one quaternary ammonium group as evidenced by its “dimonium” chemical structure and thus meets the claim.
Regarding claim 23: Schulze Zur Wiesche expressly teaches a limited list of preferred cationic protein hydrolysates for use in its compositions—including hydroxypropyltrimonium hydrolyzed wheat protein, steardimonium hydroxypropyl hydrolyzed wheat protein, cocodimonium hydroxypropyl hydrolyzed wheat protein, hydroxypropyltrimonium hydrolyzed conchiolin protein, steardimonium hydroxypropyl hydrolyzed soy protein, hydroxypropyltrimonium hydrolyzed soy protein, and cocodimonium hydroxypropyl hydrolyzed soy protein, as well as several forms of cationized collagen and cationized gelatin—as suitable alternatives to laurdimonium hydroxypropyl hydrolyzed wheat protein [0224]. Therefore, an ordinarily skilled artisan could at once envisage an embodiment wherein the laurdimonium hydroxypropyl hydrolyzed wheat protein of Schulze Zur Wiesche’s shampoo C or D is, alternatively, any of the above recited cationic polyamino acids, or mixtures thereof, which read on the same as instantly claimed.
Regarding claim 24: The amounts of laurdimonium hydroxypropyl hydrolyzed wheat protein in the reference shampoos C and D each lie within and thus read on the instantly claimed range.
Regarding claim 25: The amounts of water in the reference shampoos C and D each lie within and thus read on the instantly claimed range.
Regarding claim 27: Schulze Zur Wiesche expressly teaches that its compositions may comprise cationic surfactants, preferably cetyltrimethylammonium chloride, stearyltrimethylammonium chloride, distearyldimethylammonium chloride, lauryldimethylammonium chloride, lauryldimethylbenzylammonium chloride, tricetylmethylammonium chloride, Quaternium-27, and Quaternium-83 [0083]. Therefore, one of ordinary skill in the art could at once envisage an embodiment wherein reference shampoo C or D further comprises one or more of these cationic surfactants, which are different from the laurdimonium hydroxypropyl hydrolyzed wheat protein and thus meet the instant claim limitation.
Regarding claim 28: The reference shampoo C also comprises PEG-7 glyceryl cocoate [see table “c. Haarshampoo” on pg. 34 of original patent document], which is a nonionic surfactant as evidenced by My Skin Recipes [pg. 2], and thus meets the claim.
Regarding claim 30 and 34: Schulze Zur Wiesche expressly teaches a method for cleaning keratinous fibers, wherein the disclosed hair treatment agent is applied to the hair and rinsed out [0334-0336]. Thus, an ordinarily skilled artisan could at once envisage an embodiment wherein Schulze Zur Wiesche’s shampoo C or D, which each comprise the instantly claimed components (a) – (c) in the claimed amounts as discussed in detail above, is applied to the hair.
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 composition of Schulze Zur Wiesche 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.
Response to Arguments
Applicant’s arguments submitted on 03/26/2026 with respect to rejections under 35 U.S.C. 102 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action 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, 20-28, 30, and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Schulze Zur Wiesche et al. (WO2012055582A2; published: 05/03/2012; indicates US as a Designated State; PTO-892 of instant action) in view of Cho (US6620410B1; 09/16/2003; PTO-892 of 06/25/2025) and as evidenced by My Skin Recipes (webpage, <myskinrecipes.com>, pg. 1-3; published: 08/18/2014; PTO-892 of instant action).
Schulze Zur Wiesche as evidenced by My Skin Recipes teaches the invention(s) of claims 16, 20-25, 27-28, 30, and 34 as discussed in detail above and further incorporated herein.
However, Schulze Zur Wiesche is silent as to the pH of the shampoos and thus does not expressly teach the pH recited in claim 26 and does not expressly teach the mixing step recited in claim 35.
Cho, throughout the reference, teaches materials and methods for improving or maintaining hair care [abstract; claims].
Regarding claim 26: Cho further teaches shampoos, conditioners, and styling aids having a pH between 4.0 to 8.5 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; 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 of the shampoo(s) of Schulze Zur Wiesche according to known methods by using pH 4.0, which lies within and thus reads on the instantly claimed range, as a starting point for routine optimization in order to achieve a stable, aesthetically-pleasing, and compatible formulation.
Regarding claim 35: Cho further teaches that a shampoo comprising similar ingredients (e.g., citric acid, cocodimonium hydroxypropyl hydrolyzed wheat protein, etc. in water), can be prepared by mixing all of the ingredients [col. 10, example 1], which reads on the instantly claimed mixing step. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the shampoo(s) of Schulze Zur Wiesche according to the known method of Cho to yield the predictable result of a shampoo composition.
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 prior art composition is capable of performing the intended use then it meets the claim. Note: MPEP 2111.02. Additionally, Schulze Zur Wiesche specifically discloses that its products improve the softness, smoothness, and shine of the hair [0007], which further supports that applying the prior art composition enhances or improves the smoothness of keratin fibers.
An ordinarily skilled artisan would reasonably expect success in modifying the prior art as proposed because all methods and conditions are known in the art to be useful in formulating consumer-acceptable shampoos comprising similar ingredients.
Response to Arguments
Applicant’s arguments submitted on 03/26/2026 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 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.
Regarding Applicant’s argument of allegedly unexpected results, because primary reference Schulze Zur Wiesche discloses a composition comprising all instantly claimed components, including citric acid in the instantly claimed amount, the rejection cannot be overcome by presenting allegedly superior results of the claimed citric acid amount or of citric acid compared to tartaric acid.
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, 20-28, 30, and 34-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/355,442 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 compound (a) recited in instant claims 16, 20, 30, 34 and 35. The amount of citric acid reads on 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 reads on 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 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 19 recites a method for treating hair comprising applying the composition to the hair, which together with the composition of App. ‘442 claim 1 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, 20-28, 30, and 34-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/721,076 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 reads on 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 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 claims 5 and 6 recite that the monovalent non-polymeric acid is preferably lactic acid in an amount from 0.1% to 10% by weight of the total composition. 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 reads on 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 composition comprises citric acid or a salt thereof as recited in instant claims 16, 20, 30, 34, and 35, 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 [pg. 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 [pg. 2, How do fruit acids work?].
The teachings of Cho are as set forth above and further incorporated herein.
Regarding the citric acid of instant claims 16, 20, 30, 34, and 35, 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 taught by SLK Clinic as suitable alternative to lactic acid, according to known methods to yield the result of a composition that improves the appearance of a keratin surface, such as skin or scalp. Further, it would have been obvious to adjust the amount of citric acid using 0.1% to 10% by weight as a starting point to achieve the desired level of outer layer skin removal.
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 [pg. 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.
Response to Arguments
Applicant’s request in the Remarks filed 03/26/2026 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.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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