FINAL ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
This action is in response to papers filed 02/20/2026 in which claims 3-5, 12, and 14 were canceled; claims 13, 15 and 19-21 were withdrawn; claims 1 and 11 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-2, 6-11 and 16-18 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claim Interpretation
The terms “optionally” in claims 1 and 11 is interpreted as not required component in the dry shampoo composition. For this office action and rejection purposes, the component(s) following the terms “optionally” in claim 1 and 11 will be interpreted as component(s) that is made optional or not required, and thereby not part of the claimed dry shampoo composition and dry shampoo article, respectively.
Accordingly, for claim 1, the carrier material (“the carrier”) and all limitation(s) relating to the carrier is made optional and interpreted as not part of the claimed dry shampoo composition. Thus, the “a carrier material” and “wherein the perfume composition comprising the pro-perfume compound is not dispersed in or absorbed within the carrier” as recited in claim 1 is interpreted as not required, and thereby not part of the claimed dry shampoo composition due to the “carrier material” is made optional.
For claim 11, the propellant is made optional and interpreted as not part of the claimed dry shampoo article. Thus, the “propellant” as recited in claim 11 is interpreted as not required, thereby not part of the claimed dry shampoo article due to the propellant is made optional.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
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.
Claim(s) 1-2, 6-11 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Struillou et al (WO 2020/188079 A1; published date: 24 September 2020; previously cited) in view of Desale (US 20180153782 A1).
Claim Interpretation applies here.
Regarding claim 1, Struillou teaches a fragrance delivery system comprising a perfume oil and a carrier, wherein the perfume oil comprises at least one pro-perfume compound (Abstract; pages 2-30; claims 1-14). Struillou teaches the fragrance delivery system is included in a perfumed consumer product such as a dry shampoo (page 28, lines 20-23; claim 13). Struillou teaches the pro-perfume compound is a compound selected from the group consisting of:
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, wherein R represents a C1-C20 alkyl or alkenyl group (pages 5-17).
However, Struillou does not teach the dry shampoo active material of claim 1.
Regarding the dry shampoo active material of claim 1, Desale teaches a dry shampoo product containing a dry shampoo composition comprising fragrances, and a starch material effective to absorb oils on hair (a dry shampoo active material) (Abstract; [0007], [0023]-[0024] and [0029]-[0031]; claims 1-14).
It would have been obvious to one of ordinary skill in the art to include a starch material in the dry shampoo of Struillou, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Struillou and Desale are commonly drawn to perfumed dry shampoo compositions, and Desale provides the guidance for including a starch material known to be used in dry shampoo product as an active material that effectively absorb oils on the hair. Thus, it would have been reasonably obvious per guidance from Desale to include a starch material in the dry shampoo composition of Struillou so as to provide a resultant dry shampoo product which effectively absorb oils on the hair, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 2, Struillou teaches the pro-perfume compound is moisture-labile and/or oxygen-labile pro-perfume compound (page 4, lines 13-24).
Regarding claims 6-8, as discussed above, Desale provided the guidance for including a starch material in the dry shampoo of Struillou. Desale teaches the starch material is cornstarch, potato starch, tapioca starch, rice starch, wheat starch, cassava starch, or combinations thereof ([0024]). Desale teaches the starch material can be modified through processes such as esterification, etherification, oxidation, acid hydrolysis, crosslinking, or enzyme conversion, or unmodified ([0024]).
Regarding claim 9, Struillou teaches the perfumed consumer product contains a solvent (Struillou: page 26, lines 4-16). Desale teaches the dry shampoo composition contains a solvent (Desale” [0027] and [0047]).
Regarding claim 10, Struillou teaches the perfumed consumer product contains anionic surfactant, nonionic surfactant, cationic surfactant, or mixtures thereof (Struillou: pages 28-30). Desale teaches the dry shampoo composition contains a cationic surfactant ([0027] and [0036]).
Regarding claim 11, as discussed above, Struillou in view of Desale teaches a dry shampoo product containing a dry shampoo composition.
Regarding claim 16, as discussed above, Desale teaches the starch material can be modified through processes such as esterification, etherification, oxidation, acid hydrolysis, crosslinking, or enzyme conversion, or unmodified.
Regarding claim 17, Struillou teaches the solvent is ethanol (Struillou: page 26, lines 4-16). Desale teaches the solvent is ethanol (alcohol denatured) (Desale: [0047]).
Regarding claim 18, As discussed above, Struillou teaches the perfumed consumer product contains a cationic surfactant. As discussed above, Desale teaches the dry shampoo composition contains cationic surfactant.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive.
Applicant argues that “the cited references do not disclose or suggest particularly the dry shampoo composition wherein the perfume composition comprising the pro-perfume compound is not dispersed in or absorbed within the carrier, and wherein the pro-perfume compound is a compound selected from the group consisting of formulae a) to d).” Applicant alleges that “STRUILLOU does not provide any guidance as to utilizing the pro-perfume compound in a dry shampoo without dispersing it in or absorbing it within a carrier material. Applicant goes on to allege that “Applicant has shown that the fragrance intensity profile of a fragrance without properfume and that of a fragrance with properfume are surprisingly different when used on hair. As described in Applicant's Example [Table on page 27 of the specification}, the fragrance intensity of a hair swatch having a fragrance without properfume and one having a fragrance with properfume was evaluated after 24 h and 48 h after treatment. Thus, Applicant’s alleges that the Example showed that “the fragrance intensity of the hair swatch having a fragrance without properfume is lower and continues to decrease over time, while that of the fragrance with properfume is higher and continues to increase over time. Such a result would not be expected on the basis of STRUILLOU and DESALE.” (Remarks, pages 10-11).
In response, the Examiner disagrees. As discussed above in the Claim Interpretation, the carrier material (“the carrier”) of claim 1 and all limitation(s) relating to the carrier is made optional and interpreted as not part of the claimed dry shampoo composition. Thus, the “a carrier material” and “wherein the perfume composition comprising the pro-perfume compound is not dispersed in or absorbed within the carrier” as recited in claim 1 is interpreted as not required, and thereby not part of the claimed dry shampoo composition due to the “carrier material” is made optional. As such, the combined teachings from Struillous and Desale remained to rendered obvious Applicant’s claimed invention for the reason of record.
With respect to Applicant’s alleged unexpected results as shown in the Table from page 27 of the specification, said alleged unexpected results are considered but found insufficient to obviate the pending 103 rejections over the combined teachings of Struillous and Desale. Applicant’s alleged unexpected results from the specification are not persuasive because claim 1 is not commensurate in scope with the dry shampoo composition used in the Examples from pages 24-26 of the specification. See MPEP §716.02(d).
Furthermore, with any alleged evidence of unexpected results, said unexpected results must compare the claimed subject matter with the closest prior art. In the instant case, Struillous is the closest prior art, in which the dry shampoo composition of Struillous contains both the fragrance with properfume. See MPEP §716.02(e).
As a result, for at least the reasons discussed above, claims 1-2, 6-11 and 16-18 remain rejected as being obvious and unpatentable over the combined teachings of Struillous and Desale in the pending 103 rejection set forth in this office action.
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 1-2, 6-11 and 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12264295 in view of Desale (US 20180153782 A1).
Claim Interpretation applies here.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘295 significantly overlap with the subject matter of the instant claims i.e., dry shampoo product comprising a fragrance delivery system containing structurally the same pro-perfume compound, and a carrier material.
While the claims in the Patent ‘295 do not recite a dry shampoo active material as part of the dry shampoo product, it would have been obvious to include a dry shampoo active material such as a starch material in the dry shampoo product of the Patent ‘295 per guidance from Desale, which established a starch material is known to be included in dry shampoo product as an active material so as to effectively absorb oils on hair (Desale: Abstract; [0007], [0023]-[0024] and [0029]-[0031]; claims 1-14).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 12264295 in view of Desale.
Response to Arguments
Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive.
Applicant argues “the pending claims are patentably distinct over claims 1-19 of U.S. Patent No. 12,264,295 in view of DESALE for at least the reason that the pending claims require the feature wherein the perfume composition comprising the pro-perfume compound is not dispersed in or absorbed within the carrier.” (Remarks, bottom of page 11).
In response, the Examiner disagrees. As discussed above in the Claim Interpretation, the carrier material (“the carrier”) of claim 1 and all limitation(s) relating to the carrier is made optional and interpreted as not part of the claimed dry shampoo composition. Thus, the “a carrier material” and “wherein the perfume composition comprising the pro-perfume compound is not dispersed in or absorbed within the carrier” as recited in claim 1 is interpreted as not required, and thereby not part of the claimed dry shampoo composition due to the “carrier material” is made optional. As such, the pending claims remain patentably indistinct over claims 1-19 of U.S. Patent No. 12,264,295 in view of DESALE for the reason of record.
As a result, for at least the reason discussed above, the rejection of Claims 1-2, 6-11 and 16-18 on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12264295 in view of Desale, is maintained for the reason of record, pending filing of a terminal disclaimer.
Claims 1-2, 6-11 and 16-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18688051 (reference application) in view of Desale (US 20180153782 A1).
Claim Interpretation applies here.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application ‘051 significantly overlap with the subject matter of the instant claims i.e., perfumed consumer product comprising a fragrance delivery system containing structurally the same pro-perfume compound.
While the claims in copending application ‘051 do not recite the consumer product as a dry shampoo containing a dry shampoo active material, it would have been obvious to include a dry shampoo active material such as starch material to the perfumed consumer product of copending application ‘051 in view of the guidance from Desale so as to provide a perfumed dry shampoo product (Desale: Abstract; [0007], [0023]-[0024] and [0029]-[0031]; claims 1-14).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over copending Application No. 18688051 in view of Desale.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive.
Applicant argues:
“[a]s described in MPEP 804(I)(B)(1)(b)(i): "If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent, thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent."
Applicant submits that the only remaining rejection once the present claim amendments are entered will be the present double patenting rejection, which is based on an application having a later patent term filing date compared to the present application.” (Remarks, page 12).
In response, the Examiner disagrees. The provisional nonstatutory double patenting rejection is not the only rejection remaining in this application. Thus, per MPEP §804(I)(B)1), the provisional double patenting rejection should be made and maintained by the Examiner until Applicant overcomes the rejection by filing a terminal disclaimer.
As a result, for at least the reason discussed above, the provisional rejection of Claims 1-2, 6-11 and 16-18 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18688051 (reference application) in view of Desale, is maintained for the reason of record, pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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