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 .
Election/Restriction
During a telephone conversation with Bret Shapiro on 6/24/2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11 and 17-21. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12 and 15-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant’s affirmed the election in the response filed 9/25/2025.
Response to Amendments
The Examiner would like to note that the claim amendments presented 8/7/2026 are non-compliant per MPEP 714, 37 CFR 1.121 Manner of making amendments in application. The previously examined claim set (filed 2/18/2026) recited “
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”, however the claim presented 8/7/2026 recites “
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”. The claims were not amended in the required manner. For purpose of compact prosecution, the examiner has examined the claim as currently presented and reinstated the previously presented 112(b) rejection over this issue.
Response to Arguments
All of Applicant’s arguments filed 8/7/2026 have been fully considered. In view of the amendments to the claims, new prior art rejections are presented to address the claims as newly amended. Applicant’s arguments against DeCarvalho are moot.
With regards to the ODP rejection(s), as Applicant has not addressed the merits of the rejection(s), the double patenting rejection(s) is/are maintained for the reasons of record.
Reinstated Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11, 17-18 and 20-21 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.
Claim 1 recites “R4 comprises a proton (H+),” which renders the metes and bounds of the claim
indefinite as its unclear if Applicant is referring to H+, a H radical or any group which comprises a proton.
Furthermore, the phrase inside parenthesis (H+) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
In view of Applicant’s previous amendment, the examiner suggests amending the claim to recite “R4 is H+ or an alkyl chain…”.
Claims 2-11, 17-18 and 20-21 do not cure the deficiencies of claim 1 and thus are deficient for the same reasons.
New Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-11, 17-18 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banks (WO 2004/000250) and Krueger (US 2014/0246041), as evidenced by SciFinder (Stearyl Alcohol), PubChem (Distearoylethyl dimonium chloride) and Wenk (US 2012/0309996). All references are newly cited.
Banks teaches hair conditioning compositions comprising 0.01-10% of a cationic surfactants, 0.01-10% of a fatty alcohol and 0.001-5% of a hydrophobically modified clay (Abs).
Banks teaches that suitable cationic conditioning surfactants for use include those having the formula N+R1aR2aR3aR4a wherein R1aR2aR3aR4a are independently C1-C30 alkyl or benzyl. Preferably one or two of R1aR2aR3aR4a are C6-C30 alkyls and the other R1aR2aR3aR4a are C1-C6 alkyl. Optionally the alkyl groups may comprise one or more ester or ether linkages within the alkyl chain (pg. 15-16).
Regarding claim 1(ii): Banks teaches the composition to comprise .01-10%, preferably 0.2-7% of a fatty alcohol, these include stearyl alcohol, cetyl alcohol and mixture thereof (pg. 21).
Regarding claims 1(iii), 2-3 and 20: Banks teaches that viscosity enhancers can be added. Hydroxyethyl cellulose is preferred, these can be added in amounts of up to 5% (pg. 26).
Regarding claim 1(iv), 4-8 and 21: Banks teaches that emulsified silicones are preferably added as additional conditioning agents (pg. 21), suitable emulsified silicones are emulsions of dimethiconol which are polydimethyl siloxanes having hydroxyl end groups (pg. 22), which is a preferred silicone emulsion for use as identified in the originally filed specification (pg. 10). This is taught to be used in amounts ranging from 0.5-4% (pg. 24). Banks does not teach the dimethiconol to be modified which reads on “does not comprise a hydrophobic modification” and “silicone emulsions do not comprise a myristoyloxy modified silicone.”
While Banks teaches using cationic surfactants as conditioning agents, Banks does not teach the claimed surfactants.
Krueger teaches hair treatment agents comprising esterquats (abs) as hair conditioning agents [0001].
Regarding claims 1(i), 9, 11 and 17-18: Preferred esterquat are those having the structure (Tkat1-2):
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, wherein R1 and R2 are methyl and there are two -X-R4 groups, wherein X is ethylene, R4 denotes lauroyl, myristoyl, palmitoyl, etc. and A is chloride or methosulfate. Preferred compounds include dipalmitoyl dimonium chloride and varisoft eq 65 (also known as Distearoylethyl dimonium chloride with the structure below, as evidenced by PubChem and Wenk).
[0040].
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This reads on the claimed structure 1 wherein R3 and R4 are methyl (i.e. C1 alkyl group), R1 and R2 are linear alkyls with carbon-carbon length chains of with an ester linkage within the alkyl chains (this reads on an alkyl chain comprises a C18 alkyl chain) and A is chloride (a halide) as evidenced by PubChem.
These esterquats are taught to be used in amounts ranging from 0.01-20%, preferably 0.1-5% [0041].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Banks with those of Krueger. One of skill in the art would have been motivated to use an esterquat, such as Distearoylethyl dimonium chloride, in amounts of 0.1-5% as taught by Krueger, as this esterquat is taught to be a preferred cationic conditioning agent for use in hair treatment compositions. One of skill in the art would have a reasonable expectation of success as Banks teaches that cationic surfactant with the formula N+R1aR2aR3aR4a, wherein R1aR2aR3aR4a are independently C1-C30 alkyl or benzyl, wherein optionally the alkyl groups may comprise one or more ester or ether linkages within the alkyl chain which embrace the esterquats of Krueger and its prima facie obvious to select a known material for its recognized suitability for its intended purpose.
Regarding the molar ratio of the dialkyl cationic surfactant (i) to linear fatty material (ii) as required by instant claims 1 and 10, as discussed above, the prior art makes obvious to use of 0.5-5% dipalmitoyl dimonium chloride (Mw. 646.47g/mol) and .2-7% stearyl alcohol (Mw 270.49 g/mol), which results in a molar ratio that overlaps with the claimed ranges and overlapping range are prima facie obvious absent evidence of criticality.
Distearoylethyl dimonium chloride
0.1g*(1/702.6) = .00014 moles
5g*(1/702.6) = 0.0071 moles
Stearyl Alcohol
0.2g*(1/270.49) = .00074 moles
7g*(1/270.49) = 0.0259 moles
Ratio Distearoylethyl dimonium chloride (.00014-.0071) : Stearyl Alcohol (.00074-.0259)
= Approx. 1: .104-185, which overlaps with the claimed ranges.
Regarding the claimed “structure 1 surfactants is the sole cationic conditioning agent”, Banks teaches the use of one or more cationic surfactants, thus the use of a single cationic surfactant is prima facie obvious and contemplated by the reference.
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 1-2, 4-11, 17-18 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 15-18 of copending Application No. 18/716390 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose the use of the overlapping cationic conditioning surfactant agents (US’390 reads on the claimed structure when at least one of R3 or R4 is a C4 alkyl) , linear fatty material comprising linear carbon-carbons chains, structurants (i.e. modified guar), silicone emulsions comprising amodimethicone as particulate benefit agents. All these ingredients and molar ratio of cationic conditioning surfactant agents and linear fatty material are taught to be used in overlapping amounts. Both teach compositions wherein the silicone emulsion is free of hydrophobic modifications and free of myristyloxy modified silicone. Only 1 cationic conditioning surfactant agents is required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-11, 17-18 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-18 of copending Application No. 18/716012 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose the use of the overlapping cationic conditioning surfactant agent (US’012 reads on the claimed structure when at least one of R3 or R4 is a C4 alkyl) , linear fatty material comprising linear carbon-carbons chains, structurants (i.e. modified guar), silicone emulsions comprising amodimethicone as particulate benefit agents. All these ingredients and molar ratio of cationic conditioning surfactant agents and linear fatty material are taught to be used in overlapping amounts. Both teach compositions wherein the silicone emulsion is free of hydrophobic modifications and free of myristyloxy modified silicone. Only 1 cationic conditioning surfactant agents is required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-11, 17-18 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-18 of copending Application No. 18/716833 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose the use of the overlapping cationic conditioning surfactant agent (US’833 reads on the claimed structure when at least one of R3 or R4 is a C4 alkyl) , linear fatty material comprising linear carbon-carbons chains, structurants (i.e. clay), silicone emulsions comprising amodimethicone as particulate benefit agents. All these ingredients and molar ratio of cationic conditioning surfactant agents and linear fatty material are taught to be used in overlapping amounts. Both teach compositions wherein the silicone emulsion is free of hydrophobic modifications and free of myristyloxy modified silicone. Only 1 cationic conditioning surfactant agents is required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2, 4-11, 17-18 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-19 of copending Application No. 18/718682 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose the use of the overlapping cationic conditioning surfactant agents (US’682 reads on the claimed structure when at least one of R3 or R4 is a C4 alkyl) , linear fatty material comprising linear carbon-carbons chains, structurants (i.e. derived from cellulose), silicone emulsions comprising amodimethicone as particulate benefit agents. All these ingredients and molar ratio of cationic conditioning surfactant agents and linear fatty material are taught to be used in overlapping amounts. Both teach compositions wherein the silicone emulsion is free of hydrophobic modifications and free of myristyloxy modified silicone. Only 1 cationic conditioning surfactant agents is required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable.
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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
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